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Ex Parte Fails et al

11109012 (P.T.A.B. Mar. 11, 2013)
Ex Parte Fails et al

14 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,551 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. CCS Fitness, Inc. v. Brunswick Corp.

    288 F.3d 1359 (Fed. Cir. 2002)   Cited 972 times   6 Legal Analyses
    Holding that to act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning

  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. In re Mouttet

    686 F.3d 1322 (Fed. Cir. 2012)   Cited 86 times   4 Legal Analyses
    Finding "the Board's determination that eliminating the optical components of Falk would not destroy its principle of operation to be supported by substantial evidence"

  5. 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

  6. In re Huang

    100 F.3d 135 (Fed. Cir. 1996)   Cited 94 times   4 Legal Analyses
    Holding that the inventor's opinion as to the purchaser's reason for buying the product is insufficient to demonstrate a nexus

  7. In re DBC

    545 F.3d 1373 (Fed. Cir. 2008)   Cited 62 times   4 Legal Analyses
    Holding the plaintiffs waived their Appointments Clause challenge to two panel members of the United States Patent and Trademark Office Board of Patent Appeals "by failing to raise it before the Board"

  8. In re Etter

    756 F.2d 852 (Fed. Cir. 1985)   Cited 121 times   1 Legal Analyses
    Noting that whether one prior art reference can be incorporated into another is "basically irrelevant."

  9. Optivus Technology, Inc. v. Ion Beam Applications S.A.

    469 F.3d 978 (Fed. Cir. 2006)   Cited 31 times
    Affirming the district court's holding of invalidity despite the court's statement that “[t]here is no indication that the [motivation to combine] was non-obvious,” because the district court's opinion as a whole indicated it “correctly allocated the burden of proof”

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

    35 U.S.C. § 103   Cited 6,133 times   479 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,005 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  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 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)