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Ex Parte Mayer et al

10644841 (P.T.A.B. Dec. 29, 2016)
Ex Parte Mayer et al

17 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,519 times   169 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"

  2. Teleflex, Inc. v. Ficosa North America Corp.

    299 F.3d 1313 (Fed. Cir. 2002)   Cited 1,444 times   7 Legal Analyses
    Holding a patentee may define a claim term by implication, through the term's consistent use throughout the specification

  3. Williamson v. Citrix Online, LLC

    792 F.3d 1339 (Fed. Cir. 2015)   Cited 614 times   28 Legal Analyses
    Holding that a means-plus-function term is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim"

  4. Merck Co. v. Biocraft Laboratories, Inc.

    493 U.S. 975 (1989)   Cited 98 times
    Noting that Massachusetts has not adopted good faith doctrine of United States v. Leon

  5. Leapfrog v. Fisher-Price

    485 F.3d 1157 (Fed. Cir. 2007)   Cited 90 times   5 Legal Analyses
    Holding that the objective considerations of nonobviousness presented, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid

  6. In re Icon Health

    496 F.3d 1374 (Fed. Cir. 2007)   Cited 46 times   3 Legal Analyses
    Concluding that "[a]nalogous art to Icon's application," which related to "a treadmill with a folding mechanism and a means for retaining that mechanism in the folded position," included "any area describing hinges, springs, latches, counterweights, or other similar mechanisms—such as the folding bed in" the prior art

  7. In re Merck Co., Inc.

    800 F.2d 1091 (Fed. Cir. 1986)   Cited 70 times   1 Legal Analyses
    Holding that a person of skill in the art would have expected amitriptyline to resemble imipramine in the alleviation of depression in humans because of the drugs’ close structural similarity and similar use

  8. Merck Co., Inc. v. Biocraft Laboratories

    874 F.2d 804 (Fed. Cir. 1989)   Cited 47 times   2 Legal Analyses
    Holding that the prior art's disclosure of a multitude of combinations failed to render any particular formulation less obvious

  9. Dunbar v. Myers

    94 U.S. 187 (1876)   Cited 83 times   1 Legal Analyses
    In Dunbar v. Myers, 94 U.S. 187, 199, 24 L.Ed. 34, the Court citing Smith v. Nichols, 21 Wall. 112, 88 U.S. 112, 22 L.Ed. 566, said: "Meritorious inventors are entitled to protection; but it is settled law that a mere carrying forward of an original patented conception, involving only change of form, proportions, or degree, or the substitution of equivalents, doing the same thing as the original invention by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results."

  10. Hotchkiss v. Greenwood

    52 U.S. 248 (1850)   Cited 75 times   4 Legal Analyses
    In Hotchkiss v. Greenwood, 11 How. 248, 52 U.S. 248, 13 L.Ed. 683 (1850), the Supreme Court, in one of its first expressions of this sentiment, said that if "that degree of skill and ingenuity which constitute essential elements of every invention" were absent, the improvement would be only the "work of the skilful mechanic, not that of the inventor."

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

    35 U.S.C. § 103   Cited 6,056 times   449 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."

  12. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 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"

  13. 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

  14. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  15. 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

  16. Section 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 15 times   28 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)

  17. Section 41.41 - Reply brief

    37 C.F.R. § 41.41   Cited 8 times   25 Legal Analyses

    (a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence