Appeal No. 2004-1006
Application 10/142,485
internal threads to a smaller diameter at the second end” as specified in the third clause of claim
8 (answer, pages 4 and 6). Thus, prima facie, Schrader discloses an embodiment that expressly
satisfies each and every element of the claimed choke tube arranged as required by claim 8. See
generally, King, supra; Lindemann Maschinenfabrik, supra.
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 Schrader, 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, Spada, supra.
Appellant argues that a review of Schrader Fig. 2 shows that “bore (d) tapers and narrows
at a point within the portion of internal threads and not, as is required by claim 8, from a diameter
adjacent to the threads” (brief, page 10). The examiner contends that “[I]nternal threads d1
matchingly engage external threads b on barrel a (see page 3, lines 4-6, of English translation),”
and from Schrader Figs. 2 and 4, “it is clear that the tapering begins where threads d1 begins [sic,
ends]” as the “other portion d1 . . . is clearly cylindrical (see figs. 2 and 4)” (answer, page 6).
Appellant alleges that the examiner provides no support for this position and ignores the
evidence in the brief in these respects (page 6).
We find that each of Schrader Figs. 2 and 4 show that the center bore of the choke tube
begins to taper and narrow at a point close to the end of internal threads d1, although as the
examiner points out, the disclosure of Schrader in this respect is that “internal thread d1 . . . fits
threads b on the barrel” (page 3, lines 4-6) and barrel a appears to be cylindrical in this area. In
any event, in view of our interpretation of the language “the bore being tapered and narrowing
only from a diameter adjacent the internal threads to a smaller diameter at the second end” of the
third clause of claim 8 to mean that the “diameter” which is the starting point can be at any locus
close to the end of the internal threads, we find that even if one of ordinary skill in this art would
Webster’s II New Riverside University Dictionary 78, 272.
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