Appeal No. 2002-0771 Page 4
Application No. 09/294,288
i.e. an annular passageway surrounding a membrane defining a cylindrical passageway (compare
Fig. 1 of Torregrossa with Appellants’ Fig. 3).
The only argued distinctions between the claimed apparatus and that of Torregrossa relate
to function. Namely, the function of creating a vortex with particular shearing properties in the
second passageway. The question we must answer, in regard to the apparatus claims, is whether
the apparatus is capable of being operated to create such a vortex.
We answer that question in the affirmative. There is no dispute that Torregrossa
explicitly describes creating a vortex in the vortex chamber 12. Nor is there any dispute that gas
enters the vortex chamber through the membrane as small bubbles. Both the apparatus
configuration and the method of using it are substantially the same as described by Appellants in
their specification. Therefore, there is a reasonable basis to conclude from these similarities in
structure and operation that the apparatus of Torregrossa is indeed inherently capable of creating
a vortex which shears the bubbles as claimed.
Because each and every structural limitation is described explicitly or inherently by
Torregrossa, we find that the apparatus of claim 1 is, in fact, anticipated by Torregrossa. While
the Examiner made the rejection under 35 U.S.C. § 103(a), lack of novelty is the ultimate or
epitome of obviousness. In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA
1982). Therefore, we conclude that the Examiner established a prima facie case of
unpatentability with respect to the subject matter of claim 1 and those claims falling therewith.
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