The Intersection of Inherency and Obviousness

The oral argument inĀ KANEKA CORPORATION v. SKC KOLON PI, INC., No. 2015-1223 (Fed. Cir. Sept. 15, 2015) [Listen] will interest those of you who have ever had to address the role of inherency in an obviousness challenge.

My favorite quote about the role of inherency in an obviousness context is illustrated in Irah Donner’s excellent three book treatise, Patent Prosecution Law, Practice, and Procedure, Eighth Edition, Volume II at page 2776:

“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”

In re Spormann, 363 F.2d 444, 150 USPQ 449, 452 (C.C.P.A. 1966).

The rule 36 judgment is available [here].

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