What is the difference between inherency in 35 U.S.C. 112 and 35 U.S.C. 102 contexts?

What is the difference between inherency in 35 U.S.C. 112 and 35 U.S.C. 102 contexts?

The concept of inherency is applied differently in the contexts of 35 U.S.C. 112 (written description) and 35 U.S.C. 102 (anticipation):

• 35 U.S.C. 112 context: Inherency is used to determine if a property, function, or characteristic is necessarily present in the original disclosure to support written description requirements.
• 35 U.S.C. 102 context: Inherency is used to determine if a prior art reference inherently discloses a claimed feature, even if not explicitly stated, for anticipation purposes.

The MPEP 2163.07(a) states: “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 highlights that inherency in the 112 context focuses on the original disclosure, while in the 102 context, it relates to prior art analysis.

To learn more:

• inherency
• 35 U.S.C. 112
• 35 U.S.C. 102
• written description
• anticipation