Appeal No. 2004-1006
Application 10/142,485
have inferred from Schrader5 that the center bore of the choke tube begins to taper and narrow at
a point prior to the end of the internal threads thereof, such point is close enough to the end of the
internal threads 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” (emphasis
supplied) of appealed claim 8 as we interpreted this claim language above.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation found in Schrader with appellant’s countervailing evidence
of and argument for no anticipation in fact and find that the claimed invention encompassed by
appealed claim 8 is anticipated as a matter of fact under 35 U.S.C. § 102(b).
In the ground of rejection of appealed dependent claim 2 stands under § 103(a) over the
combined teachings of Schrader, Buss and Coburn, the examiner relies on Buss and Coburn for
the position that the combination of references would have suggested to one of ordinary skill in
this art to modify the choke tube of Schrader by knurling the outer surface thereof for grasping
purposes as taught by Buss and Coburn (answer, page 4). Appellant does not dispute the
examiner’s position in this respect, but contends that the combination of references does not
teach “a bore that tapers and narrows only from a diameter adjacent the internal threads” (brief,
page 11; see also reply brief, pages 8-11), thus raising an issue that we addressed above in
finding that Schrader did in fact anticipate appealed independent claim 8. Appellant has
presented no new argument here in this latter respect.
Accordingly, in again considering the totality of the record before us in view of the case
of prima facie obviousness established by the examiner over the combined teachings of Schrader,
Buss and Coburn, we have weighed the evidence of obviousness found in the applied
combination of references with appellant’s countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by appealed claim 2
would have been obvious as a matter of law under 35 U.S.C. § 103(a). See generally, In re
5 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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