Ex Parte 6304975 et al

17 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,576 times 189 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"
Graham v. John Deere Co.
383 U.S. 1 (1966) Cited 3,190 times 68 Legal Analyses
Holding commercial success is a "secondary consideration" suggesting nonobviousness
Constant v. Advanced Micro-Devices, Inc.
848 F.2d 1560 (Fed. Cir. 1988) Cited 748 times 4 Legal Analyses
Holding that evidence of routine business practice can be used to prove that a reference was accessible
In re Gleave
560 F.3d 1331 (Fed. Cir. 2009) Cited 150 times
Finding that the prior art reference was enabling and stating that “the fact that [the reference] provides ‘no understanding of which of the targets would be useful’ is of no import, because [the patent applicant] admits that it is well within the skill of an ordinary person in the art to make any oligodeoxynucleotide sequence”
Perricone v. Medicis Pharmaceutical Corp.
432 F.3d 1368 (Fed. Cir. 2005) Cited 147 times 3 Legal Analyses
Holding that a prior-art reference anticipated claims 1-4 and 7, but not claims 8, 9, and 13, because the latter set of claims contained one fewer limitation
In re Hall
781 F.2d 897 (Fed. Cir. 1986) Cited 97 times 4 Legal Analyses
Holding "that competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible"
IN RE WYER
655 F.2d 221 (C.C.P.A. 1981) Cited 61 times 7 Legal Analyses
Holding laid-open Australian patent was a printed publication where microfilm copy was available to the public at patent office and abstract was published
Application of Bayer
568 F.2d 1357 (C.C.P.A. 1978) Cited 44 times 2 Legal Analyses
Holding that a thesis housed, but neither shelved nor catalogued, within a university library was not publicly accessible
Bey v. Kollonitsch
806 F.2d 1024 (Fed. Cir. 1986) Cited 11 times
Requiring “reasonable diligence during the continuous ... critical period”
Application of Borkowski
505 F.2d 713 (C.C.P.A. 1975) Cited 5 times 1 Legal Analyses
Patent Appeal No. 74-564. November 27, 1974. Rehearing Denied January 23, 1975. Barry A. Bisson, Wilmington, Del., attorney of record, for appellants. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Gerald H. Bjorge, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. MARKEY, Chief Judge. This is an appeal from the decision of the Patent Office Board of Appeals affirming the examiner's
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,173 times 493 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."
Section 102 - Conditions for patentability; novelty
35 U.S.C. § 102 Cited 6,034 times 1029 Legal Analyses
Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"
Rule 106 - Remainder of or Related Statements
Fed. R. Evid. 106 Cited 1,130 times 11 Legal Analyses
Providing that a party is entitled to the admission of any part of a recorded statement which ought, in fairness, be considered contemporaneously with the portion of a statement excerpted by an adverse party
Section 315 - Relation to other proceedings or actions
35 U.S.C. § 315 Cited 554 times 901 Legal Analyses
Permitting the Director to consolidate separate IPRs challenging the same patent
Section 134 - Appeal to the Patent Trial and Appeal Board
35 U.S.C. § 134 Cited 99 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
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
Section 1.131 - Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art
37 C.F.R. § 1.131 Cited 118 times 17 Legal Analyses
Allowing inventors to contest rejection by submitting an affidavit "to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based"

Ex Parte 6304975 et al

17 Cited authorities

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"

Holding commercial success is a "secondary consideration" suggesting nonobviousness

Holding that evidence of routine business practice can be used to prove that a reference was accessible

Holding that a prior-art reference anticipated claims 1-4 and 7, but not claims 8, 9, and 13, because the latter set of claims contained one fewer limitation

Holding "that competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible"

Holding laid-open Australian patent was a printed publication where microfilm copy was available to the public at patent office and abstract was published

Holding that a thesis housed, but neither shelved nor catalogued, within a university library was not publicly accessible

Requiring “reasonable diligence during the continuous ... critical period”

Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

Providing that a party is entitled to the admission of any part of a recorded statement which ought, in fairness, be considered contemporaneously with the portion of a statement excerpted by an adverse party

Permitting the Director to consolidate separate IPRs challenging the same patent

Providing that a petitioner can appeal adverse decisions to the Federal Circuit after reexaminations are complete

Allowing inventors to contest rejection by submitting an affidavit "to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based"