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Ex Parte Bena et al

11714935 (B.P.A.I. May. 4, 2012)
Ex Parte Bena et al

14 Cited authorities

  1. Boehringer Ingelheim v. Schering-Plough

    320 F.3d 1339 (Fed. Cir. 2003)   Cited 136 times   2 Legal Analyses
    Holding the court "must draw all reasonable inferences in favor of the nonmoving party . . . disregard all evidence favorable to the moving party that the jury was not required to believe"

  2. 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

  3. In re Fulton

    391 F.3d 1195 (Fed. Cir. 2004)   Cited 84 times   8 Legal Analyses
    Holding that "a particular combination" need not "be the preferred, or the most desirable, combination described in the prior art in order to provide motivation"

  4. In re Gurley

    27 F.3d 551 (Fed. Cir. 1994)   Cited 102 times   3 Legal Analyses
    Upholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."

  5. Para-Ordnance Manufacturing, Inc. v. SGS Importers International, Inc.

    73 F.3d 1085 (Fed. Cir. 1995)   Cited 81 times
    Explaining that "[f]rom the decision of the district court, we can, and do, accept the implicit fact-finding"

  6. 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

  7. In re Stencel

    828 F.2d 751 (Fed. Cir. 1987)   Cited 33 times
    Noting that "such [non-limiting] statements often, although not necessarily, appear in the claim's preamble"

  8. Application of Dunn

    349 F.2d 433 (C.C.P.A. 1965)   Cited 6 times

    Patent Appeal No. 7265. July 22, 1965. Louis C. Smith, Jr., Francis M. Fazio, New York City, Paul A. Rose, Washington, D.C., for appellants. Clarence W. Moore, Washington, D.C. (J.E. Armore, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges. MARTIN, Judge. Appellant Dunn with one Proops obtained a series of five patents for improvements in a classic synthesis of acrylic acid esters obtained by reaction of acetylene

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

    35 U.S.C. § 103   Cited 6,159 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,023 times   1024 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  11. 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"

  12. 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

  13. 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

  14. 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)