Appeal No. 2005-2736 Παγε 6
Application No. 09/966,288
After the PTO establishes a prima facie case of anticipation based on inherency,
the burden shifts to the appellant to prove that the subject matter shown to be in the
prior art does not possess the characteristics of the claimed invention. See In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re King, 801 F.2d
1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986).
We agree with the appellants that Tsubouchi does not inherently describe
avoiding means or portions. Firstly, there is no disclosure in the Tsubouchi reference
that the nozzles include divergent cross sections at the outlet and the examiner's
reference to the Johnson reference does not cure this deficiency. Johnson surely is not
evidence that all nozzles have divergent cross sections at the outlets. As such, we are
at a lose to understand what the description of divergent cross sections at the outlet in
Johnson has to do with the nozzles 41 to 45 described in Tsubouchi. Secondly, the
nozzles 41 to 45 are described as atomizing nozzles and as such would produce a mist
of fuel drops that would seem likely to mix, especially since the nozzles are described
as oriented from a vertical plate (see Fig. 1). As such, we the nozzles 41 and 45 do not
necessarily form avoiding means or portions as recited in claims 39 and 40. As such,
the examiner's case of anticipation by inherency falls. Therefore, we will not sustain the
examiner's rejection of claims 39 or 40 or claims 1, 7, 41 and 42 dependent thereon.
The decision of the examiner is reversed.
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