How are inherent properties considered in patent examination?
Inherent properties disclosed in the specification are considered part of the “as a whole” inquiry in patent examination. The MPEP 2141.02 clarifies:
“In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question… but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification.”
This means that when assessing obviousness, examiners must consider not only the explicit claim language but also the inherent properties of the claimed subject matter as described in the specification. These inherent properties can be crucial in distinguishing the invention from prior art and demonstrating non-obviousness.
However, it’s important to note that obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established.
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