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Ex Parte 7777074 et al

90011869 (P.T.A.B. May. 21, 2018)
Ex Parte 7777074 et al

27 Cited authorities

  1. Bristol-Myers Squibb v. Ben Venue Labs

    246 F.3d 1368 (Fed. Cir. 2001)   Cited 273 times   11 Legal Analyses
    Holding preamble language non-limiting in method of treatment claims containing two steps, the second of which was administering a compound

  2. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 335 times   41 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  3. W.L. Gore Associates, Inc. v. Garlock

    721 F.2d 1540 (Fed. Cir. 1983)   Cited 324 times   7 Legal Analyses
    Holding the district court erred by "considering the references in less than their entireties, i.e., in disregarding disclosures in the references that diverge from and teach away from the invention at hand"

  4. In re Gleave

    560 F.3d 1331 (Fed. Cir. 2009)   Cited 149 times
    Finding that the prior art reference was enabling and stating that “the fact that [the reference] provides ‘no understanding of which of the targets would be useful’ is of no import, because [the patent applicant] admits that it is well within the skill of an ordinary person in the art to make any oligodeoxynucleotide sequence”

  5. Wasica Fin. GMBH v. Cont'l Auto. Sys., Inc.

    853 F.3d 1272 (Fed. Cir. 2017)   Cited 88 times   8 Legal Analyses
    Finding no anticipation by a genus disclosure that was "too ambiguous" and too broad for an ordinary skilled artisan to "at once envisage" every member of the genus

  6. Motorola, Inc. v. Interdigital Tech. Corp.

    121 F.3d 1461 (Fed. Cir. 1997)   Cited 95 times
    Holding that a verdict of anticipation was properly supported by expert testimony regarding how a person of ordinary skill would understand a prior art reference

  7. Novo Nordisk Pharmaceuticals, Inc. v. Bio-Technology General Corp.

    424 F.3d 1347 (Fed. Cir. 2005)   Cited 62 times   2 Legal Analyses
    Holding inventor committed inequitable conduct in writing example in the past tense and failing to inform PTO of failed experiments

  8. In re Donohue

    766 F.2d 531 (Fed. Cir. 1985)   Cited 85 times   1 Legal Analyses
    Holding that a non-enabled disclosure will not suffice as § 102 prior art

  9. Rohm & Haas Co. v. Brotech Corp.

    127 F.3d 1089 (Fed. Cir. 1997)   Cited 57 times
    Concluding that courts should evaluate the question of objective baselessness "in light of ... information [available] at the time of filing"

  10. In re Antor Media Corp.

    689 F.3d 1282 (Fed. Cir. 2012)   Cited 32 times   4 Legal Analyses

    No. 2011–1465. Reexamination Nos. 90/007,839 90/007,936 90/007,942 90/007,957 90/009,261. 2012-07-27 In re ANTOR MEDIA CORPORATION. Thomas A. Lewry, Brooks Kushman, P.C., of Southfield, Michigan, argued for appellant. With him on the brief was Thomas W. Cunningham. William Lamarca, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia. With him on the brief were Raymond T. Chen, Solicitor, and Robert J. McManus, Associate Solicitor. LOURIE

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,945 times   960 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  12. 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

  13. Section 1.132 - Affidavits or declarations traversing rejections or objections

    37 C.F.R. § 1.132   Cited 104 times   13 Legal Analyses

    When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. 37 C.F.R. §1.132 65 FR 57057, Sept. 20, 2000 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the

  14. Section 41.77 - Decisions and other actions by the Board

    37 C.F.R. § 41.77   Cited 16 times   3 Legal Analyses

    (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent

  15. Section 41.79 - Rehearing

    37 C.F.R. § 41.79   Cited 5 times

    (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of: (1) The original decision of the Board under § 41.77(a) , (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2) , (3) The expiration of the time for the owner to take action under § 41.77(b)(2) , or (4) The new decision of the Board under § 41.77(f) . (b) (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked

  16. Section 41.81 - Action following decision

    37 C.F.R. § 41.81   Cited 2 times

    The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board. 37 C.F.R. §41.81

  17. Section 90.1 - Scope

    37 C.F.R. § 90.1   Cited 2 times

    The provisions herein govern judicial review for Patent Trial and Appeal Board decisions under chapter 13 of title 35, United States Code. Judicial review of decisions arising out of inter partes reexamination proceedings that are requested under 35 U.S.C. 311 , and where available, judicial review of decisions arising out of interferences declared pursuant to 35 U.S.C. 135 continue to be governed by the pertinent regulations in effect on July 1, 2012. 37 C.F.R. §90.1