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Ex Parte 5700460 et al

90008317 (B.P.A.I. May. 16, 2011)
Ex Parte 5700460 et al

19 Cited authorities

  1. Rowe v. Dror

    112 F.3d 473 (Fed. Cir. 1997)   Cited 230 times   3 Legal Analyses
    Finding that "balloon angioplasty catheter" in preamble to claim was structural limitation

  2. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 232 times   3 Legal Analyses
    Holding an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning

  3. Perricone v. Medicis Pharmaceutical Corp.

    432 F.3d 1368 (Fed. Cir. 2005)   Cited 147 times   3 Legal Analyses
    Holding that a prior-art reference anticipated claims 1-4 and 7, but not claims 8, 9, and 13, because the latter set of claims contained one fewer limitation

  4. In re Cruciferous Sprout Litigation

    301 F.3d 1343 (Fed. Cir. 2002)   Cited 141 times   6 Legal Analyses
    Holding that preamble was limiting in light of arguments made during prosecution "show[ing] a clear reliance by the patentee on the preamble to persuade the Patent Office that the claimed invention is not anticipated by the prior art"

  5. ACS Hospital Systems, Inc. v. Montefiore Hospital

    732 F.2d 1572 (Fed. Cir. 1984)   Cited 169 times   3 Legal Analyses
    Holding that patent claims "should be so construed, if possible, as to sustain their validity"

  6. In re Omeprazole Patent

    483 F.3d 1364 (Fed. Cir. 2007)   Cited 87 times   3 Legal Analyses
    Stating that an "inequitable conduct claim was not technically moot, because it would have rendered the entire . . . patent unenforceable, rather than just the claims that were held invalid"

  7. MEHL/Biophile Int’l Corp. v. Milgraum

    192 F.3d 1362 (Fed. Cir. 1999)   Cited 108 times   2 Legal Analyses
    Finding anticipation by inherency of a method of hair depilation

  8. Jansen v. Rexall Sundown, Inc.

    342 F.3d 1329 (Fed. Cir. 2003)   Cited 53 times   2 Legal Analyses
    Holding that a method of treating ... a male human in need of such treatment means a method practiced for the stated purpose

  9. In re Woodruff

    919 F.2d 1575 (Fed. Cir. 1990)   Cited 58 times   4 Legal Analyses
    Holding a claimed invention obvious because claimed range (“more than 5% to about 25%” carbon monoxide) abutted range of prior art (“about 1–5%” carbon monoxide)

  10. Whittaker Corp. ex rel. Technibilt Division v. UNR Industries, Inc.

    911 F.2d 709 (Fed. Cir. 1990)   Cited 42 times

    No. 89-1420. August 14, 1990. Alex Chartove, Spensley Horn Jubas Lubitz, of Washington, D.C., argued for plaintiff-appellee. W. Thad Adams, III, Spensley Horn Jubas Lubitz, of Washington, D.C., of counsel. John P. Milnamow, Dressler, Goldsmith, Shore, Suther Milnamow, Ltd., of Chicago, Ill., argued for defendant-appellant. With him on the brief was Karl R. Fink. Also on the brief were James W. Clement, Clement Ryan, of Chicago, Ill., and Floyd A. Gibson and Blas P. Arroyo, Bell, Seltzer, Park Gibson

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,031 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  12. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 188 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 302 - Request for reexamination

    35 U.S.C. § 302   Cited 182 times   9 Legal Analyses
    Noting that a request for a reexamination must set forth the pertinency and manner of applying the prior art to the patent at issue

  14. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 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

  15. 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

  16. 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

  17. 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

  18. 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