“The inherent result of an obvious process” ?
Recall the Federal Circuit has stated:
A party must … meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis—the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.
[ Par Pharmaceutical Inc. v. Twi Pharmaceuticals, Inc.]
Also, from a 2012 IPBiz post
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.”).
Also, from the 2015 IPBiz post titled
Challenges to Allergan patents fail at the CAFC
The unexpected properties of
the claimed formulation, even if inherent in that formulation,
differ in kind from the prior art, thereby supporting
a conclusion of nonobviousness. See W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983)
(“Inherency and obviousness are distinct concepts.”); In re
Spormann, 363 F.2d 444, 448 (CCPA 1966) (“That which
may be inherent is not necessarily known. Obviousness
cannot be predicated on what is unknown.”).