How should prior art be considered in patent examination?
Prior art must be considered in its entirety during patent examination, including portions that may teach away from the claimed invention. The MPEP 2141.02 states:
“A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.”
This means that examiners should not cherry-pick only the parts of a reference that support an obviousness rejection while ignoring contradictory teachings. However, the MPEP also notes:
“the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….”
Therefore, while all aspects of a prior art reference should be considered, the mere presence of alternative solutions does not necessarily negate its relevance to the claimed invention.
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