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 rejections.

            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.

            The 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 bonding.

The Board found:

“an inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).”

The Examiner simply concluded that Applicant’s claimed chemical structure would inherently result in a covalent bond and stated nothing more.

“The 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.”

The Board continued:

“the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness.”

And 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.

            Mark Terry is a registered patent attorney practicing in South Florida and Washington D.C. for over 10 years.