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Ex Parte Siegel et al

13491515 (P.T.A.B. May. 9, 2018)
Ex Parte Siegel et al

27 Cited authorities

  1. Advanced Display Systems, Inc. v. Kent State University

    212 F.3d 1272 (Fed. Cir. 2000)   Cited 379 times   5 Legal Analyses
    Holding that the objective evidence supported an obviousness finding where others had “tried for a long time” to develop the claimed invention but found it “very hard” and “were all not successful”

  2. Stratoflex, Inc. v. Aeroquip Corp.

    713 F.2d 1530 (Fed. Cir. 1983)   Cited 481 times   12 Legal Analyses
    Finding evidence of nonobviousness in the "[r]ecognition and acceptance of patent by competitors who take licenses under it"

  3. Wyers v. Master Lock Co.

    616 F.3d 1231 (Fed. Cir. 2010)   Cited 206 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

  4. Midwest Industries, v. Karavan Trailers

    175 F.3d 1356 (Fed. Cir. 1999)   Cited 276 times   3 Legal Analyses
    Holding en banc that Federal Circuit law governs question of whether patent law conflicts with trade dress action under § 43 of the Lanham Act or preempts such an action under state law

  5. 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

  6. Windsurfing International, Inc. v. AMF, Inc.

    782 F.2d 995 (Fed. Cir. 1986)   Cited 234 times   2 Legal Analyses

    Appeal Nos. 85-2808, 85-2809, 85-2835, 85-2836, 86-514 and 86-548. January 28, 1986. David H. Badger, Willian, Brinks, Olds, Hofer, Gilson Lione, Indianapolis, Ind., argued for appellant AMF, Inc. Thomas F. Reddy, Jr., Pennie Edmonds, of New York City, argued for appellant/cross-appellee BIC Leisure Products, Inc. With him on the brief were Joseph V. Colaianni, Pennie Edmonds, Washington, D.C., and Brian M. Poissant, Pennie Edmonds, New York City. Harold E. Wurst, Nilsson, Robbins, Dalgarn, Berliner

  7. In re Rouffet

    149 F.3d 1350 (Fed. Cir. 1998)   Cited 159 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"

  8. Iron Grip Barbell Co. v. USA Sports, Inc.

    392 F.3d 1317 (Fed. Cir. 2004)   Cited 132 times   12 Legal Analyses
    Noting that licenses "may constitute evidence of nonobviousness; however, only little weight can be attributed to such evidence if the patentee does not demonstrate a nexus between the merits of the invention and the licenses of record" (quoting In re GPAC Inc. , 57 F.3d 1573, 1580 (Fed. Cir. 1995) )

  9. In re GPAC Inc.

    57 F.3d 1573 (Fed. Cir. 1995)   Cited 167 times   2 Legal Analyses
    In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."

  10. In re Huai-Hung Kao

    639 F.3d 1057 (Fed. Cir. 2011)   Cited 88 times   16 Legal Analyses
    Holding that a "food effect" was obvious because the effect was an inherent property of the composition

  11. 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."

  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 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

  14. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  15. 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)