How are inherent properties considered in patent examinations?
Inherent properties play a significant role in patent examinations and can be crucial in establishing non-obviousness. MPEP 716.02(f) cites the case of In re Zenitz, which states that “evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer.”
This means that properties or advantages that are inherent to the claimed invention, even if not explicitly disclosed in the original specification, should be considered during examination. These inherent properties can be used as evidence to support non-obviousness arguments. However, it’s important to demonstrate that these properties are indeed inherent to the claimed invention and not merely incidental or unexpected results.
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