While Examiners are permitted to reject features under 35 U.S.C. § 102 as being inherent, the test for establishing inherency is fairly rigorous, and in our experience,
rarely met. The following is a sample of a traversal of a rejection for failing to properly establish inherency. To help illustrate how such a traversal may be made, the
sample pertains to an antenna since traversing an assertion of inherency can be highly fact-specific.
Applicant respectfully submits that the Office Action’s characterization of an antenna in the cited document as being inherent with respect to claim X is improper.
According to MPEP § 2112(IV), the Office always bears the initial burden of developing reasons supporting a reliance on inherency. To satisfy this burden, the Office
must identify some basis in fact or articulate some reasoning at least tending to show that allegedly inherent subject matter necessarily (i.e., inevitably)
flows from cited art. Indeed, MPEP § 2112(IV) states, in part, that “[t]he fact that a certain result or characteristic may occur or be present in the prior art is not
sufficient to establish the inherency of that result or characteristic.” “To establish inherency, the extrinsic evidence 'must make clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)” (Id.) “‘In relying upon the theory of inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.’
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)” (Id.).
[THIS SECTION IS HIGHLY FACT-SPECIFIC] In the present case, Applicant respectfully submits that the antenna of claim X does not “necessarily” flow from the cited document.
The Office Action stated on page [PAGE NUMBER] that “[t]he wireless devices of the cited document must have at least one antenna regardless of whether it is apparent or hidden”.
However, the means of communication is not specified in the cited document, and an antenna is not always used in wireless communication. For instance, infrared signals may
be used for wireless communication, such as in the case of a television remote control, and such a remote control does not have an antenna. Applicant respectfully
submits that an antenna is not inherently necessary for wireless communications and as such, the cited document does not inherently disclose this feature to the
satisfaction of the MPEP.
Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.
As attorney Tom Adams noted in a comment, it is important to recognize that while MPEP § 2112(IV) states that "the extrinsic evidence ‘must make clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill" (emphasis added),
the recognition as discussed in In re Robertson need not be at the time the cited art was made. "[I]nherent anticipation does not require a person of ordinary skill
in the art to recognize the inherent disclosure in the prior art at the time the prior art is created" (SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331,
1343 (Fed. Cir. 2005)). Schering states that "this court rejects the contention that inherent anticipation requires recognition in the prior art" (Schering Corp.
v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Thus, subsequently recognized inherency is sufficient. Accoridngly, MPEP's statement in MPEP § 2112(IV)
that the inherent feature must "be so recognized by persons of ordinary skill" does not extend to the situations discussed in Apotex and Schering.