In making a rejection based on obviousness under 35 USC §103, a patent examiner considers the prior art references from the perspective of the person of ordinary skill in the art at the time of the invention. The obviousness determination involves a consideration of what the prior art references teach and whether one of skill would combine the prior art teachings to arrive at the claimed invention. Logically, an inherent feature not disclosed in the references or known at the time of the invention seemingly has no place in the obviousness determination. A fundamental principle of obviousness under 35 USC §103 is that it is predicated on a determination of what is known in the art at the time of invention. On occasion, claims are rejected or invalidated based on assertions of obviousness that depend on the principle of inherency. Inherency refers to a determination of whether a characteristic, property, or feature recited in a claim that is not explicitly taught by the prior art, would have necessarily been present in the teachings of the prior art.1 Inherency primarily applies to anticipation under 35 USC §102. In anticipation analysis, inherency is based on what is necessarily present in the prior art. There is no requirement in anticipation that the skilled artisan would have recognized the inherent element at the time of invention, only that a skilled artisan would recognize at the time of the anticipation inquiry that the inherent element was in fact present. Thus, it would seem to be a contradiction to assert that a claimed invention is obvious because of an inherent and unrecognized property in the prior art given that obviousness cannot be established on the basis of what is not known.2 The law of inherency has become convoluted in and of itself, and many articles have been devoted to the topic of inherent anticipation. Inherency's application to obviousness is even more treacherous because it is easy to fall into the trap of using inherency to reach claim limitations that are novel by asserting they were inherent in the combined teachings of the prior art. The application of inherency to obviousness will be referred to as inherent obviousness for the purposes of this article. To best frame why inherent obviousness is a problem for both patent practitioners and examiners alike, we provide a hypothetical to illustrate the nuance of the issues.

中文翻译：

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固有性在确定显而易见性方面是否占有一席之地？

在根据 35 USC §103 做出基于显而易见性的驳回时，专利审查员从发明时本领域普通技术人员的角度考虑现有技术参考。显而易见性确定涉及考虑现有技术参考文献教导的内容以及技术人员是否将结合现有技术教导以达到要求保护的发明。从逻辑上讲，在参考文献中未公开或在本发明时已知的固有特征在显而易见性确定中似乎没有地位。根据 35 USC §103 的显而易见性的基本原则是，它基于对发明时本领域已知内容的确定。有时，根据依赖于固有原则的显而易见性的主张，权利要求被拒绝或无效。固有性是指确定现有技术中未明确教导的权利要求中引用的特征、性质或特征是否必然存在于现有技术的教导中。 1 固有性主要适用于 35 USC 下的预期第 102 条。在预期分析中，固有性基于现有技术中必然存在的内容。不要求熟练技术人员在发明时已经认识到固有元素，只要求熟练技术人员在预期询问时认识到固有元素实际上存在。因此，鉴于显而易见性不能基于未知的东西来确定，因此断言要求保护的发明是显而易见的，因为在现有技术中具有固有的和未被承认的财产，这似乎是矛盾的。 2 固有法则在以及它本身，许多文章都专门讨论了内在预期的主题。固有性对显而易见性的应用甚至更加危险，因为很容易陷入使用固有性的陷阱，通过断言它们是现有技术的组合教导中固有的来达到新颖的权利要求限制。就本条而言，将固有性应用于显而易见性将被称为固有显而易见性。为了最好地说明为什么固有的显而易见性对专利从业者和审查员都是一个问题，