Inherency In Obviousness—A Worrying Trend?

Anticipation by inherency is a well-recognized, and generally well-understood, patent law doctrine. A prior art reference may anticipate an undisclosed feature of the claimed invention if that missing feature is: (1) necessarily present in or (2) the natural result of the elements explicitly disclosed by the prior art. Courts have typically adhered to this standard. Courts, and parties appearing before those courts, have been less successful, however, in adhering to the U.S. Court of Appeals for the Federal Circuit's standard for the use of inherency in obviousness analyses, especially in the last 10 years.

These difficulties stem from important differences between anticipation and obviousness. Anticipation focuses on what is disclosed in the prior art and not what one of ordinary skill in the art would have understood or appreciated based on that disclosure. Thus, a prior art disclosure may inherently disclose a claim element even where a person of ordinary skill in