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03-25-11 Refresher- 35 USC 102 and 103 Special Topics UNITED STATES PATENT AND TRADEMARK OFFICE Objectives You will review: Inherency and Prior Art 35 USC §102/103 Rejections Official Notice Inherency and Prior Art What is inherency? Inherency, with respect to applying prior art, refers to a determination of whether a characteristic, property or feature recited in a claim that is not explicitly taught by the prior art, would have necessarily been present in the teachings of the prior art. See: MPEP §2112 Inherency and Prior Art Why is inherency important? As an Examiner, you will often find a reference that is close to being applicable under 35 USC §102, but is silent on one or more claim limitations. In some cases, the limitations that have not specifically been discussed by the prior art; may be inherently present. In these cases, you may reject the claim under 35 USC §102, with an explanation of why the limitations of the claim that are not explicitly taught by the prior art must have inherently been present in the prior art. Inherency - Example Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). The claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. The prior art, a Russian article, disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. Inherency – Example (cont.) The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties. Inherency and Evidence The Examiner must provide a rationale or evidence that the claim limitation not expressly disclosed by the reference is nonetheless necessarily present in the reference. Inherency may not be establish