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Ex Parte Shi et al

11126962 (B.P.A.I. Jan. 31, 2012)
Ex Parte Shi et al

25 Cited authorities

  1. Exxon Chemical Patents v. Lubrizol Corp.

    64 F.3d 1553 (Fed. Cir. 1995)   Cited 272 times   3 Legal Analyses
    Holding that the claimed composition exists at the moment that each of the claimed ingredients are present in the amounts specifically claimed

  2. In re Peterson

    315 F.3d 1325 (Fed. Cir. 2003)   Cited 69 times   14 Legal Analyses
    Holding that any overlap between a claimed range and one in the prior art is sufficient for a prima facie case of obviousness, even if insufficient to render it unpatentable

  3. 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

  4. 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

  5. Merck Co., Inc. v. Biocraft Laboratories

    874 F.2d 804 (Fed. Cir. 1989)   Cited 48 times   2 Legal Analyses
    Holding that the prior art's disclosure of a multitude of combinations failed to render any particular formulation less obvious

  6. In re De Blauwe

    736 F.2d 699 (Fed. Cir. 1984)   Cited 49 times   1 Legal Analyses

    Appeal No. 84-513. June 8, 1984. Jeffrey G. Sheldon, Pasadena, Cal., argued for appellants. John F. Pitrelli, Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and John W. Dewhirst, Associate Sol., Washington, D.C. Appeal from the United States Patent and Trademark Office Board of Appeals. Before BENNETT, Circuit Judge, SKELTON, Senior Circuit Judge, and MILLER, Circuit Judge. JACK R. MILLER, Circuit Judge. This appeal is from that part of the decision of the

  7. In re Crish

    393 F.3d 1253 (Fed. Cir. 2004)   Cited 19 times   1 Legal Analyses

    No. 04-1075. December 21, 2004. Appeal from the Board of Patent Appeals and Interferences. Peter G. Carroll, Medlen Carroll, LLP, of San Francisco, California, argued for appellants. With him on the brief was Thomas W. Brown. Mary L. Kelly, Associate Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United States Patent and Trademark Office. With her on the brief were John M. Whealan, Solicitor, and William G. Jenks, Associate Solicitor.

  8. 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"

  9. Application of Payne

    606 F.2d 303 (C.C.P.A. 1979)   Cited 28 times   2 Legal Analyses
    Discussing the presumption of obviousness based on close structural similarity

  10. Application of Boesch

    617 F.2d 272 (C.C.P.A. 1980)   Cited 17 times

    Appeal No. 79-597. March 13, 1980. Rehearing Denied July 3, 1980. Robert F. Dropkin and Vincent G. Gioia, Pittsburgh, Pa., attorneys of record for appellants. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents and Trademarks, John W. Dewhirst, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and MALETZ, Judges. The Honorable Herbert N. Maletz of the United States Customs Court, sitting

  11. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,174 times   493 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."

  12. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 189 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"

  13. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 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

  14. Section 1.132 - Affidavits or declarations traversing rejections or objections

    37 C.F.R. § 1.132   Cited 104 times   14 Legal Analyses

    When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. 37 C.F.R. §1.132 65 FR 57057 , Sept. 20, 2000 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the

  15. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  16. 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)

  17. Section 41.31 - Appeal to Board

    37 C.F.R. § 41.31   Cited 6 times   24 Legal Analyses

    (a)Who may appeal and how to file an appeal. An appeal is taken to the Board by filing a notice of appeal. (1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply. (2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November 29, 1999, any