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Ex Parte Stone et al

08327744 (B.P.A.I. Mar. 6, 2007)
Ex Parte Stone et al

11 Cited authorities

  1. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,190 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  2. 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

  3. In re Rouffet

    149 F.3d 1350 (Fed. Cir. 1998)   Cited 160 times   2 Legal Analyses
    Holding that objective evidence of nonobviousness [secondary considerations] "includes copying, long felt but unsolved need, failure of others, commercial success, unexpected results created by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention"

  4. Dann v. Johnston

    425 U.S. 219 (1976)   Cited 88 times   1 Legal Analyses
    Finding it obvious to combine the modern computer program described in the patent with "existing machine systems in the banking industry"

  5. In re Kotzab

    217 F.3d 1365 (Fed. Cir. 2000)   Cited 120 times   1 Legal Analyses
    Holding that for a patent to be obvious, "there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant."

  6. In re Dembiczak

    175 F.3d 994 (Fed. Cir. 1999)   Cited 93 times   2 Legal Analyses
    Refusing to consider an obviousness rejection raised for the first time on appeal from the PTO

  7. Karsten Mfg. Corp. v. Cleveland Golf Co.

    242 F.3d 1376 (Fed. Cir. 2001)   Cited 66 times
    Finding that preamble term limited claim because the term was used in the specification as well as in all of the claims

  8. In re Fine

    837 F.2d 1071 (Fed. Cir. 1988)   Cited 69 times   1 Legal Analyses
    Reversing the Board's determination that dependent claims were invalid because "[d]ependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious."

  9. In re Johnston

    435 F.3d 1381 (Fed. Cir. 2006)   Cited 23 times   1 Legal Analyses
    Finding that many factors are relevant to the motivation to combine aspect of the obviousness inquiry, including the extent to which the references are in the same or related fields of technology

  10. In re Dance

    160 F.3d 1339 (Fed. Cir. 1998)   Cited 19 times

    No. 97-1229. October 30, 1998. Grady J. Frenchick, Stroud, Stroud, Willink Thompson Howard, Madison, Wisconsin, argued for appellants Dance, et al. of counsel on the brief was Karen B. King. David J. Ball, Jr., Associate Solicitor, Office of Solicitor, Arlington, Virginia, argued for appellee, Commissioner of Patents and Trademarks. With him on the brief were Nancy J. Linck, Solicitor, Albin F. Drost, Deputy Solicitor, and Scott A. Chambers, Associate Solicitor. Before MAYER, Chief Judge, NEWMAN

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

    35 U.S.C. § 103   Cited 6,172 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."