Under what circumstances can a rejection under 35 USC 102/103 be made?

A rejection under 35 USC 102 or 103 can be based on the concept of "silence" regarding an inherent characteristic in prior art. In patent law, a rejection under 102 is established if the claimed invention is anticipated by prior art, meaning that all elements of the claim are found within a single reference. However, a rejection under 103 involves determining whether a claim is obvious in light of prior art. When prior art is silent about an inherent characteristic, this does not necessarily preclude a rejection.

In this context, if the prior art does not explicitly disclose an inherent characteristic but it can be reasonably established that the claimed invention has this characteristic and that the characteristic is necessary for the operations of the product or process, the applicant can be rejected based on the obviousness criteria. Essentially, the absence of explicit disclosure does not insulate a claim from a rejection if the prior art could suggest that the inherent characteristic is present.

This nuance is essential in patent examination, where the focus is on whether the invention is novel and non-obvious in light of what came before. Recognizing that inherent characteristics within the broader context of prior art may lead to anticipation or obviousness views can significantly impact patentability outcomes.