How does the MPEP guide examiners in analyzing claims for prior art searches?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 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. The Manual of Patent Examining Procedure (MPEP) 904.01 provides guidance for examiners on analyzing claims for prior art searches. It states: “The examiner should carefully analyze the claim and the supporting disclosure to determine the limitations on the invention being claimed.” This analysis involves: Identifying the inventive concept Determining the scope of the claims Considering both narrow and broad interpretations Focusing on novel features or combinations By thoroughly analyzing the claims, examiners can conduct more effective and efficient prior art searches. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Parent Applications Must Be Reviewed for Prior Art MPEP 904 Required Examiner Must Consider Prior Art from Parent Application MPEP 904 Required Review of Cited Prior Art from Parent Application Required MPEP 904 Recommended Examiner Must Identify All Prior Art Sources MPEP 904 Required Document Used in Claim Rejection Is Called a Reference MPEP 904 First Search Should Cover Invention as Claimed MPEP 904 Recommended Examiner Must Review File Wrapper History and PTAB Post-Grant Proceedings MPEP 904 Required Documents Cited in International Search Report Must Be Considered MPEP 904 Examiner’s First Office Action Relies on Initial Search References MPEP 904 Examiner Must Complete Search Notes Form MPEP 904 Required Other Related FAQs 5 FAQs Collapse What additional classification systems should patent examiners consider besides CPC? How does the concept of analogous arts apply to anticipation under 35 U.S.C. 102? How does the concept of analogous arts relate to obviousness in patent law? What are analogous arts in patent examination? Are applicants requ...