How can inherent characteristics be shown in a 35 U.S.C. 102 rejection?

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.

Inherent characteristics can be shown in a 35 U.S.C. 102 rejection by using additional references or evidence to demonstrate that a feature, while not explicitly disclosed in the primary reference, is necessarily present. MPEP 2131.01 provides guidance on this:

“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”

The MPEP cites the case of Continental Can Co. USA v. Monsanto Co., which explains that this approach “accommodates situations in which the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges.”

It’s important to note that the failure of those skilled in the art to contemporaneously recognize an inherent property does not preclude a finding of anticipation, as long as there is evidence establishing inherency.