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Ex Parte Berstis

08976888 (B.P.A.I. Feb. 10, 2004)
Ex Parte Berstis

6 Cited authorities

  1. Continental Can Co. USA, v. Monsanto Co.

    948 F.2d 1264 (Fed. Cir. 1991)   Cited 335 times   3 Legal Analyses
    Holding that an inherent limitation must be “necessarily present” and cannot be established by “probabilities or possibilities”

  2. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 232 times   3 Legal Analyses
    Holding an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning

  3. Atlas Powder Company v. Ireco Incorporated

    190 F.3d 1342 (Fed. Cir. 1999)   Cited 163 times   4 Legal Analyses
    Holding asserted claims covering air mixed into an explosive composition anticipated by prior art that necessarily also contained air as claimed, even though benefits of the air were not recognized

  4. In re Robertson

    169 F.3d 743 (Fed. Cir. 1999)   Cited 65 times
    Holding that inherent anticipation requires more than mere probability or possibility that the missing descriptive materials are present in the prior art

  5. 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."

  6. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,033 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"