How should prior art be considered in patent examination?

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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. Prior art must be considered in its entirety during patent examination, including portions that may teach away from the claimed invention. The MPEP 2141.02 states: “A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention.” This means that examiners should not cherry-pick only the parts of a reference that support an obviousness rejection while ignoring contradictory teachings. However, the MPEP also notes: “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” Therefore, while all aspects of a prior art reference should be considered, the mere presence of alternative solutions does not necessarily negate its relevance to the claimed invention. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Differences Between Prior Art and Claimed Invention MPEP 2141.02 Gap Between Prior Art and Claimed Invention Must Be Reasonable MPEP 2141 Prohibited Differences Between Claimed Invention and Prior Art Must Be Non-Obvious MPEP 2141 Prohibited Prior Art Must Be Evaluated Entirely MPEP 2141.02 Required Disclosure of Multiple Alternatives Does Not Teach Away MPEP 2141.02 Differences Between Claimed Invention and Prior Art Must Be Considered MPEP 2141.02 Recommended Difference Between Invention and Prior Art Does Not Establish Nonobviousness MPEP 2141 Prior Art Need Not Teach All Claim Limitations MPEP 2141 Required Rebuttal Evidence Must Be Considered in Obviousness Determination MPEP 2141 Required Prior Art Must Be Eval...