Appeal No. 2002-0771 Page 6
Application No. 09/294,288
experimentation. Appellants have failed to convince us that the Examiner committed reversible
error with respect to these alternative rationales.
Here, it is reasonable to conclude that, due to the similarities in the apparatus, the fluids
treated, and the flow of the fluids, the bubbles of Torregrossa are effected in the same way as
claimed. That is enough to support a finding of inherency which is sufficient to shift the burden
to Appellants to show that there is, indeed, a difference. See In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657-58 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433-
34 (CCPA 1977); In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82-83 (CCPA 1975).
Contrary to the arguments of Appellants (Brief at 7-11), the fact that Torregrossa
describes the bubbles as moving toward the center of the vortex does not mean that bubble break
up and scattering due to shearing does not inherently occur (Brief at 7). Appellants acknowledge
that the vortex of Torregrossa imparts a shearing force on the gas (Brief at 7). It is reasonable to
conclude that this shearing force would necessarily break up and scatter the bubbles since
Terregrossa generates the vortex in an apparatus identical or substantially identical to that of
Appellants using the same or substantially the same fluids. Whether Torregrossa described
bubble break up and scattering or even knew it was occurring is beside the point. “Inherency is
not necessarily coterminous with the knowledge of those of ordinary skill in the art.” In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir.
2002)(quoting MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303,
1305-06 (Fed. Cir. 1999)). Under such circumstances, it is justifiable to shift the burden to
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