Does Inherency Have a Place in Determinations of Obviousness?

摘要

In making a rejection based on obviousness under 35 USC §103, a patent examiner considers the prior art references from the perspective of the person of ordinary skill in the art at the time of the invention. The obviousness determination involves aconsideration of what the prior art references teach and whether one of skill would combine the prior art teachings to arrive at the claimed invention. Logically, an inherent feature not disclosed in the references or known at the time of the invention seemingly has no place in the obviousness determination, A fundamental principle of obviousness under 35 USC 103 is that it is predicated on a determination of what is known in the art at the time of invention. On occasion, claims are rejected or invalidated based on assertions of obviousness that depend on the principle of inherency. Inherency 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.