Ex Parte Saylor et al

16 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,557 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"
Vitronics Corporation v. Conceptronic, Inc.
90 F.3d 1576 (Fed. Cir. 1996) Cited 4,386 times 10 Legal Analyses
Holding that a claim construction that excludes the preferred embodiment is "rarely, if ever, correct and would require highly persuasive evidentiary support"
Perfect Web Technologies, Inc. v. InfoUSA, Inc.
587 F.3d 1324 (Fed. Cir. 2009) Cited 116 times 12 Legal Analyses
Holding that “an analysis of obviousness ... may include recourse to logic, judgment, and common sense available to the person of ordinary skill [which] do[es] not necessarily require explication in any reference or expert opinion”
Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd.
357 F.3d 1319 (Fed. Cir. 2004) Cited 128 times 1 Legal Analyses
Holding that evidence need not reach the level of prior art to be considered for motivation to combine
In re Am. Academy of Science Tech Ctr.
367 F.3d 1359 (Fed. Cir. 2004) Cited 88 times 1 Legal Analyses
Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter
In re Morris
127 F.3d 1048 (Fed. Cir. 1997) Cited 49 times 7 Legal Analyses
Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness
In re Merck Co., Inc.
800 F.2d 1091 (Fed. Cir. 1986) Cited 70 times 2 Legal Analyses
Holding that a person of skill in the art would have expected amitriptyline to resemble imipramine in the alleviation of depression in humans because of the drugs’ close structural similarity and similar use
In re Chu
66 F.3d 292 (Fed. Cir. 1995) Cited 31 times 2 Legal Analyses
Holding that a reference was properly considered prior art because the earlier filed application did not support the patent's claims, thereby precluding reliance on its earlier priority date
In re Keller
642 F.2d 413 (C.C.P.A. 1981) Cited 47 times 1 Legal Analyses
Stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"
In re Jones
958 F.2d 347 (Fed. Cir. 1992) Cited 28 times
Reversing the prima facie obviousness finding because of the "lack of close similarity of structure"
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,144 times 481 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 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

Ex Parte Saylor et al

16 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 claim construction that excludes the preferred embodiment is "rarely, if ever, correct and would require highly persuasive evidentiary support"

Holding that “an analysis of obviousness ... may include recourse to logic, judgment, and common sense available to the person of ordinary skill [which] do[es] not necessarily require explication in any reference or expert opinion”

Holding that evidence need not reach the level of prior art to be considered for motivation to combine

Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness

Holding that a person of skill in the art would have expected amitriptyline to resemble imipramine in the alleviation of depression in humans because of the drugs’ close structural similarity and similar use

Holding that a reference was properly considered prior art because the earlier filed application did not support the patent's claims, thereby precluding reliance on its earlier priority date

Stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"

Reversing the prima facie obviousness finding because of the "lack of close similarity of structure"

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"