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Ex Parte Alpert

15 Cited authorities

  1. Halliburton Energy v. M-I LLC

    514 F.3d 1244 (Fed. Cir. 2008)   Cited 455 times   7 Legal Analyses
    Holding that a claim is "indefinite if a [claim] term does not have proper antecedent basis"

  2. Process Control Corp. v. Hydreclaim Corp.

    190 F.3d 1350 (Fed. Cir. 1999)   Cited 154 times   1 Legal Analyses
    Holding claims inoperable because they violate the principle of conservation of mass

  3. Seattle Box Co. v. Indus. Crating Packing

    731 F.2d 818 (Fed. Cir. 1984)   Cited 235 times   3 Legal Analyses
    Holding that "[a]n original patent cannot be infringed once a reissue patent has issued, for the original patent is surrendered" and "[t]he original claims are dead"

  4. In re Schreiber

    128 F.3d 1473 (Fed. Cir. 1997)   Cited 150 times   2 Legal Analyses
    Holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency

  5. Raytheon Co. v. Roper Corp.

    724 F.2d 951 (Fed. Cir. 1983)   Cited 210 times   2 Legal Analyses
    Holding that the argument that an additional limitation be read into claims 1, 3, and 4 was only correct with respect to claim 1, and thus, only claim 1 was invalid

  6. Automotive Tech. v. BMW of N.A.

    501 F.3d 1274 (Fed. Cir. 2007)   Cited 69 times   5 Legal Analyses
    Finding that because the claim includes "both mechanical and electronic side impact sensors," both must be enabled

  7. In re McDaniel

    293 F.3d 1379 (Fed. Cir. 2002)   Cited 28 times   3 Legal Analyses
    Noting "the Board is free to select a single claim from each group of claims subject to a common ground of rejection as representative of all claims in that group and to decide the appeal of that rejection based solely on the selected representative claim" in the absence of a clear statement asserting separate patentability of the claims

  8. Application of Swinehart

    439 F.2d 210 (C.C.P.A. 1971)   Cited 42 times   2 Legal Analyses
    Holding that the term "transparent" was definite because the disclosure, which showed that a substantial amount of infrared radiation was always transmitted even though the precise degree of transparency varied depending on certain factors, was sufficiently clear

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,389 times   1048 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

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

    35 U.S.C. § 103   Cited 6,144 times   481 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."

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,014 times   1009 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  12. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,511 times   2284 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  13. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 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 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 98 times   30 Legal Analyses

    (a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622

  15. Section 1.136 - [Effective until 1/19/2025] Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 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)