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Ex Parte Andrews

12842272 (P.T.A.B. Feb. 23, 2017)
Ex Parte Andrews

15 Cited authorities

  1. Halliburton Energy v. M-I LLC

    514 F.3d 1244 (Fed. Cir. 2008)   Cited 456 times   7 Legal Analyses
    Holding that a claim is "indefinite if a [claim] term does not have proper antecedent basis"

  2. Superguide Corp. v. Directv Enterprises

    358 F.3d 870 (Fed. Cir. 2004)   Cited 308 times   12 Legal Analyses
    Holding that a party "waived its right to assert a construction other than 'matches or equals' for the term 'meet'" because it agreed to that construction in its briefs

  3. In re Merck Co., Inc.

    800 F.2d 1091 (Fed. Cir. 1986)   Cited 70 times   2 Legal Analyses
    Holding that a person of skill in the art would have expected amitriptyline to resemble imipramine in the alleviation of depression in humans because of the drugs’ close structural similarity and similar use

  4. In re Jung

    637 F.3d 1356 (Fed. Cir. 2011)   Cited 24 times   4 Legal Analyses
    Holding the prima facie case during patent examination “is merely a procedural device that enables an appropriate shift of the burden of production” from the PTO to the patent applicant

  5. Hyatt v. Dudas

    551 F.3d 1307 (Fed. Cir. 2008)   Cited 9 times   1 Legal Analyses
    Noting that the final judgment rule applies in section 145 cases

  6. In re Berger

    279 F.3d 975 (Fed. Cir. 2002)   Cited 15 times   2 Legal Analyses
    Declining to consider the merits of indefiniteness rejections not contested before the Board

  7. Application of Mindick

    371 F.2d 892 (C.C.P.A. 1967)   Cited 3 times

    Patent Appeal No. 7731. February 9, 1967. Herbert B. Keil, Richard L. Johnston, Chicago, Ill., for appellants. Joseph Schimmel, Washington, D.C., for the Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK. Senior District Judge, Eastern district of Pennsylvania, sitting by designation. ALMOND, Judge. This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 13 and 14 of application

  8. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,409 times   1061 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

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

    35 U.S.C. § 103   Cited 6,160 times   489 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."

  10. 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"

  11. 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

  12. Section 1.104 - Nature of examination

    37 C.F.R. § 1.104   Cited 53 times   9 Legal Analyses
    Providing reasons for patent examiner's rejection of claims, including rejection for prior art "unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person . . ."

  13. 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)

  14. Section 41.41 - Reply brief

    37 C.F.R. § 41.41   Cited 9 times   25 Legal Analyses

    (a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence

  15. Section 41.40 - Tolling of time period to file a reply brief

    37 C.F.R. § 41.40   Cited 2 times

    (a)Timing. Any request to seek review of the primary examiner's failure to designate a rejection as a new ground of rejection in an examiner's answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner's answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection. (b)Petition