Is an applicant required to compare their invention with subject matter that doesn’t exist in the prior art?
No, an applicant is not required to compare their claimed invention with subject matter that does not exist in the prior art. The MPEP 716.02(e) clarifies this point:
“Although evidence of unexpected results must compare the claimed invention with the closest prior art, applicant is not required to compare the claimed invention with subject matter that does not exist in the prior art.”
This guideline ensures that comparisons are made against actual, existing prior art rather than hypothetical or non-existent technologies. It prevents applicants from being burdened with creating and comparing against fictional prior art scenarios.
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