Board of Patent Appeals Reverses Examiner’s Inherency Finding

MARK TERRY, ESQ.

In Ex parte Smith (Appeal No. 2010-008057), the Board of Patent Appeals and Interferences reviewed an examiner’s 35 U.S.C. 103(a) obviousness rejection involving an industrial resin. The claims required a filler that covalently bonds with another element.

The examiner relied on prior art said to disclose the same chemical structure and asserted that the claimed covalent bonding would therefore be inherent. But the examiner offered only a conclusion and did not explain why the prior-art composition would necessarily produce the claimed bond.

The applicant argued that the reference was silent about covalent bonding and that other forms of bonding, including ionic bonding, were possible.

The Board emphasized that an inherent characteristic must be inevitable—not merely possible or probable. Because the examiner supplied no evidence or explanation showing that the prior-art agents would necessarily create the claimed direct covalent bond, the examiner had not established a prima facie case of obviousness.

The rejection was reversed.

Practical takeaway: When an obviousness rejection depends on inherency, practitioners should examine whether the cited art would inevitably or necessarily produce the claimed device, composition, property, or method. A statement that the result could occur is not enough; the examiner must support inherency with evidence and reasoning.