Differences Between the Invention and the Prior Art

Differences Make Inventions Patentable.

When patenting an invention, the patent applicant's success depends on showing the differences between the invention and the prior art.

When patenting an invention, the patent applicant’s success depends on showing the differences between the invention and the prior art.

Showing differences between the claimed invention and the prior art is critical when arguing for the patentability of the claims.  In order to get a patent, the inventor must show that the invention is new and not obvious.  An invention is new when it differs in any way from the state of the art when the invention was made.  Any and all differences must be considered by the patent office.  Whether an invention is not obvious (aka nonobvious or non-obvious) depends on how those differences affect the invention as a whole.

As we discussed in our article on the Graham Test for Obviousness, the four-part test for whether a new invention can be patented is as follows:

  1. Determining the scope and contents of the art when the invention was made;
  2. Ascertaining the differences between that art and the claim(s) at issue;
  3. Resolving the level of ordinary skill in the pertinent art when the invention was made; and
  4. Considering objective evidence present in the application indicating obviousness or non-obviousness when the invention was made.

Provided that the patent application meets the law’s formal requirements of (a) enabling the invention and (b) adequately describing the invention, see 35 U.S.C. 112step two in the above analysis is the most important part of patent prosecution.

Only new inventions are patentable. (A single difference from the prior art makes an invention new).  Beyond being new, only significant advances beyond the prior art deserve a patent.  So-called trivial, insubstantial, or “obvious” inventions are not patentable under United States Patent law.  See 35 U.S.C. 103.  So-called trivial, insubstantial, or “obvious” differences would give rise to such unpatenable trivial, insubstantial, or “obvious” inventions.

Technically speaking, any NEW invention is different.  Patentability hinges on showing why those differences matter.

Technically speaking, any NEW invention is different. Patentability hinges on showing why those differences matter.

A Patent Applicant Should Draft Claims Emphasizing Differences.

The applicant should emphasize the differences between the invention and the prior art when defining the invention in the patent claims.  Since the Patent Examiner must use all of the differences to evaluate patentability, defining the invention in terms of differences from the prior art provides opportunities to argue for patentability. If the Patent Examiner fails to consider any of the differences, the claim cannot be properly rejected.

Pointing Out Differences when Drafting the Application

The inventor should use the patent application to point out how the claimed invention differs from the prior art.  The Patent Examiner will evaluate the claims based on how the invention differs from the technology that the Examiner identifies when searching the prior art.  Pointing out the most relevant art and how the invention differs from that art helps show the patent examiner why the claimed invention is patentable.  Accordingly, the inventor should draft a patent application that describes the invention in a way that shows how it differs from the prior art.

Compare the Invention to the Prior Art in a Differences Table

Creating a differences table helps an inventor show how the invention differs from the prior art.  Organizing the information into a table help communicate the differences to both the patent agent assisting the invention and the patent examiner evaluating the claims for patentability.  The differences table should similar technology along one column of the table.  Next to each listed piece of similar technology, the inventors provide a brief summary of how their invention differs from that reference.

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