Monday, December 03, 2012

Inherency in an obviousness rejection

The decision in Ex parte Daniels comments on the subject of inherency in an obviousness context:

also In re Rijckaert, 59 F.3d 1531 (Fed. Cir. 1993); In re Newell, 891 F.2d 899, 901 (Fed. Cir. 1989) (“[A] retrospective view of inherency is not a substitute for some teaching or suggestion which supports the selection and use of the various elements in the particular claimed combination”).

Appellants are correct insofar as that a retrospective (retroactive or backwards) employment of inherency by the Solicitor is incorrect in a § 103 analysis. Appellants are also correct that employment of inherency is incorrect in a § 103 analysis when it is not known in the art that the inherent part is in fact inherent. Newell, 891 F.2d at 899 quoting In re Spormann, 363 F.2d 444 (C.C.P.A. 1966), (“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”).

However, Appellants overreach in extending these holdings to a general per se rule that inherency can never be employed in a § 103 analysis, particularly if an ordinarily skilled artisan would know that the part is inherent. Inherency is a question of fact that arises both in the context of anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirming a 35 U.S.C. § 103(a) rejection based in part on the inherent disclosure in one of the applied prior art references); see also In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983).


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