§

Ex Parte 7963906 et al

95001785 (P.T.A.B. Sep. 28, 2015)
Ex Parte 7963906 et al

24 Cited authorities

  1. 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]”

  2. Regents of the Univ. of Cal. v. Lilly & Co.

    119 F.3d 1559 (Fed. Cir. 1997)   Cited 331 times   17 Legal Analyses
    Holding that written description requires more than a "mere wish or plan for obtaining the claimed chemical invention"

  3. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 392 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  4. In re Cruciferous Sprout Litigation

    301 F.3d 1343 (Fed. Cir. 2002)   Cited 137 times   6 Legal Analyses
    Holding that preamble was limiting in light of arguments made during prosecution "show[ing] a clear reliance by the patentee on the preamble to persuade the Patent Office that the claimed invention is not anticipated by the prior art"

  5. In re GPAC Inc.

    57 F.3d 1573 (Fed. Cir. 1995)   Cited 164 times   2 Legal Analyses
    In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."

  6. In re Omeprazole Patent

    483 F.3d 1364 (Fed. Cir. 2007)   Cited 87 times   3 Legal Analyses
    Stating that an "inequitable conduct claim was not technically moot, because it would have rendered the entire . . . patent unenforceable, rather than just the claims that were held invalid"

  7. J.T. Eaton & Co. v. Atlantic Paste & Glue Co.

    106 F.3d 1563 (Fed. Cir. 1997)   Cited 116 times   1 Legal Analyses
    Holding that the definition of "a term with no previous meaning to those of ordinary skill in the art . . . must be found somewhere in the patent"

  8. MEHL/Biophile Int’l Corp. v. Milgraum

    192 F.3d 1362 (Fed. Cir. 1999)   Cited 107 times   2 Legal Analyses
    Finding anticipation by inherency of a method of hair depilation

  9. In re Baxter Travenol Labs

    952 F.2d 388 (Fed. Cir. 1991)   Cited 94 times   3 Legal Analyses
    Evaluating teaching of prior art at the time of disclosure

  10. In re Abbott Diabetes Care Inc.

    696 F.3d 1142 (Fed. Cir. 2012)   Cited 37 times   2 Legal Analyses
    Holding that the conclusion that the claimed electrochemical sensor could not have external wires was supported by, among other considerations, the fact that "every embodiment disclosed in the specification shows . . . sensor without external cables or wires"

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,278 times   1024 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 6,056 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."

  13. 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"

  14. Section 311 - Inter partes review

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

  15. 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"

  16. 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 116 times   16 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"

  17. 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

  18. 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

  19. 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