How does inherency apply to genus-species relationships in prior art?

Inherency in genus-species relationships in prior art is not automatically established merely by disclosing a broad genus. The MPEP clarifies: “[A]n invitation to investigate is not an inherent disclosure” where a prior art reference “discloses no more than a broad genus of potential applications of its discoveries.” (MPEP 2112)

This principle was established in Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, where the court explained that “[a] prior art reference that discloses a genus still does not inherently disclose all species within that broad category.”

To establish inherency in a genus-species context, the examiner must provide a basis in fact and/or technical reasoning to show that the species necessarily flows from the teachings of the prior art genus. The disclosure of the genus alone is not sufficient to inherently disclose all species within it.

To learn more:

• inherency
• genus-species
• prior art
• patent rejection
• broad disclosure