Ex Parte Dong

8 Cited authorities

McGinley v. Franklin Sports, Inc.
262 F.3d 1339 (Fed. Cir. 2001) Cited 116 times
Affirming identification of corresponding structure as including "egg-shaped indicia having `a slight taper at the portion of each indicia situated closest to the palm of the hand, and any equivalents of such structure'"
In re Sang-Su Lee
277 F.3d 1338 (Fed. Cir. 2002) Cited 106 times 11 Legal Analyses
Holding that agency tribunals "must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action"
In re Dembiczak
175 F.3d 994 (Fed. Cir. 1999) Cited 93 times 2 Legal Analyses
Refusing to consider an obviousness rejection raised for the first time on appeal from the PTO
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"
In re Fine
837 F.2d 1071 (Fed. Cir. 1988) Cited 69 times 1 Legal Analyses
Reversing the Board's determination that dependent claims were invalid because "[d]ependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious."
In re Piasecki
745 F.2d 1468 (Fed. Cir. 1984) Cited 73 times 2 Legal Analyses
Finding nonobviousness where the evidence demonstrated a failure of others to provide a feasible solution to a longstanding problem
McElmurry v. Arkansas Power Light Co.
995 F.2d 1576 (Fed. Cir. 1993) Cited 29 times
In McElmurry, Arkansas Power & Light ("AP&L") used the invention in question only in its own facilities, even though a third-party contractor, upon receipt of the design and specifications for the invention from AP&L, had manufactured and installed the invention.
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,174 times 493 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."

Ex Parte Dong

8 Cited authorities

Affirming identification of corresponding structure as including "egg-shaped indicia having `a slight taper at the portion of each indicia situated closest to the palm of the hand, and any equivalents of such structure'"

Holding that agency tribunals "must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action"

Refusing to consider an obviousness rejection raised for the first time on appeal from the PTO

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"

Reversing the Board's determination that dependent claims were invalid because "[d]ependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious."

Finding nonobviousness where the evidence demonstrated a failure of others to provide a feasible solution to a longstanding problem

In McElmurry, Arkansas Power & Light ("AP&L") used the invention in question only in its own facilities, even though a third-party contractor, upon receipt of the design and specifications for the invention from AP&L, had manufactured and installed the invention.