How does inherency apply to product-by-process claims?

Question

Accepted Answer

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. Inherency can apply to product-by-process claims in a similar manner as it does to other types of claims. The MPEP states: “The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic.” ( MPEP 2112 ) For product-by-process claims, the burden of proof for inherency is similar to that of other claims. The examiner may require the applicant to prove that the prior art products do not necessarily possess the characteristics of the claimed product. This principle is illustrated in cases like In re Fitzgerald , where the court examined whether a specific manufacturing process necessarily resulted in a product with certain characteristics. For more detailed information on the burden of proof for product-by-process claims, refer to MPEP 2113 . Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Burden of Proof for Product-by-Process Claims MPEP 2112 Result Must Be Necessarily Present In Prior Art To Establish Inherency MPEP 2112 Permitted Prior Art Product Identical to Claimed Product MPEP 2113 Burden of Proof for Inherency Rejection MPEP 2112 Burden of Proving Inherency Must Be Met MPEP 2112 Required Burden of Proving Inherency in Rejections MPEP 2112 Prior Art Product Can Anticipate But Not Infringe MPEP 2113 Prohibited Inherency of Prior Art Characteristics Must Be Proven MPEP 2112 Cool Down Rate Does Not Necessarily Result in Different Shrinkage MPEP 2112 Applicant Must Prove Prior Art Does Not Inherently Possess Claimed Features MPEP 2112 Permitted Other Related FAQs 5 FAQs Collapse What is the burden of proof for inherency in patent rejections? Can inherency be ...