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Ex Parte 6122635 et al

90008973 (B.P.A.I. Aug. 30, 2012)
Ex Parte 6122635 et al

43 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,547 times   185 Legal Analyses
    Holding that, in an obviousness analysis, "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it"

  2. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,179 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. Stratoflex, Inc. v. Aeroquip Corp.

    713 F.2d 1530 (Fed. Cir. 1983)   Cited 482 times   12 Legal Analyses
    Finding evidence of nonobviousness in the "[r]ecognition and acceptance of patent by competitors who take licenses under it"

  4. Perkin-Elmer Corp. v. Computervision Corp.

    732 F.2d 888 (Fed. Cir. 1984)   Cited 369 times   1 Legal Analyses
    Holding that when "a court does not discuss certain propositions," that "does not make the decision inadequate or suggest the court failed to understand them"

  5. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 232 times   3 Legal Analyses
    Holding an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning

  6. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 144 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  7. Iron Grip Barbell Co. v. USA Sports, Inc.

    392 F.3d 1317 (Fed. Cir. 2004)   Cited 132 times   12 Legal Analyses
    Noting that licenses "may constitute evidence of nonobviousness; however, only little weight can be attributed to such evidence if the patentee does not demonstrate a nexus between the merits of the invention and the licenses of record" (quoting In re GPAC Inc. , 57 F.3d 1573, 1580 (Fed. Cir. 1995) )

  8. Demaco Corp. v. F. Von Langsdorff Licensing

    851 F.2d 1387 (Fed. Cir. 1988)   Cited 166 times   2 Legal Analyses
    Holding that patentee bears the burden of proving a nexus between claimed secondary considerations and the merits of the patented invention

  9. Cable Elec. Products, Inc. v. Genmark, Inc.

    770 F.2d 1015 (Fed. Cir. 1985)   Cited 135 times   2 Legal Analyses
    Holding on summary judgment that even though commercial success could be deduced, it deserved no weight because a nexus was not established

  10. In re Huang

    100 F.3d 135 (Fed. Cir. 1996)   Cited 94 times   4 Legal Analyses
    Holding that the inventor's opinion as to the purchaser's reason for buying the product is insufficient to demonstrate a nexus

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,363 times   1046 Legal Analyses
    Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

  12. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,130 times   479 Legal Analyses
    Holding the party seeking invalidity must prove "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

  13. Section 305 - Conduct of reexamination proceedings

    35 U.S.C. § 305   Cited 175 times   12 Legal Analyses
    Noting that "reexamination will be conducted according to the procedures established for initial examination under the provisions of Sections 132 and 133"

  14. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 98 times   30 Legal Analyses

    (a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622

  15. Section 306 - Appeal

    35 U.S.C. § 306   Cited 42 times   1 Legal Analyses
    Providing that a petitioner can appeal adverse decisions to the Federal Circuit after reexaminations are complete

  16. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  17. Section 1.550 - Conduct of ex parte reexamination proceedings

    37 C.F.R. § 1.550   Cited 32 times   2 Legal Analyses
    Discussing limited involvement of requester and third parties in re-examination proceedings