Ex Parte Saroka et al

8 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,563 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"
Belden Inc. v. Berk-Tek LLC
805 F.3d 1064 (Fed. Cir. 2015) Cited 114 times 21 Legal Analyses
Holding that a declaration appended to a reply brief "fairly respond[ed] only to arguments made in ... [the patent owner]'s response," as required by § 42.23(b), and that the patent owner had "a meaningful opportunity to respond," as required by the APA
In re GPAC Inc.
57 F.3d 1573 (Fed. Cir. 1995) Cited 168 times 2 Legal Analyses
In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."
Unigene Laboratories, Inc. v. Apotex, Inc.
655 F.3d 1352 (Fed. Cir. 2011) Cited 89 times 2 Legal Analyses
Declining to find a claim obvious when the when prior art does not provide "indication of which parameters were critical" or "direction as to which of many possible choices is likely to be successful"
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"
Cutsforth, Inc. v. Motivepower, Inc.
636 F. App'x 575 (Fed. Cir. 2016) Cited 8 times 4 Legal Analyses
Holding that the Board failed to provide an adequate record where the "majority of [its] Final Written Decision is spent summarizing the parties' arguments and offers only conclusory analysis of its own"
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 187 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 Saroka et al

8 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 declaration appended to a reply brief "fairly respond[ed] only to arguments made in ... [the patent owner]'s response," as required by § 42.23(b), and that the patent owner had "a meaningful opportunity to respond," as required by the APA

In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."

Declining to find a claim obvious when the when prior art does not provide "indication of which parameters were critical" or "direction as to which of many possible choices is likely to be successful"

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"

Holding that the Board failed to provide an adequate record where the "majority of [its] Final Written Decision is spent summarizing the parties' arguments and offers only conclusory analysis of its own"

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"