Ex Parte Obermueller

11 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,559 times 185 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 148 times 11 Legal Analyses
Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight
Boehringer Ingelheim v. Schering-Plough
320 F.3d 1339 (Fed. Cir. 2003) Cited 136 times 2 Legal Analyses
Holding the court "must draw all reasonable inferences in favor of the nonmoving party . . . disregard all evidence favorable to the moving party that the jury was not required to believe"
In re Oetiker
977 F.2d 1443 (Fed. Cir. 1992) Cited 66 times 9 Legal Analyses
Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"
OutDry Techs. Corp. v. Geox S.P.A.
859 F.3d 1364 (Fed. Cir. 2017) Cited 11 times 2 Legal Analyses
Finding the Board’s decision sufficient where it "clearly articulated [party’s] arguments," "engaged in reasoned decisionmaking," and "sufficiently articulated its analysis in its opinion to permit our review"
Section 112 - Specification
35 U.S.C. § 112 Cited 7,394 times 1049 Legal Analyses
Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,148 times 482 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 102 - Conditions for patentability; novelty
35 U.S.C. § 102 Cited 6,016 times 1014 Legal Analyses
Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 186 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 3 - Officers and employees
35 U.S.C. § 3 Cited 50 times 29 Legal Analyses
Providing that “[t]he Director shall ... appoint such officers ... as the Director considers necessary, ... and delegate to them such of the powers vested in the Office as the Director may determine”

Ex Parte Obermueller

11 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

Holding the court "must draw all reasonable inferences in favor of the nonmoving party . . . disregard all evidence favorable to the moving party that the jury was not required to believe"

Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

Finding the Board’s decision sufficient where it "clearly articulated [party’s] arguments," "engaged in reasoned decisionmaking," and "sufficiently articulated its analysis in its opinion to permit our review"

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

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"

Providing that “[t]he Director shall ... appoint such officers ... as the Director considers necessary, ... and delegate to them such of the powers vested in the Office as the Director may determine”