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Ex Parte 7937081 et al

95001899 (P.T.A.B. Apr. 25, 2014)
Ex Parte 7937081 et al

32 Cited authorities

  1. Spansion v. International Trade Com'n

    629 F.3d 1331 (Fed. Cir. 2011)   Cited 68 times   2 Legal Analyses
    Finding that the patentee's selection of fifty-two representative cases was not “improper burden shifting,” but rather that the defendant “simply failed to rebut the substantial evidence set forth” by the patentee

  2. Monsanto Co. v. Mycogen Plant Science

    261 F.3d 1356 (Fed. Cir. 2001)   Cited 36 times   1 Legal Analyses
    Upholding diligence finding where record showed “activity in every month during the critical period”

  3. Brown v. Barbacid

    436 F.3d 1376 (Fed. Cir. 2006)   Cited 27 times   1 Legal Analyses
    Determining that six single-day gaps in a 31–day critical period did not defeat a showing of reasonable diligence

  4. Griffith v. Kanamaru

    816 F.2d 624 (Fed. Cir. 1987)   Cited 14 times   1 Legal Analyses

    Appeal No. 87-1042. April 8, 1987. Eric S. Spector of Jones, Tullar Cooper, P.C., Arlington, Va., argued for appellant. Harold C. Wegner of Wegner Bretschneider, Washington, D.C., argued for appellees. With him on brief was Helmuth A. Wegner, of Wegner Bretschneider, Washington, D.C.; Barry E. Bretschneider and Herbert I. Cantor, of counsel. Appeal from the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office. Before BISSELL, Circuit Judge, NICHOLS, Senior Circuit

  5. Bey v. Kollonitsch

    806 F.2d 1024 (Fed. Cir. 1986)   Cited 11 times
    Requiring “reasonable diligence during the continuous ... critical period”

  6. Rey-Bellet v. Engelhardt

    493 F.2d 1380 (C.C.P.A. 1974)   Cited 17 times   5 Legal Analyses
    Finding that “a shortage of monkeys and a limited ability to house them” justified a three-month delay in testing

  7. Gould v. Schawlow

    363 F.2d 908 (C.C.P.A. 1966)   Cited 23 times   1 Legal Analyses
    Holding that a lapse in activity of “nearly two months” defeated a claim of diligence

  8. Naber v. Cricchi

    567 F.2d 382 (C.C.P.A. 1978)   Cited 8 times
    Explaining that evidence must show "specific acts at specific times directed at reduction to practice"

  9. Reed v. Tornqvist

    436 F.2d 501 (C.C.P.A. 1971)   Cited 6 times
    Concluding it is not unreasonable for inventor to delay completing a patent application until after returning from a three week vacation in Sweden, extended by illness of inventor's father

  10. Rines v. Morgan

    250 F.2d 365 (C.C.P.A. 1957)   Cited 14 times

    Patent Appeals No. 6304. December 13, 1957. Robert H. Rines, Boston, Mass. (David Rines, Boston, Mass., of counsel), for appellant. Donald J. Simpson, Chicago, Ill. (Charles F. Meroni, Carlton Hill, and Hill, Sherman, Meroni, Gross Simpson, Chicago, Ill., of counsel), for appellee. Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH, and JACKSON (retired), Judges. O'CONNELL, Judge. This is an appeal from the decision of the Board of Patent Interferences of the United States Patent Office awarding

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

    35 U.S.C. § 103   Cited 6,172 times   492 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 6,033 times   1028 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 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"

  14. Section 1.131 - Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art

    37 C.F.R. § 1.131   Cited 118 times   17 Legal Analyses
    Allowing inventors to contest rejection by submitting an affidavit "to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based"

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

    37 C.F.R. § 1.132   Cited 104 times   14 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

  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 1.947 - Comments by third party requester to patent owner's response in inter partes reexamination

    37 C.F.R. § 1.947   Cited 4 times

    Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945 , a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner's response. These comments shall be limited to issues raised by the Office action or the patent owner's response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester,

  19. Section 1.951 - Options after Office action closing prosecution in inter partes reexamination

    37 C.F.R. § 1.951   Cited 4 times

    (a) After an Office action closing prosecution in an inter partes reexamination, the patent owner may once file comments limited to the issues raised in the Office action closing prosecution. The comments can include a proposed amendment to the claims, which amendment will be subject to the criteria of § 1.116 as to whether or not it shall be admitted. The comments must be filed within the time set for response in the Office action closing prosecution. (b) When the patent owner does file comments

  20. Section 41.67 - Appellant's brief

    37 C.F.R. § 41.67   Cited 2 times

    (a) (1) Appellant(s) may once, within time limits for filing set forth in § 41.66 , file a brief and serve the brief on all other parties to the proceeding in accordance with § 1.903 of this title. (2) The brief must be signed by the appellant, or the appellant's duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 41.20(b)(2) . (b) An appellant's appeal shall stand dismissed upon failure of that appellant to file an appellant's brief, accompanied by the requisite

  21. 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

  22. Section 41.68 - Respondent's brief

    37 C.F.R. § 41.68

    (a) (1) Respondent(s) in an appeal may once, within the time limit for filing set forth in § 41.66 , file a respondent brief and serve the brief on all parties in accordance with § 1.903 of this title. (2) The brief must be signed by the party, or the party's duly authorized attorney or agent, and must be accompanied by the requisite fee set forth in § 41.20(b)(2) . (3) The respondent brief shall be limited to issues raised in the appellant brief to which the respondent brief is directed. (4) A requester's

  23. Section 41.71 - Rebuttal brief

    37 C.F.R. § 41.71

    (a) Within one month of the examiner's answer, any appellant may once file a rebuttal brief. (b) (1) The rebuttal brief of the owner may be directed to the examiner's answer and/or any respondent brief. (2) The rebuttal brief of the owner shall not include any new or non-admitted amendment, or an affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments