Written by Mark Terry
In its first decision on this Friday the 13th, the Board of Patent Appeals and Interferences (BPAI), reversed an Examiner’s 103 obviousness rejection based on the Examiner’s faulty inherency logic. I like this reversal because it highlights the Examiner’s burden and the consequences of not meeting that burden – i.e., a win for the Applicant.
With regard to inherency, recall M.P.E.P. 2112 states
that where an Applicant claims a composition in terms of a function, property
or characteristic and the composition of the prior art is the same as
that of the claim but the function is not explicitly disclosed by the
reference, the examiner may make an inherency rejection under
both 35 U.S.C. 102 and 103, expressed as a 102 or 103 rejection. See
my post last year regarding the use of inherency in 103 obviousness
The case of Ex parte Smith (Appeal No. 2010-008057) involved an industrial resin. The claims recited a filler that covalently bonds with another element. The Examiner rejected the claims based on 35 U.S.C. 103(a) stating that the cited prior art discloses the same chemical structure and that the claimed covalent bonding aspect was inherent to the chemical structure disclosed in the prior art. Specifically, on the issue of the covalent bonding, the Examiner stated solely the following: “providing a workable amount of covalent bond forming coupling agents would have been obvious … and coupling agents forms strong covalent bonds.” (verbatim). That’s all the Examiner had to say on the issue of inherency.
Applicant responded with attorney argument that the cited prior art is silent on
the issue of covalent bonding and that, in fact, the cited prior art could result
in other types of bonding, such as ionic bonding, not necessarily covalent
The Board found:
inherent characteristic must be inevitable, and not merely a possibility or
probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA
Examiner simply concluded that Applicant’s claimed chemical structure would
inherently result in a covalent bond and stated nothing more.
Examiner has not established with any evidence or provided any explanation on
this record why the use of the … agents … in the prior art … would
inevitably, or necessarily, result in a direct covalent bond as claimed.”
Examiner has not satisfied the initial burden of presenting a prima facie case
thus, the Board reversed the Examiner’s rejection.
What does this mean for practitioners? This means that you should
closely analyze an Examiner’s 103 obviousness rejection based on inherency to
determine whether the cited art would inevitably, or necessarily,
result in the Applicant’s claimed device, composition or method.
It is not enough for the Examiner to conclude that the cited art could
potentially result in the Applicant’s claimed device, composition or
method. In order to meet his burden, the Examiner must cite evidence that the cited art would inevitably,
or necessarily, result in the Applicant’s claimed device,
composition or method. If the Examiner does not meet this burden, then you may
have grounds for reversal.
Terry is a registered patent attorney practicing in South
Florida and Washington D.C. for over 10 years.