I have an invention in mind, but there is a certain patent with claims that look nearly identical except for one minor part, where the existing patent differs. This minor part is in the very first claim itself. Yet, the existing patent and my invention differ wildly in outcome if this minor part is modified (there's nothing particularly advanced, technically speaking, about the modification), and a few additional non-novel features are added, as I do in my invention. At the end of these modifying steps, the end result is quite advanced.

So my question is: When evaluating for inventive step, novelty, non-obviousness and so on, does the examiner focus on the claims or the overall invention? When looking at the claims, it seems there's not much difference between the two, but when looking at the inventions, they are radically different.

Does this bode well for my potential USPTO patent?

2 Answers 2


Claims define the protected invention and are what an examiner rejects or allows. Claims define but do not necessarily explain. The specification and drawings explain the invention.

If that explanation shows that a new small change in a known device makes a big, unexpected, change in operation and results you most likely have a patentable invention. The change need not be hard to make but needs to be novel.

Also “inventive step” is a criteria in most of the world, except the US where we use “non-obviousness”, a similar but not identical criteria.


Comparing the United States, Europe, and China, the USPTO places greater emphasis on the claims rather than the content of the specification/description. That is, if a technical term or step A is present in the claims and is interpreted as B by a person skilled in the art, but is described as C in the specification (where C is not contradictory but has a different scope than B), the USPTO will interpret A according to B to determine the scope of protection.

  • I think is overly simplified.
    – George White
    Commented Nov 14, 2023 at 16:27
  • @GeorgeWhite ,yes , i just give a example to introduce. In fact, As an applicant, you need to evaluate your application documents from the worst-case scenario to ensure sufficient optimization. My response tends to overcorrect rather than providing a rigorous answer with necessary corrections.
    – RAEER
    Commented Nov 15, 2023 at 6:50

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