Ex Parte Phares

17 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,570 times 188 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"
Wyers v. Master Lock Co.
616 F.3d 1231 (Fed. Cir. 2010) Cited 207 times 7 Legal Analyses
Holding that a motivation to combine and a reasonable expectation of success exist when "it is simply a matter of common sense" to combine known elements of the prior art to solve a known problem
Energizer Holdings v. Int'l Trade Com'n
435 F.3d 1366 (Fed. Cir. 2006) Cited 175 times 1 Legal Analyses
Holding that "an antecedent basis can be present by implication"
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
Winner Intern. Royalty Corp. v. Wang
202 F.3d 1340 (Fed. Cir. 2000) Cited 153 times
Holding that "the admission of live testimony on all matters before the Board in a section 146 action, as in this case, makes a factfinder of the district court and requires a de novo trial"
In re O'Farrell
853 F.2d 894 (Fed. Cir. 1988) Cited 168 times 9 Legal Analyses
Finding patent obvious where the prior art provided a "reasonable expectation of success"
In re Etter
756 F.2d 852 (Fed. Cir. 1985) Cited 121 times 1 Legal Analyses
Noting that whether one prior art reference can be incorporated into another is "basically irrelevant."
Bose Corp. v. JBL, Inc.
274 F.3d 1354 (Fed. Cir. 2002) Cited 69 times 1 Legal Analyses
Holding that prosecution history estoppel did not apply because claim limitation had been amended but not narrowed during prosecution of patent
Slimfold Mfg. Co., Inc. v. Kinkead Indus
810 F.2d 1113 (Fed. Cir. 1987) Cited 95 times
Finding amendment during reissue proceeding to provide an antecedent basis for phrase did not alter substantive scope of claims
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
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,166 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."
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 Phares

17 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 a motivation to combine and a reasonable expectation of success exist when "it is simply a matter of common sense" to combine known elements of the prior art to solve a known problem

Holding that "an antecedent basis can be present by implication"

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

Holding that "the admission of live testimony on all matters before the Board in a section 146 action, as in this case, makes a factfinder of the district court and requires a de novo trial"

Finding patent obvious where the prior art provided a "reasonable expectation of success"

Noting that whether one prior art reference can be incorporated into another is "basically irrelevant."

Holding that prosecution history estoppel did not apply because claim limitation had been amended but not narrowed during prosecution of patent

Finding amendment during reissue proceeding to provide an antecedent basis for phrase did not alter substantive scope of claims

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"