13 Cited authorities
KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,545 times 185 Legal AnalysesHolding 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"
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
598 F.3d 1336 (Fed. Cir. 2010) Cited 600 times 77 Legal AnalysesHolding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”
Amgen Inc. v. Hoechst Marion Roussel, Inc.
314 F.3d 1313 (Fed. Cir. 2003) Cited 504 times 14 Legal AnalysesHolding that “non-naturally occurring” and “not isolated” were structural elements defining the source of the claimed material, rather than steps for obtaining it
Vas-Cath Inc. v. Mahurkar
935 F.2d 1555 (Fed. Cir. 1991) Cited 394 times 3 Legal AnalysesHolding construction of § 112, ¶ 1 requires separate written description and enablement requirements
Wang Laboratories, Inc. v. Toshiba Corp.
993 F.2d 858 (Fed. Cir. 1993) Cited 117 times 3 Legal AnalysesFinding § 287 to be a limitation on damages
In re Jung
637 F.3d 1356 (Fed. Cir. 2011) Cited 24 times 4 Legal AnalysesHolding the prima facie case during patent examination “is merely a procedural device that enables an appropriate shift of the burden of production” from the PTO to the patent applicant
In re Keller
642 F.2d 413 (C.C.P.A. 1981) Cited 45 times 1 Legal AnalysesStating "[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"
Section 112 - Specification
35 U.S.C. § 112 Cited 7,346 times 1043 Legal AnalysesRequiring 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 6,121 times 477 Legal AnalysesHolding 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 186 times 63 Legal AnalysesGiving 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 1.136 - Extensions of time
37 C.F.R. § 1.136 Cited 17 times 30 Legal Analyses(a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)