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Ex Parte de Beer et al

12593747 (P.T.A.B. Dec. 12, 2016)
Ex Parte de Beer et al

11 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. Depuy Spine, Inc. v. Medtronic Sofamor Danek

    567 F.3d 1314 (Fed. Cir. 2009)   Cited 259 times   7 Legal Analyses
    Holding that the first prong was not met when “the record developed in the infringement proceeding ..., show[ed] that the question of equivalence was a close one,” particularly in light of the intensely factual inquiry involved in the doctrine of equivalents analysis

  3. 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

  4. In re Fulton

    391 F.3d 1195 (Fed. Cir. 2004)   Cited 76 times   7 Legal Analyses
    Holding that "a particular combination" need not "be the preferred, or the most desirable, combination described in the prior art in order to provide motivation"

  5. Merck Co., Inc. v. Biocraft Laboratories

    874 F.2d 804 (Fed. Cir. 1989)   Cited 47 times   2 Legal Analyses
    Holding that the prior art's disclosure of a multitude of combinations failed to render any particular formulation less obvious

  6. In re Keller

    642 F.2d 413 (C.C.P.A. 1981)   Cited 43 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"

  7. Application of Arkley

    455 F.2d 586 (C.C.P.A. 1972)   Cited 44 times   1 Legal Analyses
    Noting that an anticipating reference "must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference"

  8. 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."

  9. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 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"

  10. 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

  11. Section 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 15 times   28 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)