Can an applicant compare their invention with prior art that is closer than what the examiner cited?

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.

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 relied upon by the examiner.”

This allows applicants to present evidence of non-obviousness against the most relevant prior art, even if it differs from what the examiner cited. Such comparisons can be more effective in demonstrating the invention’s unexpected results or advantages.