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Ex Parte 7943216 et al

90013218 (P.T.A.B. May. 16, 2016)
Ex Parte 7943216 et al

21 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,544 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"

  2. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,176 times   67 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. Ormco Corp. v. Align Technology, Inc.

    463 F.3d 1299 (Fed. Cir. 2006)   Cited 203 times   5 Legal Analyses
    Holding that evidence that success was due to prior art features rebutted the presumption

  4. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.

    699 F.3d 1340 (Fed. Cir. 2012)   Cited 99 times
    Finding "sufficient evidence of both commercial success and nexus to the features of the claimed invention" as presented through contracts and an employee's testimony

  5. Leo Pharm. Prods., Ltd. v. Rea

    726 F.3d 1346 (Fed. Cir. 2013)   Cited 72 times   11 Legal Analyses
    Holding no reason to improve upon the prior art when it was not "recognized or disclosed" in the prior art

  6. J.T. Eaton & Co. v. Atlantic Paste & Glue Co.

    106 F.3d 1563 (Fed. Cir. 1997)   Cited 117 times   1 Legal Analyses
    Holding that the definition of "a term with no previous meaning to those of ordinary skill in the art . . . must be found somewhere in the patent"

  7. In re Soni

    54 F.3d 746 (Fed. Cir. 1995)   Cited 91 times   2 Legal Analyses
    Finding "substantially improved results" to overcome obviousness when the 50-fold improvement in tensile strength was much greater than would have been predicted

  8. In re Swanson

    540 F.3d 1368 (Fed. Cir. 2008)   Cited 58 times   8 Legal Analyses
    Holding the scope of an examiner's prior consideration of a reference is a question of fact

  9. Inst. Pasteur v. Focarino

    738 F.3d 1337 (Fed. Cir. 2013)   Cited 17 times   3 Legal Analyses
    Holding that, under § 1.530(j), (k), “the PTO may not issue the amended claim now that the patent has expired” after the Board issued a reexamination decision

  10. In re Harris

    409 F.3d 1339 (Fed. Cir. 2005)   Cited 14 times
    Holding that unexpected results require a difference in kind, not merely degree (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996))

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

    35 U.S.C. § 103   Cited 6,120 times   473 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."

  12. 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"

  13. Section 302 - Request for reexamination

    35 U.S.C. § 302   Cited 181 times   9 Legal Analyses
    Noting that a request for a reexamination must set forth the pertinency and manner of applying the prior art to the patent at issue

  14. Section 303 - Determination of issue by Director

    35 U.S.C. § 303   Cited 122 times   23 Legal Analyses
    Governing ex parte reexamination

  15. Section 301 - Citation of prior art and written statements

    35 U.S.C. § 301   Cited 118 times   15 Legal Analyses
    Referring to “the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324 ”

  16. Section 304 - Reexamination order by Director

    35 U.S.C. § 304   Cited 53 times   7 Legal Analyses

    If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any

  17. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  18. Section 1.550 - Conduct of ex parte reexamination proceedings

    37 C.F.R. § 1.550   Cited 32 times   2 Legal Analyses
    Discussing limited involvement of requester and third parties in re-examination proceedings

  19. Section 1.510 - Request for ex parte reexamination

    37 C.F.R. § 1.510   Cited 29 times   9 Legal Analyses
    Providing that where ex parte reexamination request does not meet requirements, requester is "generally...given an opportunity to complete the request within a specified time"