How does the use of new terminology affect the comparison with prior art?
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…
Read MoreHow does the ‘design choice’ rationale apply in obviousness rejections?
How does the ‘design choice’ rationale apply in obviousness rejections? The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when: “The claimed structure and the prior art structure are identical or substantially identical, or are…
Read MoreHow are differences between the claimed design and prior art evaluated?
When evaluating differences between the claimed design and prior art for nonobviousness, the MPEP emphasizes that it’s the overall appearance that matters: “In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).” The MPEP…
Read MoreIs an applicant required to compare their invention with subject matter that doesn’t exist in the prior art?
No, an applicant is not required to compare their claimed invention with subject matter that does not exist in the prior art. The MPEP 716.02(e) clarifies this point: “Although evidence of unexpected results must compare the claimed invention with the closest prior art, applicant is not required to compare the claimed invention with subject matter…
Read MoreCan an applicant compare their invention with prior art that is closer than what the examiner cited?
Yes, applicants can compare their claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner. This is explicitly stated in MPEP 716.02(e): “Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art…
Read MoreAre comparisons with prior art allowed in patent applications?
Yes, comparisons with prior art are generally allowed in patent applications, as long as they are not derogatory. The MPEP 608.01(r) explicitly states: “Mere comparisons with the prior art are not considered to be disparaging, per se.” This means you can compare your invention to existing technologies to highlight improvements or differences. However, ensure that…
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