Ex Parte Colby et al

23 Cited authorities

Shinseki v. Sanders
556 U.S. 396 (2009) Cited 4,521 times
Holding that a "notice error" was harmless because the respondent "ha[d] not explained to the Veterans Court, to the Federal Circuit, or to us how the notice error to which he points could have made any difference"
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"
Vas-Cath Inc. v. Mahurkar
935 F.2d 1555 (Fed. Cir. 1991) Cited 392 times 3 Legal Analyses
Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements
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
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.
464 F.3d 1356 (Fed. Cir. 2006) Cited 134 times 4 Legal Analyses
Holding based on the record that "[t]he presence of certain secondary considerations of nonobviousness are insufficient as a matter of law to overcome our conclusion that the evidence only supports a legal conclusion that claim 1 would have been obvious"
Newell Companies, Inc. v. Kenney Mfg. Co.
864 F.2d 757 (Fed. Cir. 1988) Cited 221 times 3 Legal Analyses
Holding that because the record established such a strong case of obviousness based on the teachings of the prior art, the fact that the product was successful does not overcome the conclusion of obviousness
In re GPAC Inc.
57 F.3d 1573 (Fed. Cir. 1995) Cited 165 times 2 Legal Analyses
In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."
Carnegie Mellon v. Hoffmann-La
541 F.3d 1115 (Fed. Cir. 2008) Cited 88 times 4 Legal Analyses
Holding that the narrow description of the E. coli polA gene did not adequately support a broad claim to the gene from any bacterial source
In re Packard
751 F.3d 1307 (Fed. Cir. 2014) Cited 35 times 11 Legal Analyses
Addressing the issues separately
In re Oetiker
977 F.2d 1443 (Fed. Cir. 1992) Cited 66 times 9 Legal Analyses
Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"
Section 112 - Specification
35 U.S.C. § 112 Cited 7,289 times 1031 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
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,065 times 462 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 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 183 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"
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

Ex Parte Colby et al

23 Cited authorities

Holding that a "notice error" was harmless because the respondent "ha[d] not explained to the Veterans Court, to the Federal Circuit, or to us how the notice error to which he points could have made any difference"

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 construction of § 112, ¶ 1 requires separate written description and enablement requirements

Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

Holding based on the record that "[t]he presence of certain secondary considerations of nonobviousness are insufficient as a matter of law to overcome our conclusion that the evidence only supports a legal conclusion that claim 1 would have been obvious"

Holding that because the record established such a strong case of obviousness based on the teachings of the prior art, the fact that the product was successful does not overcome the conclusion of obviousness

In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."

Holding that the narrow description of the E. coli polA gene did not adequately support a broad claim to the gene from any bacterial source

Addressing the issues separately

Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

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

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"