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Ex Parte 7896248 et al

95001620 (P.T.A.B. Feb. 27, 2017)
Ex Parte 7896248 et al

37 Cited authorities

  1. Nautilus, Inc. v. Biosig Instruments, Inc.

    572 U.S. 898 (2014)   Cited 1,346 times   91 Legal Analyses
    Holding that claims are not indefinite if, "viewed in light of the specification and prosecution history, [they] inform those skilled in the art about the scope of the invention with reasonable certainty"

  2. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,715 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. Williamson v. Citrix Online, LLC

    792 F.3d 1339 (Fed. Cir. 2015)   Cited 614 times   28 Legal Analyses
    Holding that a means-plus-function term is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim"

  4. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 585 times   76 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  5. Linear Technology Corp. v. Impala Linear

    379 F.3d 1311 (Fed. Cir. 2004)   Cited 279 times   3 Legal Analyses
    Holding that term “circuit” itself in claim term “ ‘circuit’ for ‘monitoring a signal from the output terminal to generate a first feedback signal’ ” connotes structure

  6. Corning Glass Works v. Sumitomo Elec. U.S.A

    868 F.2d 1251 (Fed. Cir. 1989)   Cited 385 times
    Holding that the phrase "[a]n optical waveguide" in the preamble of the claim language was meant to limit claim scope to "optical waveguides" rather than all optical fibers because the "specification [made it] clear that the inventors were working on the particular problem of an . . . optical communication system not on general improvements in conventional optical fibers"

  7. Ormco Corp. v. Align Technology, Inc.

    463 F.3d 1299 (Fed. Cir. 2006)   Cited 201 times   5 Legal Analyses
    Holding that evidence that success was due to prior art features rebutted the presumption

  8. Apex Inc. v. Raritan Computer, Inc.

    325 F.3d 1364 (Fed. Cir. 2003)   Cited 215 times   3 Legal Analyses
    Holding that the claim limitation "interface circuit" was sufficient structure to avoid being a means-plus-function claim limitation because the adjective "interface" further defined the type of circuit claimed

  9. Ma. Inst. of Tech. v. Abacus Soft

    462 F.3d 1344 (Fed. Cir. 2006)   Cited 186 times   4 Legal Analyses
    Holding that "it is appropriate for us to look to dictionary definitions of the terms" where "the specification does not define the term" and "the most that can be said is that the specification is not inconsistent" with the proposed constructions by the parties

  10. Tokai Corp v. Easton Enterprises, Inc.

    632 F.3d 1358 (Fed. Cir. 2011)   Cited 147 times   1 Legal Analyses
    Holding that regional circuit law governs the decision to exclude evidence

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,281 times   1027 Legal Analyses
    Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

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

    35 U.S.C. § 103   Cited 6,059 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."

  13. Section 141 - Appeal to Court of Appeals for the Federal Circuit

    35 U.S.C. § 141   Cited 454 times   90 Legal Analyses
    Imposing no such requirement

  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 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 15 times   28 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 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

  17. 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

  18. Section 1.983 - Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination

    37 C.F.R. § 1.983   Cited 2 times

    (a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied with the decision of the Patent Trial and Appeal Board may, subject to § 41.81 , appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Patent Trial and Appeal Board. (b) The appellant must take the following steps in such an appeal:

  19. 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

  20. Section 1.956 - Patent owner extensions of time in inter partes reexamination

    37 C.F.R. § 1.956   Cited 1 times

    The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition fee set forth in § 1.17(g) . See § 1.304(a) for extensions of time for filing a

  21. Section 41.66 - Time for filing briefs

    37 C.F.R. § 41.66   Cited 1 times

    (a) An appellant's brief must be filed no later than two months from the latest filing date of the last-filed notice of appeal or cross appeal or, if any party to the proceeding is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal. The time for filing an appellant's brief or an amended appellant's brief may not be extended. (b) Once an

  22. Section 41.63 - Amendments and affidavits or other evidence after appeal

    37 C.F.R. § 41.63

    (a) Amendments filed after the date of filing an appeal pursuant to § 41.61 canceling claims may be admitted where such cancellation does not affect the scope of any other pending claim in the proceeding. (b) All other amendments filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by § 41.77(b)(1) . (c) Affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by reopening prosecution