Ex Parte Mann et al

16 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,568 times 187 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"
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 Applied Materials, Inc.
692 F.3d 1289 (Fed. Cir. 2012) Cited 66 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 Peterson
315 F.3d 1325 (Fed. Cir. 2003) Cited 69 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 Longi
759 F.2d 887 (Fed. Cir. 1985) Cited 107 times 8 Legal Analyses
Holding that a patent application was properly rejected for obviousness-type double patenting where the prior art references indicated a reasonable expectation of success
General Foods v. Studiengesellschaft Kohle
972 F.2d 1272 (Fed. Cir. 1992) Cited 72 times 2 Legal Analyses
Holding that one claim is "patentably distinct" from another if the differences between them are such that the subject matter of one would not have been obvious over the subject matter of the other
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 Woodruff
919 F.2d 1575 (Fed. Cir. 1990) Cited 58 times 3 Legal Analyses
Holding a claimed invention obvious because claimed range (“more than 5% to about 25%” carbon monoxide) abutted range of prior art (“about 1–5%” carbon monoxide)
In re Harris
409 F.3d 1339 (Fed. Cir. 2005) Cited 14 times
Holding that unexpected results require a difference in kind, not merely degree (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996))
Studiengesellschaft Kohle v. North Petrochem
784 F.2d 351 (Fed. Cir. 1986) Cited 25 times
In Studiengesellschaft, moreover, there was no question that the patentee's claims were consonant with those not elected in responding to the restriction requirement.
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,159 times 489 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 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

Ex Parte Mann et al

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

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"

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

Holding that a patent application was properly rejected for obviousness-type double patenting where the prior art references indicated a reasonable expectation of success

Holding that one claim is "patentably distinct" from another if the differences between them are such that the subject matter of one would not have been obvious over the subject matter of the other

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

Holding a claimed invention obvious because claimed range (“more than 5% to about 25%” carbon monoxide) abutted range of prior art (“about 1–5%” carbon monoxide)

Holding that unexpected results require a difference in kind, not merely degree (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996))

In Studiengesellschaft, moreover, there was no question that the patentee's claims were consonant with those not elected in responding to the restriction requirement.

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"