Ex Parte Garcia-Rodenas et al

13 Cited authorities

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."
In re Applied Materials, Inc.
692 F.3d 1289 (Fed. Cir. 2012) Cited 61 times 3 Legal Analyses
Concluding that the board correctly rejected claims as obvious where "there was no indication that obtaining the claimed dimensions was beyond the capabilities of one of ordinary skill in the art or produced any unexpectedly beneficial properties"
In re Baxter Travenol Labs
952 F.2d 388 (Fed. Cir. 1991) Cited 94 times 3 Legal Analyses
Evaluating teaching of prior art at the time of disclosure
In re Peterson
315 F.3d 1325 (Fed. Cir. 2003) Cited 66 times 14 Legal Analyses
Holding that any overlap between a claimed range and one in the prior art is sufficient for a prima facie case of obviousness, even if insufficient to render it unpatentable
In re Clay
966 F.2d 656 (Fed. Cir. 1992) Cited 87 times 10 Legal Analyses
Concluding that a reference was not reasonably pertinent where a PHOSITA "would not reasonably have expected to solve the [relevant] problem ... by considering" that reference
In re Geisler
116 F.3d 1465 (Fed. Cir. 1997) Cited 52 times 4 Legal Analyses
Finding a 26 percent improvement in wear resistance insufficient to constitute proof of "substantially improved results"
In re Geiger
815 F.2d 686 (Fed. Cir. 1987) Cited 40 times
Holding that since a prima facie case of obviousness was not established, it was unnecessary to show unexpected results
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"
Application of Gershon
372 F.2d 535 (C.C.P.A. 1967) Cited 10 times 2 Legal Analyses
Patent Appeal No. 7722. February 16, 1967. Eben M. Graves, Allen G. Weise, New York City, for appellants. Joseph Schimmel, Washington, D.C. (Jack E. Armore, Washington, D.C., of counsel), for Commissioner of Patents. Before WORLEY, Chief Judge, RICH, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK. Senior District Judge, Eastern District of Pennsylvania, sitting by designation. ALMOND, Judge. This is an appeal from the decision of the Patent Office Board of Appeals affirming final rejection
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,066 times 464 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
Section 41.37 - Appeal brief
37 C.F.R. § 41.37 Cited 32 times 25 Legal Analyses
Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

Ex Parte Garcia-Rodenas et al

13 Cited authorities

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."

Concluding that the board correctly rejected claims as obvious where "there was no indication that obtaining the claimed dimensions was beyond the capabilities of one of ordinary skill in the art or produced any unexpectedly beneficial properties"

Evaluating teaching of prior art at the time of disclosure

Holding that any overlap between a claimed range and one in the prior art is sufficient for a prima facie case of obviousness, even if insufficient to render it unpatentable

Concluding that a reference was not reasonably pertinent where a PHOSITA "would not reasonably have expected to solve the [relevant] problem ... by considering" that reference

Finding a 26 percent improvement in wear resistance insufficient to constitute proof of "substantially improved results"

Holding that since a prima facie case of obviousness was not established, it was unnecessary to show unexpected results

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"

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"

Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well