INHERENCY AND OBVIOUSNESS
Disclosures of a prior art reference, express, implicit or inherent, may be relied upon in the rejection of claims under 35 USC section 103 or PCT Article 33(3). However, it is simple and easier to the inherency doctrine for anticipation than for obviousness. Nevertheless, inherency is an important
Obviousness35 USC ? 103: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Inherency and ObviousnessIn In re Napier, the Court held that the inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness , affirming obviousness rejection based in part on inherent disclosure in one of the references. The Federal Circuit in Par Pharmaceutical v. TWI Pharmaceuticals, Inc. set forth a test for the application of inherent obviousness: A party must, therefore, 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. The patent statute makes it clear that subject matter that would have been obvious to one of ordinary skill in the art as of the effective filing date of a patent application is not patentable. 35 USC ? 103: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. The obviousness considerations have been set by Graham v. John Deere Co . of Kan. City, 383 U.S. 1, 17-18 (1966): (1) The scope and content of the prior art; (2) The level of ordinary skill in the art; (3) The differences between the claimed subject matter and the prior art; and (4) Secondary considerations of non-obviousness. In Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567 (Fed. Cir. 1984), the court envisioned a hypothetical "person having ordinary skill in an art (PHOSITA)" having access to the entire relevant prior art available to public anywhere in the world, at the time the invention was made, then the court would step into the shoes of the PHOSITA to find the alleged invention obvious or not. However, disputes have arisen as to what the relevant scope of the art should be and what motivation if any would be required for the PHOSITA to combine the art to come up with the claimed invention without the hindsight. The Supreme Court, in KSR Intl. v. Teleflex, Inc., attempted to clarify the proper analysis for an obviousness determination. The KSR decision reinforced earlier decisions that validated a more flexible approach to providing reasons for obviousness. However, the Supreme Court's pronouncement in KSR overruled cases such as In re Lee , insofar as those cases require record evidence of an express reason to modify the prior art. In KSR, the Supreme Court particularly emphasized "the need for caution in granting a patent based on the combination of elements found in the prior art," Id. at 415, 82 USPQ2d at 1395, and discussed circumstances in which a patent might be determined to be obvious. The Supreme Court reaffirmed principles based on its precedent that "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."Id. at 415-16, 82 USPQ2d at 1395. The Supreme Court stated that there are "[t]hree cases decided after Graham [that] illustrate this doctrine." Id. at 416, 82 USPQ2d at 1395. (1) "In United States v. Adams, . . . [t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." Id. (2) "In Anderson's-Black Rock, Inc. v. Pavement Salvage Co., . . . [t]he two [pre-existing elements] in combination did no more than they would in separate, sequential operation." Id. at 416-17, 82 USPQ2d at 1395. (3) "[I]n Sakraida v. AG Pro, Inc., the Court derived . . . the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417, 82 USPQ2d at 1395-96 (Internal quotations omitted). The principles underlining these cases are instructive when the question is whether a patent application claiming the combination of elements of prior art would have been obvious . The Supreme Court further stated that "When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, ? 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." Id. at 417, 82 USPQ2d at 1396. When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. As reiterated by the Supreme Court in KSR, the framework for the objective analysis for determining obviousness under 35 U.S.C. 103 is stated in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and content of the prior art; and (B) Ascertaining the differences between the claimed invention and the prior art; and (C) Resolving the level of ordinary skill in the pertinent art. Objective evidence relevant to the issue of obviousness must be evaluated by Office personnel. Id. at 17-18, 148 USPQ at 467. Such evidence, sometimes referred to as "secondary considerations," may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results. The evidence may be included in the specification as filed, accompany the application on filing, or be provided in a timely manner at some other point during the prosecution. The weight to be given any objective evidence is made on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive of the issue of obviousness. While each case is different and must be decided on its own facts, the Graham factors, including secondary considerations when present, are the controlling inquiries in any obviousness analysis. The Graham factors were reaffirmed and relied upon by the Supreme Court in its consideration and determination of obviousness in the fact situation presented in KSR, 550 U.S. at 406-07, 82 USPQ2d at 1391 (2007). The Supreme Court has utilized the Graham factors in each of its obviousness decisions since Graham. See Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh'g denied, 426 U.S. 955 (1976); Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976); and Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969). As stated by the Supreme Court in KSR, "While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls."KSR, 550 U.S. at 407, 82 USPQ2d at 1391. In Perfect Web Technologies, Inc. v. Info USA, Inc., 587 F.3d 1324, 1329, 92 USPQ2d 1849, 1854 (Fed. Cir. 2009), Federal Circuit has explained that the use of common sense does not require a "specific hint or suggestion in a particular reference," only a reasoned explanation that avoids conclusory generalizations. One confusing issue for all is whether an inherent property obviates an invention. In In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782 (Fed. Cir. 1995), the Court held that the inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness. The Federal Circuit, in Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565 (Fed. Cir 1986), held that to establish obviousness based upon an inherent property in the prior art, that inherent property would have to be obvious to the PHOSITA at the time of the invention. In Application Spoorman, 363 F.2d 444, 448 (CCPA 1966), the court held that which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown. "Hindsight of inherency" is not a substitute for some teaching or suggestion supporting obviousness. However, for anticipation under 35 USC 102, there is no such requirement that the inherent quality of the prior art was understood by a PHOSITA to support an argument of inherent anticipation, because the inherent property in the prior art inevitably would result in the invention. Inherency is predicated on the idea that anticipation should not be avoided merely because a claimed feature is undisclosed or unrecognized in the prior art reference. Further, if the claimed element is inherent in the prior art then the prior art cannot be practiced without infringing the claimed invention, which, therefore, logic requires that it should be anticipated by the prior art. Thus, according to the doctrine of inherency, anticipation can be inferred despite a missing element in a prior art reference if the missing element is either necessarily present in or a natural result of the product or process. For example, if a medication for headache is available in the market without the knowledge of its mechanism of action, a claim to such hitherto unknown mechanism of action identified by the inventor cannot be sustained because of it is an inherent property of the matter, whether it is known or unknown at the time of the discovery of the mechanism. Therefore, such discovery of an inherent property of matter is not patentable, because the matter was known already. An examiner, relying on the doctrine of inherency to reject a claim as being anticipated, must provide a basis in fact or technical reasoning supporting an allegedly inherent characteristic present in the teachings of the prior art, even if the inherent feature would not have been recognized. An exception to this inherency doctrine is found in the US, wherein a hitherto unknown, novel and non-obvious use of a known matter is patentable, e.g., Viagra, wherein an inventor indentified that a known vasodilator could be used to treat erectile dysfunction. In this exception, even though the vasodilator inherently dilates the blood vessels in the entire body including the vessels in the penis, thereby causing an erection along with the dilation of the entire vasculature in the body of the subject.