Appeal No. 1997-1412 Page 9
Application 08/139,888
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). When relying on inherency, an examiner 2
must provide a basis in fact or technical reasoning to
reasonably support a determination that an allegedly inherent
characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd.
Pat. App. & Int. 1990).
Here, the examiner has met his initial burden. The
appellants’ specification reveals that they achieve the
increase in pressure fluctuation and flow fluctuation of the
main assist gas flow in comparison with the sub assist gas
flow by a combination of three structural features. First,
the diameter of the sub assist gas nozzle tapers from a wider,
upstream diameter to a narrower, downstream diameter (D2).
(Spec. at Fig. 1.) Second, the diameter of the outlet of the
2“Mere recitation of a newly discovered function or
property, inherently possessed by things in the prior art,
does not distinguish a claim drawn to those things from the
prior art.” In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981) (citing In re Swinehart, 439 F.2d 210, 212-13,
169 USPQ 226, 229 (1971)).
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