What is the relationship between inherency and obviousness in patent rejections?
What is the relationship between inherency and obviousness in patent rejections?
The relationship between inherency and obviousness in patent rejections is complex and often misunderstood. According to MPEP 2112:
“The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic.”
This means that just because something could happen in the prior art doesn’t mean it’s inherent. However, the MPEP also states:
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
This indicates that examiners must provide solid evidence or reasoning to support an inherency rejection. Importantly, the MPEP notes:
“[T]he inherent teaching of a prior art reference is a question of fact which arises both in the context of anticipation and obviousness.”
This means that inherency can play a role in both anticipation (novelty) and obviousness rejections. In an obviousness context, inherent properties can be considered along with explicit teachings of the prior art to determine if the claimed invention would have been obvious to a person of ordinary skill in the art.
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