Ex Parte Faust et al

13 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,575 times 189 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"
Graham v. John Deere Co.
383 U.S. 1 (1966) Cited 3,190 times 68 Legal Analyses
Holding commercial success is a "secondary consideration" suggesting nonobviousness
Diamond v. Diehr
450 U.S. 175 (1981) Cited 545 times 131 Legal Analyses
Holding a procedure for molding rubber that included a computer program is within patentable subject matter
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
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 Ngai
367 F.3d 1336 (Fed. Cir. 2004) Cited 15 times 1 Legal Analyses
Noting that allowing claims where the printed matter was the only novel contribution would allow "anyone [to] continue patenting a product indefinitely provided that they add a new instruction sheet to the product"
In re Gulack
703 F.2d 1381 (Fed. Cir. 1983) Cited 31 times 1 Legal Analyses
Holding that even though the claim included printed matter, the printed matter was still entitled to patentable weight because there was a functional relationship between the printed matter and its underlying substrate
In re Lowry
32 F.3d 1579 (Fed. Cir. 1994) Cited 17 times
Holding that printed matter doctrine did not apply to sequences of bits stored in memory because the claims dictated how application programs manage information, not the information content of the memory
Section 112 - Specification
35 U.S.C. § 112 Cited 7,419 times 1068 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 6,172 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."
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"
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

Ex Parte Faust et al

13 Cited authorities

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 commercial success is a "secondary consideration" suggesting nonobviousness

Holding a procedure for molding rubber that included a computer program is within patentable subject matter

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

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."

Noting that allowing claims where the printed matter was the only novel contribution would allow "anyone [to] continue patenting a product indefinitely provided that they add a new instruction sheet to the product"

Holding that even though the claim included printed matter, the printed matter was still entitled to patentable weight because there was a functional relationship between the printed matter and its underlying substrate

Holding that printed matter doctrine did not apply to sequences of bits stored in memory because the claims dictated how application programs manage information, not the information content of the memory

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"