How should patent examiners evaluate claims that might have previously been rejected under the Old Combination principle?

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.

Patent examiners should evaluate claims based on their compliance with current statutory requirements, particularly 35 U.S.C. 112(b), rather than using the Old Combination principle. The MPEP 2173.05(j) states:

“Claims should be considered proper so long as they comply with the provisions of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”

This means examiners should focus on whether the claims particularly point out and distinctly claim the subject matter which the inventor regards as the invention, rather than considering whether the combination of elements is old or new.