What is the relevance of “teaching away” in patent examination?
“Teaching away” is an important concept in patent examination, particularly when assessing obviousness. The MPEP 2141.02 discusses this concept in the context of considering prior art: “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.” When a prior art reference…
Read MoreWhat is meant by considering the invention “as a whole”?
Considering the invention “as a whole” means evaluating the entire claimed invention, rather than focusing on individual elements or differences. The MPEP 2141.02 emphasizes this concept: “Distilling an invention down to the ‘gist’ or ‘thrust’ of an invention disregards the requirement of analyzing the subject matter ‘as a whole.’” This approach prevents oversimplification of the…
Read MoreHow are inherent properties considered in patent examination?
Inherent properties disclosed in the specification are considered part of the “as a whole” inquiry in patent examination. The MPEP 2141.02 clarifies: “In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question… but also to those properties of the subject matter…
Read MoreWhat evidence is required when claiming discovery of a problem’s source?
When claiming to have discovered the source of a problem as a basis for patentability, applicants must provide substantiating evidence. The MPEP 2141.02 states: “Applicants who allege the inventor discovered the source of a problem must provide evidence substantiating the allegation, either by way of affidavits or declarations, or by way of a clear and…
Read MoreCan discovering the source of a problem contribute to patentability?
Yes, discovering the source of a problem can contribute to patentability, even if the solution seems obvious once the problem is identified. The MPEP 2141.02 states: “[A] patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified.…
Read MoreHow 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…
Read MoreHow should the differences between prior art and claimed invention be assessed?
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…
Read MoreHow does the AIA affect the consideration of prior art timing?
The America Invents Act (AIA) has changed the relevant timing for considering prior art in patent examination. The MPEP 2141.02 notes: “For applications subject to the first inventor to file (FITF) provisions of the AIA, the relevant time is ‘before the effective filing date of the claimed invention’. For applications subject to pre-AIA 35 U.S.C.…
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