Ex Parte Minami et al

24 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,567 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 Kubin
561 F.3d 1351 (Fed. Cir. 2009) Cited 137 times 10 Legal Analyses
Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied
In re Mouttet
686 F.3d 1322 (Fed. Cir. 2012) Cited 90 times 4 Legal Analyses
Finding "the Board's determination that eliminating the optical components of Falk would not destroy its principle of operation to be supported by substantial evidence"
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."
In re Baxter Travenol Labs
952 F.2d 388 (Fed. Cir. 1991) Cited 96 times 3 Legal Analyses
Evaluating teaching of prior art at the time of disclosure
Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC
683 F.3d 1356 (Fed. Cir. 2012) Cited 50 times 7 Legal Analyses
Finding entry of Rule 54(b) judgment proper with respect to Cadbury commercial products but not Cadbury experimental products
In re Dillon
919 F.2d 688 (Fed. Cir. 1990) Cited 69 times 6 Legal Analyses
Finding a prima facie case of obviousness where the prior art tri-orthoester compound was found to be equivalent to the claimed tetra-orthoester compound and the use of the tri-orthoester as a fuel additive was expected to produce essentially the same result as the use of the tetra-orthoester
In re Jung
637 F.3d 1356 (Fed. Cir. 2011) Cited 24 times 4 Legal Analyses
Holding 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
Application of Wertheim
541 F.2d 257 (C.C.P.A. 1976) Cited 81 times 7 Legal Analyses
Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"
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
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
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)

Ex Parte Minami et al

24 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"

Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied

Finding "the Board's determination that eliminating the optical components of Falk would not destroy its principle of operation to be supported by substantial evidence"

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."

Evaluating teaching of prior art at the time of disclosure

Finding entry of Rule 54(b) judgment proper with respect to Cadbury commercial products but not Cadbury experimental products

Finding a prima facie case of obviousness where the prior art tri-orthoester compound was found to be equivalent to the claimed tetra-orthoester compound and the use of the tri-orthoester as a fuel additive was expected to produce essentially the same result as the use of the tetra-orthoester

Holding 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

Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"

Holding that the prior art's disclosure of a multitude of combinations failed to render any particular formulation less obvious

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"