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Ex Parte Smith et al

14205654 - (D) (P.T.A.B. Mar. 25, 2019)
Ex Parte Smith et al

10 Cited authorities

  1. 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"

  2. 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

  3. In re Dillon

    919 F.2d 688 (Fed. Cir. 1990)   Cited 69 times   6 Legal Analyses
    Finding a prima facie case of obviousness where the prior art tri-orthoester compound was found to be equivalent to the claimed tetra-orthoester compound and the use of the tri-orthoester as a fuel additive was expected to produce essentially the same result as the use of the tetra-orthoester

  4. In re Jung

    637 F.3d 1356 (Fed. Cir. 2011)   Cited 24 times   4 Legal Analyses
    Holding the prima facie case during patent examination “is merely a procedural device that enables an appropriate shift of the burden of production” from the PTO to the patent applicant

  5. Application of May

    574 F.2d 1082 (C.C.P.A. 1978)   Cited 45 times   1 Legal Analyses
    Holding isolated stereoisomer nonobvious over racemic mixture of stereoisomers, after conceded prima facie showing of obviousness, because isolated stereoisomer was unexpectedly nonaddictive

  6. In re Kemps

    97 F.3d 1427 (Fed. Cir. 1996)   Cited 13 times
    Upholding board's fact finding under less deferential standard of review obviated need for deciding propriety of using the APA standards

  7. Application of Tomlinson

    363 F.2d 928 (C.C.P.A. 1966)   Cited 20 times   1 Legal Analyses

    Patent Appeal No. 7500. August 4, 1966. Charles E. Feeny, Philadelphia, Pa., Dos T. Hatfield, Washington, D.C., for appellants. Clarence W. Moore, Washington, D.C. (J.F. Nakamura, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of product claims 1 through 17 and process claims 18 through 20 in

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

    35 U.S.C. § 103   Cited 6,167 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."

  9. 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"

  10. 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