How is inherency established for functional limitations in patent claims?

Establishing inherency for functional limitations in patent claims involves a specific approach, as outlined in MPEP 2182:

“If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, a reasonable presumption is that the prior art structure inherently performs the same function.”

To establish inherency, the examiner must:

1. Identify a prior art reference that teaches the identical structure or acts as claimed.
2. Provide a “sound basis for believing” that the prior art structure or acts would be capable of performing the claimed function.

The MPEP references MPEP 2114, subsection I, for more information on establishing inherency for functional limitations. This approach ensures that examiners have a solid foundation for rejections based on inherency, particularly when dealing with functional claim language.

To learn more:

• inherency
• functional limitations
• patent claims
• prior art