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2.5.2.5.3.2 Document Discusses a Different Problem

Date Published

Note: The information in this part only applies to standard patent applications with an examination request filed before 15 April 2013.  For standard patent applications with an examination request filed on or after 15 April 2013, the requirement that the prior art information be ascertained, understood and regarded as relevant by the person skilled in the art does not apply.

It is not essential for a document to discuss the same, or a similar, problem in order to be regarded as relevant.  However, where a document lies in an art remote from that of the problem solved by the invention, its relevance is open to question:

"...there appears to be no reason why a person skilled in the nurseryman's art would have approached the rubber industry for a solution to his problem, or, if he had thought of forming coconut fibre into a mouldable mass by use of an adhesive, would have gone to persons skilled in the rubber trade to help him, when he would not have known of any product of that industry made by use of such a technique."

(Proctor v Flo-Con, 4 IPR 187 at page 198)

Where a document discusses a different problem, examiners will need to provide good reasons why the person skilled in the art would consider the document relevant to solving the problem. In the absence of good reasons, the document would not be regarded as relevant.

One possible reason for regarding a document which does not discuss the same, or a similar, problem as relevant is that it provides relevant technical background knowledge.

Where the problem contains two unrelated part-problems, only one of which is discussed in the document, examiners will need to consider whether a person skilled in the art would consider the document relevant to the whole problem.

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