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Ex Parte 5861807 et al

90009635 (P.T.A.B. Dec. 26, 2012)
Ex Parte 5861807 et al

19 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,519 times   169 Legal Analyses
    Holding that, in an obviousness analysis, "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it"

  2. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,714 times   164 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"

  3. Thorner v. Sony Computer Entertainment America LLC

    669 F.3d 1362 (Fed. Cir. 2012)   Cited 1,038 times   10 Legal Analyses
    Holding that “flexible” should be given its plain and ordinary meaning and reversing the construction of “capable of being noticeably flexed with ease”

  4. York Products, Inc. v. Central Tractor Farm & Family Center

    99 F.3d 1568 (Fed. Cir. 1996)   Cited 312 times
    Holding that the claim language "means formed on the . . . sidewall portions including a plurality of spaced apart . . . members protruding from the . . . sidewall portions and forming load lock . . ." did not invoke § 112, ¶ 6: "The claim language does not link the term means to a function . . . Instead, the claim recites structure. . . . Without a `means' sufficiently connected to a recited function, the presumption in use of the word `means' does not operate."

  5. Anchor Wall Sys. v. Rockwood Retaining Walls

    340 F.3d 1298 (Fed. Cir. 2003)   Cited 205 times   1 Legal Analyses
    Holding "words of approximation, such as 'generally' and 'substantially,' are descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter"

  6. Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc.

    347 F.3d 1314 (Fed. Cir. 2003)   Cited 146 times   2 Legal Analyses
    Recognizing as dictionary definitions of substantially "significantly," "considerably," "largely," and "essentially"

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

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 87 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

  8. In re Fulton

    391 F.3d 1195 (Fed. Cir. 2004)   Cited 76 times   7 Legal Analyses
    Holding that "a particular combination" need not "be the preferred, or the most desirable, combination described in the prior art in order to provide motivation"

  9. In re Suitco Surface

    603 F.3d 1255 (Fed. Cir. 2010)   Cited 35 times   5 Legal Analyses
    In Suitco, we disagreed with the Board's broadest reasonable construction of the term "finishing the top surface of the floor," because the Board's construction "allow[ed] the finishing material to fall anywhere above the surface being finished regardless of whether it actually ‘finishes’ the surface."

  10. In re Merck Co., Inc.

    800 F.2d 1091 (Fed. Cir. 1986)   Cited 70 times   1 Legal Analyses
    Holding that a person of skill in the art would have expected amitriptyline to resemble imipramine in the alleviation of depression in humans because of the drugs’ close structural similarity and similar use

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

    35 U.S.C. § 103   Cited 6,056 times   449 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."

  12. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,938 times   949 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 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"

  14. 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

  15. 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

  16. Section 1.135 - Abandonment for failure to reply within time period

    37 C.F.R. § 1.135   Cited 12 times

    (a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136 , the application will become abandoned unless an Office action indicates otherwise. (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive

  17. Section 1.565 - Concurrent office proceedings which include an ex parte reexamination proceeding

    37 C.F.R. § 1.565   Cited 11 times
    Stating that a merged reissue/reexamination proceeding will follow the rules for a reissue patent application (e.g., 37 C.F.R. 171 through 1.179)