How does the USPTO define ‘necessarily present’ in the context of inherency?
How does the USPTO define ‘necessarily present’ in the context of inherency?
The concept of ‘necessarily present’ is crucial in understanding inherency in patent law. According to the MPEP 2112, a feature or characteristic is considered ‘necessarily present’ if it is an inevitable consequence of the prior art teachings, even if it was not explicitly recognized or appreciated at the time.
The MPEP states:
“The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.”
This means that for a feature to be ‘necessarily present’, it must be an inevitable result of following the prior art’s teachings. It’s not enough for the feature to be merely possible or probable; it must be certain to occur given the prior art’s disclosure.
The USPTO emphasizes that examiners must provide a rationale or evidence to support inherency rejections. As stated in MPEP 2112:
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”
This requirement ensures that inherency is not used as a catch-all argument but is based on sound scientific and technical principles.
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