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