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Ex Parte Beale

35 Cited authorities

  1. Warner-Jenkinson Co. v. Hilton Davis Chemical

    520 U.S. 17 (1997)   Cited 1,733 times   32 Legal Analyses
    Holding that "[t]he determination of equivalence should be applied as an objective inquiry on an element-by-element basis"

  2. Festo Corp. v. Shoketsu Kinzoku Kogyokabushiki Co.

    535 U.S. 722 (2002)   Cited 825 times   40 Legal Analyses
    Holding that "[t]he scope of a patent is not limited to its literal terms but instead embraces all equivalents to the claims described," because "[t]he language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty."

  3. MBO Laboratories, Inc. v. Becton, Dickinson & Co.

    474 F.3d 1323 (Fed. Cir. 2007)   Cited 230 times   4 Legal Analyses
    Holding that where the patentee provided a specific meaning for a term in the specification and the prosecution history, that term, which appeared in the claim preamble, was limited to the meaning given it by the patentee

  4. Festo v. Shoketsu Kinzoku Kogyo Kabushiki

    344 F.3d 1359 (Fed. Cir. 2003)   Cited 219 times   8 Legal Analyses
    Holding that resolution of the foreseeability criterion depends on the underlying facts

  5. Texas Instruments v. U.S. Intl. Trade Com'n

    988 F.2d 1165 (Fed. Cir. 1993)   Cited 272 times   1 Legal Analyses
    Holding that " 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim."

  6. Festo C. v. Shoketsu Kinzoku Kogyo Kabushiki

    234 F.3d 558 (Fed. Cir. 2000)   Cited 202 times   12 Legal Analyses
    Holding that prosecution history estoppel applies to voluntary amendments and noting that "[t]here is no reason why prosecution history estoppel should arise if the Patent Office rejects a claim because it believes the claim to be unpatentable, but not arise if the applicant amends a claim because he believes the claim to be unpatentable"

  7. Honeywell Intern v. Hamilton Sundstrand

    370 F.3d 1131 (Fed. Cir. 2004)   Cited 146 times   1 Legal Analyses
    Holding that prosecution history estoppel applies if the scope of the subject matter claimed in a rewritten independent claim has been narrowed to secure the patent

  8. Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc.

    347 F.3d 1314 (Fed. Cir. 2003)   Cited 147 times   2 Legal Analyses
    Recognizing as dictionary definitions of substantially "significantly," "considerably," "largely," and "essentially"

  9. South Corp. v. United States

    690 F.2d 1368 (Fed. Cir. 1982)   Cited 265 times   2 Legal Analyses
    Adopting Court of Claims opinions as binding precedent

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

    731 F.2d 818 (Fed. Cir. 1984)   Cited 236 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"

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,419 times   1068 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 6,172 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."

  13. Section 251 - Reissue of defective patents

    35 U.S.C. § 251   Cited 467 times   73 Legal Analyses
    Describing the reissue of defective patents

  14. Section 141 - Appeal to Court of Appeals for the Federal Circuit

    35 U.S.C. § 141   Cited 460 times   91 Legal Analyses
    Imposing no such requirement

  15. 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"

  16. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 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

  17. 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

  18. 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)

  19. Section 41.52 - Rehearing

    37 C.F.R. § 41.52   Cited 7 times   9 Legal Analyses

    (a) (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by

  20. Section 1.197 - Termination of proceedings

    37 C.F.R. § 1.197   Cited 6 times

    (a) Proceedings on an application are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action except: (1) Where claims stand allowed in an application; or (2) Where the nature of the decision requires further action by the examiner. (b) The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or