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There are many reasons to draft a patent application in a problem-solution format.

One of these is to strengthen the claims against an obviousness attack. Prior art references used to reject patent claims must be from analogous art to the claimed invention. Obviousness is one reason that an invention can be rejected by a patent examiner. in other words, an invention needs a “substantial step” beyond those taken in the prior art. 

References that are in the same field of endeavor as the invention are considered analogous art, and even references that are not in the same field of endeavor, but that are reasonably pertinent to the problem solved by the invention, are deemed analogous art. 

The Manual of Patent Examination Procedure, MPEP, defines analogous art based on whether “(1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”. See In Re Alberto Lee Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212, MPEP 2141.01, (a) Analogous and Nonanalogous Art [R-10.2019].

Drafting the application in a problem-solution format will provide the context and support for future arguments that may need to distinguish the problems solved by the invention from those of the prior art and may disqualify those references as non-analogous art.

By Khaled Shami