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Ex Parte Eward et al

09411792 (B.P.A.I. Feb. 22, 2010)
Ex Parte Eward et al

11 Cited authorities

  1. Continental Can Co. USA, v. Monsanto Co.

    948 F.2d 1264 (Fed. Cir. 1991)   Cited 334 times   3 Legal Analyses
    Holding that an inherent limitation must be “necessarily present” and cannot be established by “probabilities or possibilities”

  2. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 149 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  3. Perricone v. Medicis Pharmaceutical Corp.

    432 F.3d 1368 (Fed. Cir. 2005)   Cited 147 times   3 Legal Analyses
    Holding that a prior-art reference anticipated claims 1-4 and 7, but not claims 8, 9, and 13, because the latter set of claims contained one fewer limitation

  4. In re Rouffet

    149 F.3d 1350 (Fed. Cir. 1998)   Cited 160 times   2 Legal Analyses
    Holding that objective evidence of nonobviousness [secondary considerations] "includes copying, long felt but unsolved need, failure of others, commercial success, unexpected results created by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention"

  5. Lindemann Maschinenfabrik v. Am. Hoist

    730 F.2d 1452 (Fed. Cir. 1984)   Cited 200 times   4 Legal Analyses
    Holding that claims are not to be treated as "mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning"

  6. Kloster Speedsteel AB v. Crucible, Inc.

    793 F.2d 1565 (Fed. Cir. 1986)   Cited 164 times   4 Legal Analyses
    Finding that although it is an important consideration, "not every failure to seek an opinion of competent counsel will mandate an ultimate finding of willfulness"

  7. In re King

    801 F.2d 1324 (Fed. Cir. 1986)   Cited 46 times   1 Legal Analyses
    Finding that principles of inherency do not prohibit a process patent for a new use of an old structure

  8. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,172 times   492 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,031 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  10. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 188 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"

  11. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 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