Ex Parte CHISNELL - Page 4



          Appeal No. 2004-1361                                                        
          Application No. 09/430,574                                                  
          connecting block on Schnell’s retainer member 172, and more                 
          particularly on the clamp attachment region 174 of the retainer             
          member, and the limitations relating to the tube on Schnell’s               
          fluid-bearing tube.                                                         
               As framed and argued by the appellant (see pages 4 through 8           
          in the brief), the examiner’s rejection of claim 1 is unsound for           
          three reasons: (1) Schnell’s retainer member 172 and clamp                  
          attachment region 174 do not constitute a “female” connecting               
          block, (2) the tapered portion 188 of Schnell’s tube is not                 
          “seated against” the transition surface defined by the                      
          intersection of the throughbore 184 and chamfer 198 of the female           
          connecting block, and (3) the end 179 of Schnell’s tube does not            
          constitute an “end-form.”                                                   
               The appellant’s position here is not persuasive, essentially           
          because it rests on an improper reading of limitations from the             
          specification into claim 1.  It is well settled that during                 
          patent examination, claims are to be given their broadest                   
          reasonable interpretation consistent with the underlying                    
          specification without reading limitations from the specification            
          into the claims.  In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ            
          541, 550-51 (CCPA 1969).                                                    


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