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Date Published

In order to determine whether a claim is novel in view of a citation, examiners must:

  • establish that the citation is a relevant prior art document that can be considered for the purpose of a novelty objection (see 2.4.4 Relevant Prior Art and 2.4.11 “Whole of Contents”);

  • interpret the citation to determine what it disclosed to an addressee at its date of publication (see 2.4.5 Construing the Citation);

  • determine whether the citation discloses all the features of the claim (if so, the claim is not novel);

  • if there are any differences between the features of the claimed invention and the disclosure of the citation, construe the specification and claim and identify whether those features are essential (or inessential) features of the invention (see 2.4.8 Not All Features of Claim Disclosed in Citation); and

  • determine whether the citation discloses all the essential features of the claimed invention (if so, the claim is not novel).

If not all the essential features are disclosed in the citation, the claim is novel. Examiners should then proceed to consider whether the claimed invention involves an inventive step.

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