Monday, May 1, 2017, 8:45 AM

Inherency and Patent Claims

A patent claim can be rejected for inherency over a reference.  An inherent property cannot be claimed, even if that property was not known at the time a prior art composition was disclosed or prior art invention was made.  But, what happens if a new invention makes use of an inherent property, and this new use is not known by others?  This is where the art of claims drafting comes in.
Claim limitations directed to an action that makes use of this inherent property could be argued as novel or unobvious, if the known reference(s) only disclose the original article, composition, process that results in a compound or article, etc., but do not disclose the new action that makes use of the inherent property.  Relatedly, claim limitations directed to a structure that makes use of an inherent property could be argued as novel or unobvious, if the known reference(s) explicitly or implicitly suggest the inherent property, but do not explicitly show or suggest a structure comparable to the claimed structure.

Whether arguments about novelty or unobviousness in such a case would be successful is going to depend on the inherent property itself and what can be deduced from the inherent property, as far as usage of the inherent property and structures that make use of the inherent property.
Here are a couple of generic, fictional examples.  Suppose it is inherent that the two different types of memory shown in a reference include fast memory and slow memory.  Even if the reference doesn’t explicitly say one of the types of memory is faster than the other, a claim to some structure that has fast and slow memory is readily rejected as inherent over this reference.  But, a claim to using the faster memory for some new function and using the slower memory for some other new function, or the structural combination of these functions and the memories, might be novel or unobvious over this reference, depending on what those functions are and whether how they make use of the faster and slower memories could be directly inferred from the reference(s).

Suppose it is inherent that some article or compound has some types of behavior or characteristics over various temperature ranges.  A claim to the article or compound exhibiting these types of behavior or characteristics at the various temperature ranges is readily rejected, even if the cited prior art reference(s) do not explicitly disclose these behaviors or characteristics, and they are later determined, because the article or compound itself is known in the prior art.  But, a claim to some use of one of these behaviors or characteristics of the article or compound at some specified temperature or temperature range, or a structure that makes use of one or more of these behaviors or characteristics over some temperature range might be novel or unobvious, if the prior art does not teach or suggest the use or the structure.

Keep in mind, apparatus claims can be directed to a structure, or a structure that performs a function (i.e., functional claiming), method claims are directed to a series or sequence of steps (or actions), and the associated claim limitations are what are compared to cited references during patent examination.  Writing the claim limitations, or amending them during examination, so that the claim limitations exhibit more than just the inherent characteristic(s) of a known material or known structure, for example by showing a new structure or new combination of steps or actions, is a strong strategy to take when faced with possible rejection over inherent characteristics.

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