Chemistry expert witness Edward Funk, Ph. D., presented this short course to senior level chemical engineers on patents:
Third, the MOI should include a reasonable summary of the prior art. This gives the reviewers a warm feeling that the writer of the memo has some reasonable appreciation concerning the novelty of the invention. In many cases, the inventor knows the prior art quite well. Some arguments why the MOI isn’t obvious in light of the prior art can be very helpful to a patent committee.
Fourth, the memo should have the correct administrative details such as references to lab books and the names of the inventors. Including a colleague who did not contribute to the invention raises a flag indicating possible future problems and undermines the credibility of the MOI as a legal document. An easy reason to lower the priority; someone will need to straighten out the inventors.