Appeal No. 2004-1006
Application 10/142,485
We find that the common dictionary meaning of the term “adjacent” includes “close to;
lying near” and “nearby,” and is not limited to “next to” or “touching.”4
We determine that, on this record, a broad, reasonable interpretation of the claim
language “the bore being tapered and narrowing only from a diameter adjacent the internal
threads to a smaller diameter at the second end” (emphasis supplied), is that the “diameter”
which is the starting point, can be at any locus close to the end of the internal threads, even
though it may be determined that the interpretation of this language urged by appellant is a
reasonable one. See Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029. In this latter respect, we
point out that appellant’s interpretation is based on the “preferred embodiment,” that is, the
specification Figs. are based on this embodiment, and we will not read limitations from this
embodiment into appealed claim 8. See Zletz, supra; Priest, supra.
Therefore, we agree with the examiner that, as a matter of fact, in Ferhat Fig. 2, the center
bore of choke 19 beings tapering and narrowing at a point close enough to the end of the threads
14 on tubular connector 11 to satisfy the limitation “the bore being tapered and narrowing only
from a diameter adjacent the internal threads to a smaller diameter at the second end” of
appealed claim 8.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation found in Ferhat with appellant’s countervailing evidence of
and argument for no anticipation in fact and find that the claimed invention encompassed by
appealed claims 2 and 8 is anticipated as a matter of fact under 35 U.S.C. § 102(b).
Turning now to the ground of rejection of appealed claim 8 under § 102(b) as anticipated
by Schrader, the examiner finds in Schrader Fig. 2 (pages 2-3), “a cylindrical body having a
center bore and opposite open first and second ends,” as specified in the first clause of appealed
claim 8; internal threads d1 which comprise “internal threads located in the bore adjacent the
first 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 a tapering and narrowing of the center bore as
shown in d comprises “the bore being tapered and narrowing only from a diameter adjacent the
4 Cf. the common dictionary definitions of “nearby,” “adjoining,” “close” and “contiguous.” See
generally, The American Heritage Dictionary, Second College Edition 79, 282, 316, 787;
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