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Disney Enterprises, Inc.

2019001758 (P.T.A.B. Sep. 22, 2020)
Disney Enterprises, Inc.

16 Cited authorities

  1. Dickinson v. Zurko

    527 U.S. 150 (1999)   Cited 1,026 times   20 Legal Analyses
    Holding that the more deferential substantial-evidence standard, and not the "stricter" and less deferential clear-error standard, applies to challenges to Patent and Trademark Office's patent denials, as it does to other agencies

  2. Key Pharmaceuticals v. Hercon Lab. Corp.

    161 F.3d 709 (Fed. Cir. 1998)   Cited 375 times
    Holding that trial court can hear extrinsic evidence to educate itself about patent and relevant technology, but may not use extrinsic evidence to vary or contradict claim terms

  3. Medichem, S.A. v. Rolabo, S.L

    353 F.3d 928 (Fed. Cir. 2003)   Cited 66 times   1 Legal Analyses
    Holding that, without any of the necessary factual determinations underlying an obviousness inquiry, the appellate court could not undertake any review in the first instance

  4. 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"

  5. In re Piasecki

    745 F.2d 1468 (Fed. Cir. 1984)   Cited 73 times   2 Legal Analyses
    Finding nonobviousness where the evidence demonstrated a failure of others to provide a feasible solution to a longstanding problem

  6. In re Jung

    637 F.3d 1356 (Fed. Cir. 2011)   Cited 24 times   4 Legal Analyses
    Holding the prima facie case during patent examination “is merely a procedural device that enables an appropriate shift of the burden of production” from the PTO to the patent applicant

  7. Hyatt v. Dudas

    492 F.3d 1365 (Fed. Cir. 2007)   Cited 22 times   3 Legal Analyses
    Upholding the patent examiner's initial rejection in which the examiner found failure to satisfy the written description requirement because “the written description did not support the particular claimed combination of elements”— i.e., “while each element may be individually described in the specification, the deficiency was the lack of adequate description of their combination ”

  8. Chester v. Miller

    906 F.2d 1574 (Fed. Cir. 1990)   Cited 19 times   2 Legal Analyses

    No. 90-1039. June 29, 1990. Marina V. Schneller, Mobil Oil Corp., Fairfax, Va., argued, for appellants. With her on the brief, was Alexander J. McKillop. Thomas G. De Jonghe, Chevron Corp., San Francisco, Cal., argued, for appellees. Appeal from the United States Patent and Trademark Office. Before MICHEL, Circuit Judge, BALDWIN, Senior Circuit Judge, and WILL, Senior District Judge. The Honorable Hubert L. Will, Senior District Judge, United States District Court for the Northern District of Illinois

  9. Section 706 - Scope of review

    5 U.S.C. § 706   Cited 21,067 times   233 Legal Analyses
    Granting courts jurisdiction to "compel agency action unlawfully held or unreasonably delayed"

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

    35 U.S.C. § 103   Cited 6,144 times   481 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 132 - Notice of rejection; reexamination

    35 U.S.C. § 132   Cited 310 times   47 Legal Analyses
    Prohibiting addition of "new matter"

  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 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

  15. 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)

  16. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and