Ex Parte Malone

26 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,547 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"
Stratoflex, Inc. v. Aeroquip Corp.
713 F.2d 1530 (Fed. Cir. 1983) Cited 482 times 12 Legal Analyses
Finding evidence of nonobviousness in the "[r]ecognition and acceptance of patent by competitors who take licenses under it"
Amgen v. F. Hoffmann-La Roche
580 F.3d 1340 (Fed. Cir. 2009) Cited 209 times 16 Legal Analyses
Determining whether the differences in subject matter between the two claims render the claims patentably distinct "is analogous to an obviousness analysis under 35 U.S.C. § 103"
In re Wands
858 F.2d 731 (Fed. Cir. 1988) Cited 341 times 43 Legal Analyses
Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."
Amgen, Inc. v. Chugai Pharmaceutical Co. LTD
927 F.2d 1200 (Fed. Cir. 1991) Cited 273 times 11 Legal Analyses
Holding that the term "at least about" was indefinite because the patent provided no guidance as to where the line should be drawn between the numerical value of the prior art cited in the prosecution history and the close numerical value in the patent
Beckman Instruments, Inc. v. LKB Produkter AB
892 F.2d 1547 (Fed. Cir. 1989) Cited 237 times 1 Legal Analyses
Holding that "[v]iewed individually, the specific examples of vexatious conduct recited by the district court [were] somewhat tenuous," but "when viewed together, we cannot say that the district court's finding of vexatious litigation was clearly erroneous"
Symbol Technologies, Inc. v. Opticon, Inc.
935 F.2d 1569 (Fed. Cir. 1991) Cited 149 times 5 Legal Analyses
Concluding that a party who chooses not to cross-examine a witness on an issue cannot later "recoup for its failed litigation strategy"
Ashland Oil, v. Delta Resins Refractories
776 F.2d 281 (Fed. Cir. 1985) Cited 120 times 3 Legal Analyses
Holding that "[w]hile the opinion testimony of a party having a direct interest in the pending litigation is less persuasive than opinion testimony by a disinterested party, it cannot be disregarded for that reason alone and may be relied upon when sufficiently convincing"
In re Vaeck
947 F.2d 488 (Fed. Cir. 1991) Cited 75 times 1 Legal Analyses
Holding the examiner did not err in rejecting as nonenabled claims drawn to all genetically-engineered cyanobacteria expressing a given protein because the claimed 150 genera of cyanobacteria represent a vast, diverse, and poorly understood group; heterologous gene expression in cyanobacteria was "unpredictable"; and the patent's disclosure referred to only a genus
In re Thorpe
777 F.2d 695 (Fed. Cir. 1985) Cited 40 times 3 Legal Analyses
Holding that prior art pertinent only to product is proper ground for rejecting product-by-process claims
Section 112 - Specification
35 U.S.C. § 112 Cited 7,363 times 1046 Legal Analyses
Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,130 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."
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"
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
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)
Section 41.52 - Rehearing
37 C.F.R. § 41.52 Cited 7 times 9 Legal Analyses
(a) (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by

Ex Parte Malone

26 Cited authorities

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"

Finding evidence of nonobviousness in the "[r]ecognition and acceptance of patent by competitors who take licenses under it"

Determining whether the differences in subject matter between the two claims render the claims patentably distinct "is analogous to an obviousness analysis under 35 U.S.C. § 103"

Holding that the term "at least about" was indefinite because the patent provided no guidance as to where the line should be drawn between the numerical value of the prior art cited in the prosecution history and the close numerical value in the patent

Holding that "[v]iewed individually, the specific examples of vexatious conduct recited by the district court [were] somewhat tenuous," but "when viewed together, we cannot say that the district court's finding of vexatious litigation was clearly erroneous"

Concluding that a party who chooses not to cross-examine a witness on an issue cannot later "recoup for its failed litigation strategy"

Holding that "[w]hile the opinion testimony of a party having a direct interest in the pending litigation is less persuasive than opinion testimony by a disinterested party, it cannot be disregarded for that reason alone and may be relied upon when sufficiently convincing"

Holding that prior art pertinent only to product is proper ground for rejecting product-by-process claims

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

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"