ExxonMobil Chemical Patents Inc.

17 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,545 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"
Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.
773 F.3d 1186 (Fed. Cir. 2014) Cited 139 times 25 Legal Analyses
Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"
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 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
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
Optivus Technology, Inc. v. Ion Beam Applications S.A.
469 F.3d 978 (Fed. Cir. 2006) Cited 31 times
Affirming the district court's holding of invalidity despite the court's statement that “[t]here is no indication that the [motivation to combine] was non-obvious,” because the district court's opinion as a whole indicated it “correctly allocated the burden of proof”
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
In re Hodges
882 F.3d 1107 (Fed. Cir. 2018) Cited 9 times 1 Legal Analyses
Determining that claims were not anticipated and then considering whether claims would have been obvious
In re Fritch
972 F.2d 1260 (Fed. Cir. 1992) Cited 30 times
Stating "dependent claims are nonobvious if the independent claims from which they depend are nonobvious"
In re Pearson
494 F.2d 1399 (C.C.P.A. 1974) Cited 28 times
Affirming § 103 rejection when § 102 rejection would also have been appropriate
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,124 times 478 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
Section 1.136 - 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)
Section 41.41 - Reply brief
37 C.F.R. § 41.41 Cited 8 times 25 Legal Analyses
(a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence
Section 1.42 - Applicant for patent
37 C.F.R. § 1.42 1 Legal Analyses
(a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and

ExxonMobil Chemical Patents Inc.

17 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"

Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"

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

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

Affirming the district court's holding of invalidity despite the court's statement that “[t]here is no indication that the [motivation to combine] was non-obvious,” because the district court's opinion as a whole indicated it “correctly allocated the burden of proof”

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

Determining that claims were not anticipated and then considering whether claims would have been obvious

Stating "dependent claims are nonobvious if the independent claims from which they depend are nonobvious"

Affirming § 103 rejection when § 102 rejection would also have been appropriate

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"