Patent claims are often rejected by USPTO examiners on the ground that a property or characteristic of the claimed invention is inherent and thus not novel or, alternatively, obvious. In either case, if true, the invention is not patentable. However, often times, the examiner’s statements are pure conclusory statements with no support in any sound analysis or articulated reasoning. The Manual for Patent Examination Procedure (MPEP) cautions however against this type of impermissible practice. 

MPEP 2141: DISCLOSED INHERENT PROPERTIES ARE PART OF “AS A WHOLE” INQUIRY

MPEP 2141 gives an example of a case where, if looking at the claimed invention as a whole, the apparently “inherent” characteristic may not bar patentability. Referring to the facts of that case it states in part that the prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.” In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977). It should be noted here that the failure of the prior art was contrasted with the contribution of the inventor to recognize the allegedly inherent characteristic, and the inventor was rewarded for that.

MPEP 2112: EXAMINERS MUST PROVIDE RATIONALE OR EVIDENCE TENDING TO SHOW INHERENCY

“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.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original); The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) citing In re Oelrich,666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981); (reversed rejection because inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art).

Examiners sometimes seem to ignore the above provisions of MPEP 2112 and provide no facts, technical reasoning or any rationale as to why the alleged inherent property “necessarily flows from the teachings of the applied prior art.” They simply write a conclusory statement or attempt to support the conclusion of inherency using inventor’s own teachings, which is often impermissible hindsight.

As such, examiner’s statements made in office actions have to be scrutinized for errors such as the ones above and appropriate response filed with the USPTO, challenging examiner’s erroneous contentions.

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