Appeal No. 2003-1463 Page 6
Application No. 09/536,341
position appears to be that Babka’s oil atomizer is inherently capable of accommodating
an air-powder mixture feed pipe for spraying a powder coating product. It is well settled
that the language "[a] person shall be entitled to a patent unless" in 35 U.S.C. § 102
places a burden of proof on the examiner to produce the factual basis for its rejection of
an application under sections 102 and 103. See In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). It follows that,
when relying on the theory of inherency, the examiner has the initial burden of providing
a basis in fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic reasonably flows from the teachings of the applied
prior art. See In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). In
our opinion, the examiner has not discharged that initial burden. The examiner has
offered no evidence or technical reasoning to support the determination that Babka’s
atomizer is reasonably capable of use in a system for spraying a powder coating
product and, in particular, has not responded to appellants’ argument that powder would
clog up the chamber between the exit of the goose neck extension and first annular
flange 11. Moreover, as evidenced by European Patent Application publication EP
870,546 (page 2, col. 2, lines 37-45), it was recognized in the art at the time of
appellants’ invention that powder, unlike liquids, can tend to accumulate causing various
adverse effects. Thus, one skilled in the art of air-powder mixture spraying would not
necessarily consider an oil atomizer capable of use as a spray head in a system for
spraying a powder coating product and, as mentioned above, the examiner has offered
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