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Ex Parte so et al

10745155 (B.P.A.I. Jun. 19, 2009)
Ex Parte so et al

13 Cited authorities

  1. 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

  2. In re Rouffet

    149 F.3d 1350 (Fed. Cir. 1998)   Cited 160 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"

  3. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  4. In re McDaniel

    293 F.3d 1379 (Fed. Cir. 2002)   Cited 28 times   3 Legal Analyses
    Noting "the Board is free to select a single claim from each group of claims subject to a common ground of rejection as representative of all claims in that group and to decide the appeal of that rejection based solely on the selected representative claim" in the absence of a clear statement asserting separate patentability of the claims

  5. In re Boe

    355 F.2d 961 (C.C.P.A. 1966)   Cited 26 times

    Patent Appeal No. 7535. February 17, 1966. Burgess, Dinklage Sprung, Arnold Sprung, New York City, for appellant. Clarence W. Moore, Washington, D.C. (Jere W. Sears, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges. SMITH, Judge. The Board of Appeals affirmed the examiner's rejection of claims 9, 11 and 12 of appellant's application for patent Serial No. 845,743, filed August 12, 1959, for "Highly Porous And Absorptive

  6. Application of Zenitz

    333 F.2d 924 (C.C.P.A. 1964)   Cited 15 times

    Patent Appeal No. 7142. July 9, 1964. Laurence Laurence, Washington, D.C. (Dean Laurence, Herbert I. Sherman, Washington, D.C., of counsel), for appellant. Clarence W. Moore, Washington, D.C. (George C. Roeming, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges. WORLEY, Chief Judge. Zenitz appeals from the affirmance by the Board of Appeals of the rejection of claims 3, 5, 9 through 12 and 21 of his patent application

  7. Application of Lemelson

    397 F.2d 1006 (C.C.P.A. 1968)   Cited 5 times

    Patent Appeal No. 7980. June 27, 1968. R.J. Lasker, Washington, D.C., for appellant. Joseph Schimmel, Washington, D.C. (Jere W. Sears, Washington, D.C., of counsel), for Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and KIRKPATRICK, Judges. Senior District Judge Eastern District of Pennsylvania, sitting by designation. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 7 and 10-19 of application serial

  8. 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."

  9. Section 119 - Benefit of earlier filing date; right of priority

    35 U.S.C. § 119   Cited 269 times   70 Legal Analyses
    Governing claiming priority to an earlier-filed provisional application

  10. 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"

  11. 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

  12. 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

  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)