How should the differences between prior art and claimed invention be assessed?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. The differences between the prior art and the claims must be assessed by considering the claimed invention as a whole, not just individual differences. As stated in MPEP 2141.02 : “In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious.” This means examiners and inventors should consider how all elements of the claim interact and contribute to the overall invention, rather than focusing solely on individual differences from prior art. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Differences Between Prior Art and Claimed Invention MPEP 2141.02 Gap Between Prior Art and Claimed Invention Must Be Reasonable MPEP 2141 Prohibited Differences Between Claimed Invention and Prior Art Must Be Non-Obvious MPEP 2141 Prohibited Invention as a Whole Must Be Obvious MPEP 2141.02 Invention as a Whole Must Be Obvious Under 35 U.S.C. 103 MPEP 2141.02 Required Prior Art Need Not Teach All Claim Limitations MPEP 2141 Required Difference Between Invention and Prior Art Does Not Establish Nonobviousness MPEP 2141 Prior Art Must Be Evaluated Entirely MPEP 2141.02 Required Claims Must Consider Invention Holistically, Not Just Structure MPEP 2141.02 Understanding Invention for Prior Art Search MPEP 2141 Required Other Related FAQs 5 FAQs Collapse How does the AIA affect the consideration of prior art timing? How should prior art be considered in patent examination? Can discovering the source of a problem contribute to patentability? What evidence is required when claiming discovery of a problem&#8217;s ...