Appeal No. 2004-1006
Application 10/142,485
end for threadably engaging an outside diameter of the discharge end of the firearm barrel” as
specified in the second clause of claim 8; and the bore of choke member 19 tapering and
narrowing only from a diameter adjacent internal threads 14 in tubular connector 11 to a smaller
diameter at the end of the choke member, comprises “the bore being tapered and narrowing only
from a diameter adjacent the internal threads to a smaller diameter at the second end” as
specified in the third clause of claim 8 (answer, pages 3-4 and 5-6). Thus, prima facie, Ferhat
discloses an embodiment that expressly satisfies each and every element of the claimed choke
tube arranged as required by claim 8. See generally, In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986); Lindemann Maschinenfabrik v. American Hoist and Derrick, 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
We find that the examiner has established a prima facie case of anticipation of appealed
claim 8 as a matter of fact over the disclosure of Ferhat, and accordingly, we again evaluate all of
the evidence of anticipation and non-anticipation based on the record as a whole, giving due
consideration to the weight of appellant’s arguments and evidence in the brief and reply brief.
See generally, In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir. 1990).
Appellant submits that choke 19 of Ferhat has external threads 27 and thus, does not fall
within appealed claim 8, and argues that the examiner has erroneously combined tubular
connector 11 with choke 19 to provide such threads (brief, pages 5-8). Appellant further
contends that even if the combination of tubular connector 11 with choke 19 is proper, “the bore
in . . . [Ferhat] does not taper and narrow from a diameter adjacent the internal threads, but rather
begins to taper and narrow from a diameter adjacent a rib 18 which is substantially equal to the
inner diameter of the outer end of the gun bore” (id., pages 6-7). In response, the examiner
argues that the combined tubular connector 11 with choke 19 can reasonably “be considered to
be two pieces of a functional cylindrical body of a choke tube,” noting that as such, the
limitations with respect to internal threads is met (answer, page 5). The examiner further finds
that the tapering of the bore of choke 19 “appears to begin at a location approximate lead line 24
in fig. 2” and considered this “to be close enough to internal threads 14 to meet the claim
limitation ‘narrowing only from a diameter adjacent the internal threads’” (id., pages 5-6).
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