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Ex Parte 7293029 et al

95001392 (P.T.A.B. Sep. 30, 2013)
Ex Parte 7293029 et al

12 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,519 times   169 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 3,154 times   50 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. In re Gleave

    560 F.3d 1331 (Fed. Cir. 2009)   Cited 149 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”

  4. Perricone v. Medicis Pharmaceutical Corp.

    432 F.3d 1368 (Fed. Cir. 2005)   Cited 147 times   2 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

  5. In re Ngai

    367 F.3d 1336 (Fed. Cir. 2004)   Cited 15 times   1 Legal Analyses
    Noting that allowing claims where the printed matter was the only novel contribution would allow "anyone [to] continue patenting a product indefinitely provided that they add a new instruction sheet to the product"

  6. In re Gulack

    703 F.2d 1381 (Fed. Cir. 1983)   Cited 31 times   1 Legal Analyses
    Holding that even though the claim included printed matter, the printed matter was still entitled to patentable weight because there was a functional relationship between the printed matter and its underlying substrate

  7. In re Lowry

    32 F.3d 1579 (Fed. Cir. 1994)   Cited 17 times
    Holding that printed matter doctrine did not apply to sequences of bits stored in memory because the claims dictated how application programs manage information, not the information content of the memory

  8. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,280 times   1025 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

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

    35 U.S.C. § 103   Cited 6,056 times   449 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."

  10. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,938 times   950 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  11. 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

  12. Section 1.956 - Patent owner extensions of time in inter partes reexamination

    37 C.F.R. § 1.956   Cited 1 times

    The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition fee set forth in § 1.17(g) . See § 1.304(a) for extensions of time for filing a