11 Cited authorities
Phillips v. AWH Corp.
415 F.3d 1303 (Fed. Cir. 2005) Cited 5,879 times 167 Legal AnalysesHolding that "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence"
Cross Med Prod v. Medtronic Sofamor Danek
424 F.3d 1293 (Fed. Cir. 2005) Cited 358 times 4 Legal AnalysesHolding that there can be no direct infringement of a product claim where surgeons, and not the defendant, made the claimed apparatus in the operating room, and remanding to determine whether the surgeons directly infringed such that Medtronic could be held liable for indirect infringement
In re Fulton
391 F.3d 1195 (Fed. Cir. 2004) Cited 84 times 8 Legal AnalysesHolding that "a particular combination" need not "be the preferred, or the most desirable, combination described in the prior art in order to provide motivation"
In re Gurley
27 F.3d 551 (Fed. Cir. 1994) Cited 102 times 3 Legal AnalysesUpholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."
In re Giannelli
739 F.3d 1375 (Fed. Cir. 2014) Cited 26 times 2 Legal AnalysesReversing affirmance of examiner's obviousness determination where the Board's analysis "contained no explanation why or how [a skilled artisan] would modify" the prior art to arrive at the claimed invention
In re Pearson
494 F.2d 1399 (C.C.P.A. 1974) Cited 29 timesAffirming § 103 rejection when § 102 rejection would also have been appropriate
APPLICATION OF SUSI
440 F.2d 442 (C.C.P.A. 1971) Cited 7 timesPatent Appeal No. 8392. April 22, 1971. Rehearing Denied June 10, 1971. William Kaufman, Harry H. Kline, Roland A. Dexter, Stamford, Conn., attorneys of record, for appellant. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. R.E. Martin, Washington, D.C., of counsel. Before RICH, ALMOND, BALDWIN and LANE, Judges, and NEWMAN Judge, United States Customs Court, sitting by designation. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,159 times 489 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 188 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 41.37 - Appeal brief
37 C.F.R. § 41.37 Cited 32 times 25 Legal AnalysesRequiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well