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Ex Parte 8053404 et al

95001920 (P.T.A.B. Nov. 30, 2016)
Ex Parte 8053404 et al

14 Cited authorities

  1. Spectrum Intl., Inc. v. Sterilite Corp.

    164 F.3d 1372 (Fed. Cir. 1998)   Cited 295 times   1 Legal Analyses
    Noting that "explicit arguments made [by the applicant] during prosecution" are significant and that "by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover"

  2. Dippin' Dots, Inc. v. Mosey

    476 F.3d 1337 (Fed. Cir. 2007)   Cited 147 times   3 Legal Analyses
    Holding that a Walker Process claimant must meet "higher threshold showings of both materiality and intent than are required to show inequitable conduct."

  3. Gillette Co. v. Energizer Holdings, Inc.

    405 F.3d 1367 (Fed. Cir. 2005)   Cited 154 times   2 Legal Analyses
    Holding party to “blatant admission” in argument made to EPO

  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. Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.

    831 F.3d 1350 (Fed. Cir. 2016)   Cited 71 times   10 Legal Analyses
    Holding that a patent specification's listing of components not listed in a Markush group was insufficient to overcome the presumption created by "consisting of" claim language

  6. Norian Corp. v. Stryker Corp.

    363 F.3d 1321 (Fed. Cir. 2004)   Cited 98 times   5 Legal Analyses
    Holding that “while ‘consisting of’ limits the claimed invention, it does not limit aspects unrelated to the invention”

  7. Mannesmann Demag v. Engineered Metal Prod

    793 F.2d 1279 (Fed. Cir. 1986)   Cited 158 times   1 Legal Analyses
    Holding that an overall transitional phrase does not trump later transitional language

  8. Abbott Lab. v. Baxter Pharmaceutical

    334 F.3d 1274 (Fed. Cir. 2003)   Cited 94 times   6 Legal Analyses
    Holding that the customary usage of "effective amount" was an amount sufficient to achieve the claimed effect

  9. Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A. de C.V.

    865 F.3d 1348 (Fed. Cir. 2017)   Cited 17 times   11 Legal Analyses
    Holding the reasonable-expectation-of-success requirement is not satisfied when the skilled artisan would have had no expectation of success

  10. Dow Agrosciences Llc. v. Crompton Corporation, (S.D.Ind. 2004)

    NO. 1:03-CV-00654-SEB-JPG (S.D. Ind. May. 12, 2004)   Cited 2 times

    NO. 1:03-CV-00654-SEB-JPG May 12, 2004 ENTRY ON CLAIM CONSTRUCTION SARAH BARKER, District Judge This matter comes before the Court for the purposes of construing a certain patent term integral to the underlying infringement action. Plaintiff Dow Agrosciences LLC ("Dow") and Defendants Crompton Corporation ("Crompton") and Uniroyal Chemical Company ("Uniroyal") (collectively "Defendants") have presented the Court with proposed constructions for the term "substituted phenyl group" as it is used in

  11. 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."

  12. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,942 times   959 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. 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