How does the use of new terminology affect the comparison with prior art?

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 use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):

“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”

Key points to consider:

• New terms are often necessary when describing new technologies or rapidly evolving fields.
• The difficulty in comparison doesn’t automatically make the new terms indefinite.
• Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
• The language should be as precise as the subject matter permits.

While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.