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Ex Parte Benchenaa et al

13729379 (P.T.A.B. Jan. 9, 2019)
Ex Parte Benchenaa et al

13 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. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 604 times   78 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  3. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 395 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  4. 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"

  5. In re Packard

    751 F.3d 1307 (Fed. Cir. 2014)   Cited 36 times   11 Legal Analyses
    Addressing the issues separately

  6. In re Merck Co., Inc.

    800 F.2d 1091 (Fed. Cir. 1986)   Cited 70 times   2 Legal Analyses
    Holding that a person of skill in the art would have expected amitriptyline to resemble imipramine in the alleviation of depression in humans because of the drugs’ close structural similarity and similar use

  7. In re Keller

    642 F.2d 413 (C.C.P.A. 1981)   Cited 46 times   1 Legal Analyses
    Stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"

  8. Application of Miller

    441 F.2d 689 (C.C.P.A. 1971)   Cited 11 times

    Patent Appeal No. 8444. May 13, 1971. Jay P. Friedenson, Morristown, N.J., attorney of record, for appellant. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Joseph F. Nakamura, Washington, D.C., of counsel. Before RICH, ALMOND, BALDWIN and LANE, Judges, and FORD, Judge, United States Customs Court, sitting by designation. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 1, 2, and 4-18 in appellant's

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,362 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

  10. 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."

  11. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 times   63 Legal Analyses
    Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

  12. 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

  13. Section 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)