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Ex Parte Holthuizen et al

14114997 (P.T.A.B. Jan. 17, 2019)
Ex Parte Holthuizen et al

7 Cited authorities

  1. Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.

    773 F.3d 1186 (Fed. Cir. 2014)   Cited 140 times   25 Legal Analyses
    Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"

  2. In re Oelrich

    666 F.2d 578 (C.C.P.A. 1981)   Cited 92 times   5 Legal Analyses
    Stating that "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient" to establish inherency (quoting Hansgirg v. Kemmer , 102 F.2d 212, 214 (C.C.P.A. 1939) )

  3. Millennium Pharms., Inc. v. Sandoz Inc.

    862 F.3d 1356 (Fed. Cir. 2017)   Cited 25 times   10 Legal Analyses
    Rejecting argument that an unexpected result was "inevitable" and thus "inherent," because "obviousness is measured objectively in light of the prior art, as viewed by a person of ordinary skill in the field of the invention," and "[n]o expert testified that they foresaw, or expected, or would have intended" the process that created the claimed result, or the result's "long-sought properties and advantages"

  4. Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A. de C.V.

    865 F.3d 1348 (Fed. Cir. 2017)   Cited 18 times   11 Legal Analyses
    Holding the reasonable-expectation-of-success requirement is not satisfied when the skilled artisan would have had no expectation of success

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

    35 U.S.C. § 103   Cited 6,130 times   479 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."

  6. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 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"

  7. 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