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Ex Parte Midkiff et al

12493276 (P.T.A.B. Mar. 21, 2016)
Ex Parte Midkiff et al

24 Cited authorities

  1. Medichem, S.A. v. Rolabo, S.L

    437 F.3d 1157 (Fed. Cir. 2006)   Cited 178 times   9 Legal Analyses
    Holding that non-inventor's notebook did not corroborate reduction to practice because the non-inventor "did not testify regarding the notebook or the genuineness of its contents" and the district court was therefore "clearly reliant on the inventor to help identify the author of specific entries made in [the non-inventor's] notebook"

  2. W.L. Gore Associates, Inc. v. Garlock

    721 F.2d 1540 (Fed. Cir. 1983)   Cited 327 times   7 Legal Analyses
    Holding the district court erred by "considering the references in less than their entireties, i.e., in disregarding disclosures in the references that diverge from and teach away from the invention at hand"

  3. 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

  4. Tec Air, Inc. v. Denso Manufacturing Michigan Inc.

    192 F.3d 1353 (Fed. Cir. 1999)   Cited 113 times
    Holding that regardless of whether defendant had shown a motivation to combine the prior art, the showing could be rebutted by evidence of commercial success

  5. In re Fulton

    391 F.3d 1195 (Fed. Cir. 2004)   Cited 85 times   8 Legal Analyses
    Holding that "a particular combination" need not "be the preferred, or the most desirable, combination described in the prior art in order to provide motivation"

  6. In re Gurley

    27 F.3d 551 (Fed. Cir. 1994)   Cited 102 times   3 Legal Analyses
    Upholding 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."

  7. 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"

  8. In re Mayne

    104 F.3d 1339 (Fed. Cir. 1997)   Cited 38 times
    Finding a claimed enterokinase recognition sequence containing the amino acid sequence Phe–Pro–Leu was merely “an obvious functional equivalent” to prior art sequences that included arrangements of Phe–Pro–Ile and Leu–Pro–Leu

  9. In re De Blauwe

    736 F.2d 699 (Fed. Cir. 1984)   Cited 49 times   1 Legal Analyses

    Appeal No. 84-513. June 8, 1984. Jeffrey G. Sheldon, Pasadena, Cal., argued for appellants. John F. Pitrelli, Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and John W. Dewhirst, Associate Sol., Washington, D.C. Appeal from the United States Patent and Trademark Office Board of Appeals. Before BENNETT, Circuit Judge, SKELTON, Senior Circuit Judge, and MILLER, Circuit Judge. JACK R. MILLER, Circuit Judge. This appeal is from that part of the decision of the

  10. 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))

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

    35 U.S.C. § 103   Cited 6,172 times   492 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 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"

  13. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 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 1.136 - [Effective until 1/19/2025] 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)