How does the USPTO handle inherency rejections for compositions or products?
How does the USPTO handle inherency rejections for compositions or products?
The USPTO has specific guidelines for handling inherency rejections for compositions or products. According to MPEP 2112:
“The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.”
For compositions or products, the MPEP provides the following guidance:
“In In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), the court held that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
This means that if a prior art reference discloses a composition or product with the same structure as the claimed invention, any properties or characteristics of the claimed invention are considered to be inherently present in the prior art composition or product, even if they are not explicitly mentioned.
However, the USPTO also recognizes that not all properties are inherent. The MPEP states:
“Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”
This approach allows examiners to reject claims based on both anticipation (if the property is truly inherent) and obviousness (if the property would have been expected by a person of ordinary skill in the art).
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