Can inherency be used in both anticipation and obviousness rejections?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, inherency can be used in both anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103) rejections. The MPEP explicitly states: “The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103.” ( MPEP 2112 ) Furthermore, the MPEP notes that concurrent rejections under both 35 U.S.C. 102 and 103 are possible: “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” This approach is particularly relevant when dealing with claims that describe a composition in terms of a function, property, or characteristic that is not explicitly disclosed in the prior art but may be inherently present. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Concurrent Rejections for Anticipation and Obviousness Allowed MPEP 2112 Inherent and Implicit Prior Art Disclosures Used in Rejection MPEP 2112 Permitted Inherent Teaching of Prior Art MPEP 2112 Burden of Proof for Product-by-Process Claims MPEP 2112 Burden of Proving Inherency in Rejections MPEP 2112 Relevant Time for Pre-AIA 35 U.S.C. 102 MPEP 2112 Result Must Be Necessarily Present In Prior Art To Establish Inherency MPEP 2112 Permitted Burden of Proving Inherency Must Be Met MPEP 2112 Required Claim Limitation Must Be Inherent From Prior Art MPEP 2112 Required Inherent Disclosure Does Not Make New Art Patentable MPEP 2112 Other Related FAQs 5 FAQs Collapse What is the burden of proof for inherency in patent rejections? How does inherency apply to genus-species relationships in prior art? What is the relationship between inherency and obviousness in patent rejectio...