Ex Parte 7691057 et al

21 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,538 times 183 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"
Graham v. John Deere Co.
383 U.S. 1 (1966) Cited 3,168 times 66 Legal Analyses
Holding commercial success is a "secondary consideration" suggesting nonobviousness
Eurand, Inc. v. Mylan Pharms. Inc. (In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.)
676 F.3d 1063 (Fed. Cir. 2012) Cited 307 times 13 Legal Analyses
Holding that “the proper inquiry [in a best mode analysis] focuses on the adequacy of the disclosure rather than motivation for any nondisclosure”
Crocs v. Int'l Trade Com'n
598 F.3d 1294 (Fed. Cir. 2010) Cited 214 times 11 Legal Analyses
Finding that International Trade Commission's "concentration on small differences in isolation distracted from the overall impression of the claimed ornamental features" and explaining that the "ordinary observer test applies to the patented design in its entirety"
Wyers v. Master Lock Co.
616 F.3d 1231 (Fed. Cir. 2010) Cited 205 times 7 Legal Analyses
Holding that a motivation to combine and a reasonable expectation of success exist when "it is simply a matter of common sense" to combine known elements of the prior art to solve a known problem
Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
688 F.3d 1342 (Fed. Cir. 2012) Cited 156 times 4 Legal Analyses
Finding no motivation to combine where "doctors were not using the disclosed devices and methods to heal wounds with negative pressure because they did not believe that these devices were capable of such healing"
Texas Instruments v. U.S. Intl. Trade Com'n
988 F.2d 1165 (Fed. Cir. 1993) Cited 270 times 1 Legal Analyses
Holding that " 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim."
DeSilva v. DiLeonardi
181 F.3d 865 (7th Cir. 1999) Cited 190 times 3 Legal Analyses
Refusing to consider arguments that were adopted by reference but not actually made in appellate briefs because "adoption by reference amounts to a self-help increase in the length of the appellate brief"
InTouch Technologies, Inc. v. VGo Communications, Inc.
751 F.3d 1327 (Fed. Cir. 2014) Cited 104 times 3 Legal Analyses
Holding that expert's testimony could not support a finding of obviousness where "testimony primarily consisted of conclusory references to [the expert's] belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so"
Perfect Web Technologies, Inc. v. InfoUSA, Inc.
587 F.3d 1324 (Fed. Cir. 2009) Cited 115 times 12 Legal Analyses
Holding that “an analysis of obviousness ... may include recourse to logic, judgment, and common sense available to the person of ordinary skill [which] do[es] not necessarily require explication in any reference or expert opinion”
Section 41.77 - Decisions and other actions by the Board
37 C.F.R. § 41.77 Cited 16 times 3 Legal Analyses
(a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent
Section 42.6 - Filing of documents, including exhibits; service
37 C.F.R. § 42.6 Cited 9 times 43 Legal Analyses
(a)General format requirements. (1) Page size must be 81/2 inch * 11 inch except in the case of exhibits that require a larger size in order to preserve details of the original. (2) In documents, including affidavits, created for the proceeding: (i) Markings must be in black or must otherwise provide an equivalent dark, high-contrast image; (ii) 14-point, Times New Roman proportional font, with normal spacing, must be used; (iii) Double spacing must be used except in claim charts, headings, tables

Ex Parte 7691057 et al

21 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 commercial success is a "secondary consideration" suggesting nonobviousness

Holding that “the proper inquiry [in a best mode analysis] focuses on the adequacy of the disclosure rather than motivation for any nondisclosure”

Finding that International Trade Commission's "concentration on small differences in isolation distracted from the overall impression of the claimed ornamental features" and explaining that the "ordinary observer test applies to the patented design in its entirety"

Holding that a motivation to combine and a reasonable expectation of success exist when "it is simply a matter of common sense" to combine known elements of the prior art to solve a known problem

Finding no motivation to combine where "doctors were not using the disclosed devices and methods to heal wounds with negative pressure because they did not believe that these devices were capable of such healing"

Holding that " 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim."

Refusing to consider arguments that were adopted by reference but not actually made in appellate briefs because "adoption by reference amounts to a self-help increase in the length of the appellate brief"

Holding that expert's testimony could not support a finding of obviousness where "testimony primarily consisted of conclusory references to [the expert's] belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so"

Holding that “an analysis of obviousness ... may include recourse to logic, judgment, and common sense available to the person of ordinary skill [which] do[es] not necessarily require explication in any reference or expert opinion”