Appeal No. 2004-1006
Application 10/142,485
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Turning now to the ground of rejection of appealed claim 8 under § 102(b) as anticipated
by Linde, we have carefully considered the examiner’s position with respect to the evidence
(answer, pages 4-5 and 6-7), but find that we agree with appellant’s argument that the word
“only” in 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” limits the shape of the
center bore to being tapered and narrowed from the point at a diameter adjacent the internal
threads to the end of the choke tube. Indeed, a definition for this term in this context does not
appear in the written description in the specification, and thus the broadest reasonable
interpretation is its customary dictionary meaning in context of “exclusively.”6 We find that the
portion of the multiple choke tubes in each of the Linde Figs. on which the examiner relies have
“portions that are parallel to the central axis” as appellant argues (brief, pages 8-9; reply brief,
pages 7-8), and the examiner does not dispute (answer, pages 6-7). While it can be said that the
“tapering and narrowing” begins “adjacent” to the treads in each of the figures, as we have
interpreted this claim language above, we find that in each figure, the “tapering and narrowing”
does not extend from such a point to the “end” of the choke tube as required by the claim
language. Accordingly, because the choke tubes shown in Linde Figs. 3, 5 and 6 do not as a
matter of fact meet each and every limitation arranged as required by appealed claim 8, we
reverse this ground of rejection. See generally, King, supra; Lindemann Maschinenfabrik, supra.
The ground of rejection of appealed claim 2 under § 103(a) over the combined teachings
of Linde, Buss and Coburn, of course, has the same deficiency in its factual underpinnings, as
appellant points out (brief, page 11; see also reply brief, pages 8-11), and the examiner does not
dispute appellant’s position in this respect (answer, page 7). Accordingly, we reverse this ground
of rejection as well.
In summary, we have affirmed the ground of rejection based on Ferhat and the grounds of
rejection based on Schrader, and we have reversed the grounds of rejection based on Linde.
6 See generally, The American Heritage Dictionary, Second College Edition 869; Webster’s II
New Riverside University Dictionary 821.
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