In Re Hans Oetiker’s Empirical Analysis

Citation profile

2 federal appellate · 9 district ·

Most-quoted passages

The sentences later courts lift from this opinion, ranked by how many decisions quote each — the parts of the opinion doing the work. These counts are smaller than the citation total above because most of the 63 citing decisions cite the case generally; a passage count includes only decisions quoting that exact language verbatim.

1. “[t]he prima facie case [of obviousness] is a procedural tool of patent examination, allocating the burdens of going forward as between examiner and applicant.... As discussed in In re Piasecki [, 745 F.2d 1468 , 1472, 223 USPQ 785, 788 (Fed.Cir.1984) ], the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.”

   2 later decisions quote this exact passage · from the majority
   e.g. In Re Pravin L. Soni, Ceinwen Rowlands, Larry Edwards and Mark Wartenberg · In Re Norman K. Alton, Mary A. Peters, Yitzhak Tabinsky, and David L. Snitman

2. “After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of the evidence with due consideration to persuasiveness of argument.”

   2 later decisions quote this exact passage · from the majority
   e.g. In Re Paul Chu, William Downs, John B. Doyle and Peter v. Smith · In Re Norman K. Alton, Mary A. Peters, Yitzhak Tabinsky, and David L. Snitman

3. “I agree with the panel decision and write only to express my understanding of the language that there must be some teaching, reason, suggestion, or motivation found “in the prior art” or “in the prior art references” to make a combination to render an invention obvious within the meaning of 35 U.S.C. § 103 (1988). Similar language appears in a number of opinions ... and if taken literally would mean that an invention cannot be held to have been obvious unless something specific in a prior art reference would lead an inventor to combine the teachings therein with another piece of prior art. This restrictive understanding of the concept of obviousness is clearly wrong. Other statements in opinions express the idea more generally. We have stated, for example, that the test is: “whether the teachings of the prior art, taken as a whole, would have made obvious the claimed invention,” ... and “what the combined teachings ... would have suggested to one of ordinary skill in the art[.]” ... We have also stated that “the prior art as a whole must suggest the desirability ... of making the combination.” ... I believe that it would better reflect the concept of obviousness to speak in terms of “from the prior art” rather than simply “in the prior art.” The word “from” expresses the idea of the statute that we must look at the obviousness issue through the eyes of one of ordinary skill in the art and what one would be presumed to know with that background. What would be obvious to one of”

   1 later decision quote this exact passage · from the concurrence
   e.g. 60 F. Supp. 2d 1099 - Hay & Forage Industries v. New Holland North America, Inc.