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Guidelines for Examination

 
 

9.4 Identification of relevant passages in prior art documents

In the case of long documents, the examiner should indicate those parts (such as a claim, example, figure, table or text passage on a particular page) of a cited document which contain the technical subject-matter closest to (or coinciding with) the searched invention. This is of particular importance where the document is relied upon for objections of novelty or inventive step.

Furthermore, it makes sense to cite not only those parts of the document describing the same or similar technical subject-matter, but also those parts or passages relating to the problem solved by that subject-matter. This approach facilitates the assessment of inventive step in examination and also gives the applicant a greater indication of how the document may be used during prosecution.

References

Rule 61(2)