Some Strategies For Responding To Rejections Based On Inherency

September 17, 2008

in Examples of Responses,Practice Suggestions,Prosecution Strategy,The MPEP

Inherency is a doctrine in U.S. patent prosecution by which unstated or unillustrated aspects of cited art are treated as if they are expressly disclosed.  The basis for this doctrine is that some things that will, as a matter of scientific fact, always flow from what is disclosed in art.

This doctrine permits the USPTO to rely on more than just the mere express disclosures of applied art to reject claims under 35 U.S.C. §§102 and 103.

The doctrine of inherency is generally appropriate only in limited circumstances.

General Principles

1.    Subject matter is only inherent when extrinsic evidence makes it clear that the subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art, and that ordinarily skilled artisans would recognize it.  (MPEP 2112).

2.    Ordinarily skilled artisans, however, need not recognize this presence at the time of invention.   (MPEP 2112 (II)).

3.    Inherency cannot be established by mere possibilities or even probabilities.  The fact that a certain result or characteristic may occur or may be present in cited art is not sufficient to establish the inherency of that result or characteristic.  (MPEP 2112 (IV)), citing In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (reversing a rejection based on inherency because result due to optimization of conditions was not necessarily present in the prior art).

4.    The Patent Office’s guidelines for using inherency are found in Sections 21122112.02 of the MPEP.  This should be an Applicant’s primary resource for authority when responding to rejections based on inherency.

The Patent Office Always Bears an Initial Burden to Establish Proper Reliance on Inherency

It is always incumbent on an Examiner to develop reasons supporting a reliance on inherency.   (MPEP 2112 (IV)).

To fully develop reasons, the Office must provide reasonable support for invoking inherency.  This reasonable support requires “a basis in fact” (evidence) and/or reasoning tending to show that an allegedly inherent feature necessarily flows from the teachings of the applied art.  (MPEP 2112 (IV), citing Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)).  Only after providing this reasonable support does the burden to rebut a claim rejection based on inherency shift to an Applicant.  (MPEP 2112 (V), 2112.01(I))).

The Office enjoys a few logical presumptions to help it provide reasonable support.  For example, reasonable support is presumed to be present when:

  1. a claimed structure is substantially identical to that of applied art;
  2. a claimed product is produced by a process substantially identical to that of applied art (identical processes produce identical products);
  3. a claimed composition is physically identical to that of applied art (identical compositions must have the same properties).

When these circumstances are established, a prima facie case of anticipation or obviousness is made.  (MPEP 2112.01 (I)).

An Approach for Responding to Rejections Based on Inherency

An Applicant should always first consider whether the Office has met its burden under MPEP 2112 (IV) to provide a reasonable basis justifying a reliance on inherency.  Only after the Office has met this burden is it absolutely necessary to address the ultimate question of whether the evidence or reasoning is correct.  Nonetheless, as a practical matter, it is often advantageous to explain why allegedly inherent subject matter does not necessarily flow from cited art, even when the Office fails to justify its reliance on inherency.

Illustrative Examples


1.  A Failure to Articulate a Prima Facie Case

In rejecting claim 1 under 35 U.S.C § 102, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a widget.  (Office Action, page 3).  Nonetheless, the Office rejects claim 1, contending that the feature of a widget is inherently taught by Smith.  Applicant respectfully traverses this rejection at least because the Office has not met its burden to fully develop reasons supporting its reliance on the doctrine of inherency.

The Office always bears the initial burden to develop reasons supporting a reliance on inherency.   (MPEP 2112 (IV)).  To satisfy this burden, the Office must identify some basis in fact or articulate some reasoning at least tending to show that allegedly inherent subject matter necessarily (i.e., inevitability) flows from cited art.  Indeed, the MPEP expressly instructs that:

“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.”  Further, since a basis in fact and technical reasoning is required when inherency is invoked, a failure to provide such evidence or rationale is fatal to the reliance on this doctrine.  This is only logical since evidence “must make clear” that the allegedly inherent subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art.  (MPEP 2112).

A review of page 3 of the Office Action reveals the absence of the required rationale or evidence at least tending to show that the feature of a widget inevitably flows from the disclosures of Smith patent.  Indeed, the Office Action merely asserts that a red widget is inherently present in the Smith patent.  (Office Action, page 3).  This naked assertion, a mere conclusory statement, cannot reasonably be said to be a development of any reason supporting the Office’s reliance on inherency.  Consequently, the Office Action’s reliance on inherency is unsupported and thus improper.

In sum, the Office Action concedes that the Smith patent does not teach the feature of claim 1 of a widget and any reliance on the doctrine of inherency to provide this necessary teaching is improper.

2.  A Substantive Response

In rejecting claim 1, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a red widget.  (Office Action, page 3).  Nonetheless, the Office rejects claim 1 under 35 U.S.C. § 102, contending that a red widget is inherent from the disclosures of the Smith patent.  This contention is respectfully traversed, at least because express teachings of the Smith patent preclude reliance on the doctrine of inherency, as a matter of law.

It is well settled that subject matter is inherent only when extrinsic evidence makes it clear that the subject matter necessarily (i.e., inevitably) flows from a disclosure of cited art.  (MPEP 2112).  This requirement is a prerequisite to invoking the doctrine of inherency and cannot be avoided.  Consequently, inherency may never be established by mere probabilities or even possibilities and the mere fact that a certain thing may be present (or may result) is always insufficient.  (MPEP 2112).

A review of the Smith patent reveals no less than three separate teachings that the Smith widget cannot be red.  Applicant respectfully submits that these express teachings so heavily weigh against the inevitable presence of a red widget that they preclude reliance on the doctrine of inherency as a matter of law.  Stated another way, the presence of these express teachings means that the subject matter alleged by the Office Action to be inherent can never reasonably be said to necessarily flow from the Smith patent.  Thus, the Office’s current reliance on inherency can never satisfy the standard set forth in MPEP § 2112 for proper reliance on inherency.

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© 2008, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 4 comments… read them below or add one }

in-house February 12, 2009 at 4:45 pm

What’s your rebuttal when the rejection is a 103(a) using two references to meet all the claim limitations, except the final one. . . that is inherent?

mike February 17, 2009 at 4:10 pm

Dear In-house,

I try to “cut to the chase”. I point out that the Office has conceded that the primary (or secondary) document does not disclose the subject feature. I then point out that the other document does not expressly disclose the subject feature. Next, I expressly state that the Office is using inherency and I traverse, using the legal and logical principles of this post. This way, I avoid writing about issues that do not relate to the crux of the matter – the inherency of the subject feature.

Matsushita May 10, 2009 at 5:55 am

Thank you for providing thoughtful examples contrasting two methodologies of responding to the rejections on the grounds of “Inherent Anticipation”. I have heard somewhere: if the applicant submits only a substantive response to the rejections based on the doctrine of inherency even though he or she believes a failure of the Examiner to articulate a prima facie case, it would be presumed that he or she has conceded that a prima facie case of inherent anticipation was established by the Examiner. In my view, there may be cases where the combination of two methodologies is effective in overcoming the rejections reliant on the doctrine of inherency.

in-house June 17, 2009 at 12:29 pm

Thank you for your thoughts.

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