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Topic: Inherent Anticipation (Read 4127 times) |
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PA
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Re: Inherent Anticipation
« Reply #5 on: Aug 21st, 2007, 12:21pm » |
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One way I approach inherency is to show that the allegedly inherent feature or result is a mere possibility In particular, I try to come up with a few examples of alternatives to the allegedly inherent feature or result.
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pentazole
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Re: Inherent Anticipation
« Reply #6 on: Aug 21st, 2007, 3:28pm » |
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Hmm... I'm not sure I follow on the mere possibility. If whatever the functional limitation is limiting is viewed as anticipated by the prior art, then even if the functional limitation itself is a mere possibility, it would still be inherent. It would be difficult for the examiner to bring about a rejection based on inherence if they didn't first argue that whatever you're claiming, without the functional limitations, is in itself anticipated in the prior art.
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PA
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Re: Inherent Anticipation
« Reply #7 on: Aug 21st, 2007, 3:44pm » |
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on Aug 21st, 2007, 3:28pm, pentazole wrote:| I'm not sure I follow on the mere possibility. |
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From MPEP 2112: "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.' "
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pentazole
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Re: Inherent Anticipation
« Reply #8 on: Aug 21st, 2007, 3:53pm » |
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yeah sorry I got hung up on functional limitations. That's what's on my mind right now...
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pentazole
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Re: Inherent Anticipation
« Reply #9 on: Nov 25th, 2007, 4:46pm » |
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on Aug 21st, 2007, 12:21pm, PA wrote:| One way I approach inherency is to show that the allegedly inherent feature or result is a mere possibility In particular, I try to come up with a few examples of alternatives to the allegedly inherent feature or result. |
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To touch up on this a bit more, I have recently had experience dealing specifically with something like this.
Client claims a composition with A and B, having a functional limitation X greater than, let's say, 10 (for example, pH, conductivity, molecular weight, etc. etc.)
we get cited many references where there are compositions with A and B, and of course inherently X according to the examiner would be the same.
of course all these references "comprixe" A and B, so there are other things in there. I overcame the rejections simply by showing that pretty much every exemplary embodiment in these references has X outside the scope of my client's claims. Therefore, as PA said, this will legally translate into the examiner alleging that our X is a mere possibility, and doesn't *necessarily* arise from the prior art... that is, it does not in each and every case read on my client's claim.
However, if the examiner does come back and show one embodiment where it does, then we will be anticipated, but at least the burden of proof is now on them not on me.
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