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Ex Parte Goldenberg et al

12878840 (P.T.A.B. Feb. 20, 2018)
Ex Parte Goldenberg et al

11 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,559 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. United States v. Adams

    383 U.S. 39 (1966)   Cited 479 times   5 Legal Analyses
    Finding that one of ordinary skill in the art would have to ignore long-accepted factors in the field of wet batters to arrive at the claimed invention

  3. In re Clay

    966 F.2d 656 (Fed. Cir. 1992)   Cited 88 times   10 Legal Analyses
    Concluding that a reference was not reasonably pertinent where a PHOSITA "would not reasonably have expected to solve the [relevant] problem ... by considering" that reference

  4. In re Mayne

    104 F.3d 1339 (Fed. Cir. 1997)   Cited 38 times
    Finding a claimed enterokinase recognition sequence containing the amino acid sequence Phe–Pro–Leu was merely “an obvious functional equivalent” to prior art sequences that included arrangements of Phe–Pro–Ile and Leu–Pro–Leu

  5. IN RE FOUT

    675 F.2d 297 (C.C.P.A. 1982)   Cited 24 times
    Holding preamble of Jepson-type claim to be admitted prior art where applicant's specification credited another as the inventor of the subject matter of the preamble

  6. Application of Jacoby

    309 F.2d 513 (C.C.P.A. 1962)   Cited 4 times

    Patent Appeal No. 6838. November 14, 1962. Henry Powers, Edward J. Mahler, Robert Alpher, New York City, and Robert H. Bachman, Hamden, Conn., for appellant. Clarence W. Moore, Washington, D.C. (Joseph F. Nakamura, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, RICH, MARTIN, and SMITH, Judges, and Judge JOSEPH R. JACKSON, Retired. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims

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

    35 U.S.C. § 103   Cited 6,148 times   482 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."

  8. 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"

  9. 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

  10. Section 1.136 - [Effective until 1/19/2025] 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)

  11. Section 41.41 - Reply brief

    37 C.F.R. § 41.41   Cited 9 times   25 Legal Analyses

    (a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence