How does the “anticipation by inherency” principle apply in genus-species situations?
How does the “anticipation by inherency” principle apply in genus-species situations?
The principle of “anticipation by inherency” can play a significant role in genus-species situations, particularly when dealing with prior art disclosures. According to MPEP 2131.02, a genus may be inherently disclosed by a species when the species necessarily possesses the characteristics of the genus.
The MPEP states:
“A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.” This means that if a prior art reference discloses a specific species that inherently includes all the characteristics of a broader genus, it can anticipate a claim to that genus.
For example, if a prior art reference discloses a specific chemical compound that inherently possesses all the properties of a claimed genus of compounds, it may anticipate the genus claim even if the reference doesn’t explicitly describe all the characteristics of the genus.
It’s important to note that the inherency must be necessarily present, not merely probablistic. Examiners should carefully consider whether the species truly inherently discloses all aspects of the claimed genus before making a rejection based on inherency.
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