Ex Parte SHAO et al

13 Cited authorities

Alice Corp. v. CLS Bank International
573 U.S. 208 (2014) Cited 1,400 times 515 Legal Analyses
Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation
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"
Mayo Collaborative Servs. v. Prometheus Labs., Inc.
566 U.S. 66 (2012) Cited 794 times 151 Legal Analyses
Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility
Ass'n for Molecular Pathology v. Myriad Genetics, Inc.
569 U.S. 576 (2013) Cited 454 times 147 Legal Analyses
Holding that "a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated"
Gottschalk v. Benson
409 U.S. 63 (1972) Cited 500 times 59 Legal Analyses
Holding claim involving mathematical formula invalid under § 101 that did not preempt a mathematical formula
McRo, Inc. v. Bandai Namco Games Am. Inc.
837 F.3d 1299 (Fed. Cir. 2016) Cited 375 times 66 Legal Analyses
Holding that using "unconventional rules that relate to sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea"
In re Rouffet
149 F.3d 1350 (Fed. Cir. 1998) Cited 158 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"
In re Oetiker
977 F.2d 1443 (Fed. Cir. 1992) Cited 66 times 9 Legal Analyses
Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"
In re Fine
837 F.2d 1071 (Fed. Cir. 1988) Cited 67 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."
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,105 times 470 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 101 - Inventions patentable
35 U.S.C. § 101 Cited 3,468 times 2251 Legal Analyses
Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
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 SHAO et al

13 Cited authorities

Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation

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 "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

Holding that "a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated"

Holding claim involving mathematical formula invalid under § 101 that did not preempt a mathematical formula

Holding that using "unconventional rules that relate to sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea"

Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

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."

Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

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"