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Ex Parte 7473008 et al

90011865 (P.T.A.B. Mar. 26, 2013)
Ex Parte 7473008 et al

19 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,523 times   180 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 3,157 times   62 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.

    340 U.S. 147 (1950)   Cited 982 times   1 Legal Analyses
    Holding obvious a combination of old elements which perform the same function in combination and individually

  4. Wyers v. Master Lock Co.

    616 F.3d 1231 (Fed. Cir. 2010)   Cited 205 times   7 Legal Analyses
    Holding that a motivation to combine and a reasonable expectation of success exist when "it is simply a matter of common sense" to combine known elements of the prior art to solve a known problem

  5. Ormco Corp. v. Align Technology, Inc.

    463 F.3d 1299 (Fed. Cir. 2006)   Cited 201 times   5 Legal Analyses
    Holding that evidence that success was due to prior art features rebutted the presumption

  6. Tokai Corp v. Easton Enterprises, Inc.

    632 F.3d 1358 (Fed. Cir. 2011)   Cited 147 times   1 Legal Analyses
    Holding that regional circuit law governs the decision to exclude evidence

  7. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 142 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  8. Asyst Technologies, Inc. v. Empak, Inc.

    268 F.3d 1364 (Fed. Cir. 2001)   Cited 129 times   1 Legal Analyses
    Holding that "[t]he corresponding structure to a function set forth in a means-plus-function limitation must actually perform the recited function, not merely enable the pertinent structure to operate as intended. . . ."

  9. Dann v. Johnston

    425 U.S. 219 (1976)   Cited 88 times   1 Legal Analyses
    Finding it obvious to combine the modern computer program described in the patent with "existing machine systems in the banking industry"

  10. In re Baxter Travenol Labs

    952 F.2d 388 (Fed. Cir. 1991)   Cited 94 times   3 Legal Analyses
    Evaluating teaching of prior art at the time of disclosure

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,287 times   1030 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 6,063 times   459 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 303 - Determination of issue by Director

    35 U.S.C. § 303   Cited 122 times   23 Legal Analyses
    Governing ex parte reexamination

  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 1.111 - Reply by applicant or patent owner to a non-final Office action

    37 C.F.R. § 1.111   Cited 86 times   6 Legal Analyses
    Regarding Application No. 15/892, 603

  16. Section 1.510 - Request for ex parte reexamination

    37 C.F.R. § 1.510   Cited 29 times   8 Legal Analyses
    Providing that where ex parte reexamination request does not meet requirements, requester is "generally...given an opportunity to complete the request within a specified time"

  17. Section 1.515 - Determination of the request for ex parte reexamination

    37 C.F.R. § 1.515   Cited 11 times

    (a) Within three months following the filing date of a request for an ex parte reexamination, an examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art cited therein, with or without consideration of other patents or printed publications. A statement and any accompanying information submitted pursuant to § 1.501(a)(2) will not be considered by the examiner when making

  18. Section 1.81 - Drawings required in patent application

    37 C.F.R. § 1.81   Cited 3 times   1 Legal Analyses

    (a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction. (b) Drawings may include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views). (c) Whenever the