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Ex Parte Banatwala et al

14951689 - (D) (P.T.A.B. Jun. 24, 2019)
Ex Parte Banatwala et al

19 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,449 times   521 Legal Analyses
    Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation

  2. Mayo Collaborative Servs. v. Prometheus Labs., Inc.

    566 U.S. 66 (2012)   Cited 829 times   153 Legal Analyses
    Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

  3. Diamond v. Diehr

    450 U.S. 175 (1981)   Cited 543 times   130 Legal Analyses
    Holding a procedure for molding rubber that included a computer program is within patentable subject matter

  4. DDR Holdings, LLC v. Hotels.com, L.P.

    773 F.3d 1245 (Fed. Cir. 2014)   Cited 532 times   92 Legal Analyses
    Holding claims on maintaining website look-and-feel patent-eligible because claims were "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks"

  5. BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC

    827 F.3d 1341 (Fed. Cir. 2016)   Cited 493 times   56 Legal Analyses
    Holding claims eligible at step two because the claims recited a "technical improvement over prior art ways of filtering ... content" that "improve the performance of the computer system itself"

  6. Ultramercial, Inc. v. Hulu, LLC

    772 F.3d 709 (Fed. Cir. 2014)   Cited 503 times   47 Legal Analyses
    Holding that displaying an advertisement in exchange for access to copyrighted material is an abstract idea

  7. TLI Communications LLC v. AV Automotive, L.L.C.

    823 F.3d 607 (Fed. Cir. 2016)   Cited 426 times   23 Legal Analyses
    Holding that claims directed to a method for recording digital images on a telephone were not directed to an improvement to computer functionality because "they are directed to the use of conventional or generic technology in a nascent but well-known environment" without "describ[ing] a new telephone, a new server, or a new physical combination of the two" or "any technical details for the tangible components"

  8. McRo, Inc. v. Bandai Namco Games Am. Inc.

    837 F.3d 1299 (Fed. Cir. 2016)   Cited 394 times   67 Legal Analyses
    Holding that using "unconventional rules that relate to sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea"

  9. SAP Am., Inc. v. Investpic, LLC

    898 F.3d 1161 (Fed. Cir. 2018)   Cited 270 times   7 Legal Analyses
    Holding that an advance in financial mathematical techniques does not constitute an inventive concept

  10. OIP Technologies, Inc. v. Amazon.com, Inc.

    788 F.3d 1359 (Fed. Cir. 2015)   Cited 274 times   9 Legal Analyses
    Holding that a Section 101 inquiry is a question of law

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

    35 U.S.C. § 103   Cited 6,166 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 6,025 times   1026 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,541 times   2297 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."

  14. 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"

  15. 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

  16. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  17. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well