How does AIA 35 U.S.C. 103 differ in terminology from pre-AIA 35 U.S.C. 103?

Question

Accepted Answer

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. AIA 35 U.S.C. 103 uses slightly different terminology compared to pre-AIA 35 U.S.C. 103, but this change does not affect the approach to determining obviousness. The MPEP states: “ AIA 35 U.S.C. 103 requires consideration of ‘the differences between the claimed invention and the prior art,’ while pre-AIA 35 U.S.C. 103 refers to ‘the differences between the subject matter sought to be patented and the prior art.’ “ The MPEP clarifies that this difference in terminology does not indicate a need for any change in the approach to obviousness. The term “claims” has been used in patent legislation since 1836 to define the invention that an applicant believes is patentable. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Definition of Claims in Patent Legislation MPEP 2158 Claims Equate to Subject Matter Sought MPEP 2158 Differences Between Claims and Prior Art Must Be Ascertained MPEP 2158 Exceptions to Prior Art Under AIA 35 U.S.C. 102 MPEP 2158 No Difference in Obviousness Analysis Despite Terminology Change MPEP 2158 Difference in Claim Language for AIA and Pre-AIA 103 MPEP 2158 Important Changes from Pre-AIA for Nonobviousness Requirement MPEP 2158 No Similar Provisions to Pre-AIA 103(b) in AIA 103 MPEP 2158 Disclosure Not Prior Art Under AIA 102(b)(2)(C) MPEP 2158 Disclosures Excepted as Prior Art Cannot Be Used in Rejections MPEP 2158 Prohibited Other Related FAQs 5 FAQs Collapse What changes did AIA 35 U.S.C. 103 make to pre-AIA 35 U.S.C. 103(b) and 103(c)? How does AIA 35 U.S.C. 103 treat commonly owned prior art? How does AIA 35 U.S.C. 103 affect the determination of obviousness? How does AIA 35 U.S.C. 103 define prior art for obviousness determinations? What...