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Ex Parte 7897080 et al

95002170 (P.T.A.B. Mar. 27, 2015)
Ex Parte 7897080 et al

26 Cited authorities

  1. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,724 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"

  2. 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

  3. 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

  4. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 334 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."

  5. 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”

  6. Brown Williamson Tobacco v. Philip Morris

    229 F.3d 1120 (Fed. Cir. 2000)   Cited 132 times   1 Legal Analyses
    Finding commercial success attributed to feature not present in the invention

  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 Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  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 Spada

    911 F.2d 705 (Fed. Cir. 1990)   Cited 58 times   1 Legal Analyses
    Holding that the claims were properly rejected by the PTO because they were anticipated by a prior art reference

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,283 times   1029 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 6,061 times   459 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 311 - Inter partes review

    35 U.S.C. § 311   Cited 397 times   186 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  14. 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"

  15. Section 1.181 - Petition to the Director

    37 C.F.R. § 1.181   Cited 52 times   16 Legal Analyses
    Allowing for petitions invoking the Director's supervisory authority

  16. 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

  17. 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

  18. Section 1.943 - Requirements of responses, written comments, and briefs in inter partes reexamination

    37 C.F.R. § 1.943

    (a) The form of responses, written comments, briefs, appendices, and other papers must be in accordance with the requirements of § 1.52 . (b) Responses by the patent owner and written comments by the third party requester shall not exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as prior art references. (c) Appellant's briefs filed by the patent owner and the third party requester shall not exceed thirty pages or 14,000 words in length, excluding

  19. Section 41.73 - Oral hearing

    37 C.F.R. § 41.73

    (a) An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing. (b) If an appellant or a respondent desires an oral hearing, he or she must file, as a separate paper captioned "REQUEST FOR ORAL HEARING," a written request