Ex Parte LIU et al

10 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"
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
In re Kubin
561 F.3d 1351 (Fed. Cir. 2009) Cited 132 times 10 Legal Analyses
Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied
In re O'Farrell
853 F.2d 894 (Fed. Cir. 1988) Cited 167 times 9 Legal Analyses
Finding patent obvious where the prior art provided a "reasonable expectation of success"
Dillon v. Manbeck
500 U.S. 904 (1991) Cited 34 times
No. 90-1264. April 29, 1991, OCTOBER TERM, 1990. C.A. Fed. Cir. Certiorari denied. Reported below: 919 F. 2d 688.
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
Application of Kronig
539 F.2d 1300 (C.C.P.A. 1976) Cited 18 times
Holding no new ground of rejection when the Board relied on the same statutory basis and the same reasoning advanced by the examiner
In re Heck
699 F.2d 1331 (Fed. Cir. 1983) Cited 6 times
Explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions"
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 184 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

Ex Parte LIU et al

10 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 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 patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied

Finding patent obvious where the prior art provided a "reasonable expectation of success"

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 no new ground of rejection when the Board relied on the same statutory basis and the same reasoning advanced by the examiner

Explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions"

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"