"Not only may express disclosures of a prior art reference be relied upon by a patent examiner when rejecting claims under 35 U.S.C. 102 or 35 U.S.C. 103, but so too may the inherent disclosures of a prior art reference. Inherency rejections, whether it be inherent anticipation or inherent obviousness, can be extremely difficult to overcome. Indeed, at many times it seems there is a great deal of subjectivity weaved into an inherency rejection. But that does not mean that inherency based rejections do not make sense."
""discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Therefore, merely claiming of a new use, new function or unknown property that is inherently present within the prior art does will not in and of itself necessarily make the offered claim patentable."
Inherency allows examiners to rely on implicit disclosures within prior art for 35 U.S.C. 102 and 103 rejections, covering both inherent anticipation and inherent obviousness. Such rejections can be difficult to overcome and often involve subjective judgment. Courts have held that discovering a previously unappreciated property or scientific explanation of a prior art composition does not render the composition patentably new. Merely claiming a new use, function, or unknown property that is inherently present in the prior art will not necessarily make a claim patentable. Inherency was rooted in anticipation but now applies to obviousness, requiring careful, high-standard application.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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