2100 Patentability

How to Rebut a 102/103 rejection based on Inherency

MPEP ยง 2112 which address the Inherency Doctrine, makes clear that once a prima facie case of obviousness is established, the burden shifts to applicants to show that the claimed property is not inherent. However, this section of the MPEP (and the MPEP as a whole) fails to articulate how applicants can satisfy this burden. Because of this lack of guidance, Examiners commonly mistakenly apply the unexpected results standard to rebuttal evidence submitted by applicants. For example, Examiner's commonly demand that the showing needs to be "commensurate in scope with the claims," to rebut an inherency based rejection. This is plainly wrong.


A paper publishing in the JPTOS in June of 2019 shows dealing with the Inherency Doctrine is a real problem for the examination core. For example, 80% of obviousness rejections based on the Inherency Doctrine by art unit 3700 are reversed by the PTAB.


The correct analysis is outlined in, for example, Ex parte Watanabe, No. 2016-5113, 2017 BL 311735 (P.T.A.B. August 25, 2017) and this decision could be cited by the MPEP with an explanation of the proper rebuttal showing, i.e., one example that the allegedly inherent result does not in fact occur in the claimed parameters.



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Idea No. 257