Can inherency be used in both anticipation and obviousness rejections?
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.
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