Inherently Obvious: What Is Happening?

“Inherently obvious.” Is that an oxymoron? Perhaps, but it's a reality for patent practitioners.

For years, it was settled case law that inherency belonged in an anticipation analysis but not an obviousness one. “That which may be inherent is not necessarily known; obviousness cannot be predicated on what is unknown.” In re Spormann, 363 F.2d 444 (CCPA 1966).

Anticipation focuses on what is disclosed in the prior art. Thus, a prior art disclosure may inherently disclose a claim element even where a person of ordinary skill in the art would not have recognized that inherent element at the time of invention. See, e.g., Schering Corp. v. Geneva Pharms., 339 F.3d 1373 (Fed. Cir. 2003).