Bill Carroll's article, "Demystifying Inherent Obviousness" was published in Law360 on November 6, 2017.
Few patent law doctrines create as much confusion as inherent obviousness. On the one hand, inherency is based on the principle that claiming a previously unknown function, property or result necessarily present in a known product or process does not confer patentability on a claim. On the other hand, an obviousness analysis considers whether prior art teachings would lead a skilled artisan to the claimed invention. But obviousness “cannot be predicated on what is unknown,” and unknown characteristics of the prior art do not constitute a teaching. How then do the unknown, but inherent, characteristics of the prior art factor into an obviousness analysis? This article proposes a simple framework for unraveling inherency issues that arise in the context of obviousness.
Embedded Inherent Anticipation
In the simplest example, an obviousness case may rely on combining teachings from multiple references, where a single reference explicitly discloses one component of a multi-component claim. Claiming a property associated with the known component would not add patentable weight to the claim as a whole. Under these circumstances, the inherency issue can collapse into one of embedded inherent anticipation.
To read the entire Law360 article, click here.