Appeal No. 96-3130
Application 08/225,653
nonobvious. See In re Prindle, 297 F.2d 251, 254, 132 USPQ 282,
283-84 (CCPA 1962).
With respect to the appellants' contention that there is no
"evidence" that fuel droplets will impact against the sides of
the protuberance of Sperry and at least partially fragmentize, we
observe that when relying upon the theory of inherency, the
examiner has the initial burden of establishing a basis in fact
and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the prior art. See Ex
parte Levy, 17 USPQ2d 1461 (Bd. Pat. App. & Int. 1990). Here,
the examiner has noted the great similarity between the structure
depicted by Sperry in Fig. 2 and by the appellants in Fig. 8 and,
accordingly, has established a sound basis to conclude the
claimed subject matter may in fact be an inherent characteristic
of Sperry. Where, as here, there is a sound basis to believe
that the critical function for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteris-
tic of the prior art device, it was incumbent upon the appellants
to prove that the device of Sperry does not in fact possess the
characteristics relied on. See In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Spada, 911
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