Ex Parte Sposato et al

15 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,575 times 189 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"
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
598 F.3d 1336 (Fed. Cir. 2010) Cited 619 times 79 Legal Analyses
Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”
In re Kahn
441 F.3d 977 (Fed. Cir. 2006) Cited 149 times 11 Legal Analyses
Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight
In re Gurley
27 F.3d 551 (Fed. Cir. 1994) Cited 102 times 3 Legal Analyses
Upholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."
In re Montgomery
677 F.3d 1375 (Fed. Cir. 2012) Cited 39 times 6 Legal Analyses
Holding that "[c]laim construction is a question of law"
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
In re Spada
911 F.2d 705 (Fed. Cir. 1990) Cited 58 times 1 Legal Analyses
Holding that the claims were properly rejected by the PTO because they were anticipated by a prior art reference
Application of Wertheim
541 F.2d 257 (C.C.P.A. 1976) Cited 81 times 7 Legal Analyses
Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"
Application of Sponnoble
405 F.2d 578 (C.C.P.A. 1969) Cited 36 times 1 Legal Analyses
Patent Appeal No. 8007. January 16, 1969. Raywood H. Blanchard, Kalamazoo, Mich., (Eugene O. Retter, George T. Johannesen, Kalamazoo, Mich., of counsel) for appellant. Joseph Schimmel, Washington, D.C., (Fred W. Sherling, Washington, D.C., of counsel) for the Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and BALDWIN, Judges. BALDWIN, Judge. This is an appeal from the decision of the Board of Appeals, affirming the examiner's rejection of the sole remaining claim in
Application of Herschler
591 F.2d 693 (C.C.P.A. 1979) Cited 18 times
Finding disclosure of a single steroid sufficient to describe the subgenus of steroids when the great-grandparent application disclosed a broader array of example materials of the larger genus and steroids were chemically similar
Section 112 - Specification
35 U.S.C. § 112 Cited 7,420 times 1069 Legal Analyses
Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it
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 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

Ex Parte Sposato et al

15 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 our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

Upholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."

Holding that "[c]laim construction is a question of law"

Holding that the claims were properly rejected by the PTO because they were anticipated by a prior art reference

Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"

Finding disclosure of a single steroid sufficient to describe the subgenus of steroids when the great-grandparent application disclosed a broader array of example materials of the larger genus and steroids were chemically similar

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

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"