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Hotelling, Steven P.

2019004316 (P.T.A.B. Mar. 12, 2021)
Hotelling, Steven P.

14 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,545 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. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,813 times   166 Legal Analyses
    Holding that "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence"

  3. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 144 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  4. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 88 times   1 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  5. Omeprazole Patent v. Apotex

    536 F.3d 1361 (Fed. Cir. 2008)   Cited 45 times   6 Legal Analyses
    Finding pharmaceutical formulation not ready for patenting prior to clinical trials, and noting that "[t]he existence of the formulation, however, does not establish that the Astra scientists had determined that the invention would work for its intended purpose."

  6. In re Morris

    127 F.3d 1048 (Fed. Cir. 1997)   Cited 49 times   7 Legal Analyses
    Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness

  7. In re Smith Int'l, Inc.

    871 F.3d 1375 (Fed. Cir. 2017)   Cited 15 times   3 Legal Analyses
    Reversing an anticipation rejection because it was predicated on an unreasonably broad claim construction

  8. In re Keller

    642 F.2d 413 (C.C.P.A. 1981)   Cited 45 times   1 Legal Analyses
    Stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"

  9. In re Van Geuns

    988 F.2d 1181 (Fed. Cir. 1993)   Cited 21 times   1 Legal Analyses

    No. 91-1088. March 10, 1993. Jack E. Haken, U.S. Philips Corp., Tarrytown, NY, argued, for appellant. Fred E. McKelvey, Sol., Office of the Sol., Arlington, VA, argued, for appellee. With him on the brief, was Lee E. Barrett, Associate Sol. Appeal from the Patent and Trademark Office Board of Patent Appeals and Interferences. Before ARCHER, PLAGER, and RADER, Circuit Judges. ARCHER, Circuit Judge. Johannes R. Van Geuns appeals from the September 25, 1990 decision of the Patent and Trademark Office

  10. 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."

  11. 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"

  12. 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

  13. 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)

  14. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and