§

Ex Parte 5694322 et al

90011789 (P.T.A.B. Sep. 27, 2013)
Ex Parte 5694322 et al

15 Cited authorities

  1. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,869 times   167 Legal Analyses
    Holding that "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence"

  2. Omega Engineering, Inc v. Raytek Corp.

    334 F.3d 1314 (Fed. Cir. 2003)   Cited 1,196 times   11 Legal Analyses
    Holding that the doctrine of prosecution disclaimer does not extend to situations where the supposed disavowal of claim scope is ambiguous

  3. Depuy Spine v. Medtronic Sofamor Danek, Inc.

    469 F.3d 1005 (Fed. Cir. 2006)   Cited 141 times
    Holding that Medtronic's bottom-loading screws, unlike its top-loading Vertex® screws, do not possess claim 1's "opening" limitation

  4. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 89 times   1 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  5. In re Yamamoto

    740 F.2d 1569 (Fed. Cir. 1984)   Cited 111 times   4 Legal Analyses
    Giving claims their broadest reasonable interpretation “serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified”

  6. In re Abbott Diabetes Care Inc.

    696 F.3d 1142 (Fed. Cir. 2012)   Cited 41 times   2 Legal Analyses
    Holding that the conclusion that the claimed electrochemical sensor could not have external wires was supported by, among other considerations, the fact that "every embodiment disclosed in the specification shows . . . sensor without external cables or wires"

  7. In re Morris

    127 F.3d 1048 (Fed. Cir. 1997)   Cited 49 times   7 Legal Analyses
    Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness

  8. In re Zletz

    893 F.2d 319 (Fed. Cir. 1990)   Cited 42 times   3 Legal Analyses
    Holding that claims failing this test during prosecution must be rejected under § 112, ¶ 2

  9. In re Bass

    314 F.3d 575 (Fed. Cir. 2002)   Cited 9 times   1 Legal Analyses

    No. 02-1046, Reexamination Nos. 90/004, 127 and 90/004, 403. December 17, 2002. Appeal from the Court of Appeals, Mayer, Chief Circuit Judge. David K. Friedland, Lott Friedland, P.A., of Coral Gables, Florida, argued for appellant. With him on the brief was Ury Fischer. Raymond T. Chen, Associate Solicitor, Office of the Director, United States Patent and Trademark Office, of Arlington, Virginia, argued for appellee. With him on the brief were John M. Whealan, Solicitor; and Linda Moncys Isacson

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

    35 U.S.C. § 103   Cited 6,154 times   485 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 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 306 - Appeal

    35 U.S.C. § 306   Cited 42 times   1 Legal Analyses
    Providing that a petitioner can appeal adverse decisions to the Federal Circuit after reexaminations are complete

  13. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  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 1.550 - Conduct of ex parte reexamination proceedings

    37 C.F.R. § 1.550   Cited 32 times   2 Legal Analyses
    Discussing limited involvement of requester and third parties in re-examination proceedings