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Ex Parte Caldwell et al

12760285 (P.T.A.B. Dec. 19, 2018)
Ex Parte Caldwell et al

18 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,435 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. Enfish, LLC v. Microsoft Corp.

    822 F.3d 1327 (Fed. Cir. 2016)   Cited 739 times   119 Legal Analyses
    Holding that claims to self-referential tables that allowed for more efficient launching and adaptation of databases were not directed to an abstract idea

  3. Content Extraction & Transmission LLC v. Wells Fargo Bank

    776 F.3d 1343 (Fed. Cir. 2014)   Cited 618 times   21 Legal Analyses
    Holding claims directed to the "abstract idea of 1

  4. Diamond v. Chakrabarty

    447 U.S. 303 (1980)   Cited 414 times   86 Legal Analyses
    Holding claims patent-eligible where "the patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility"

  5. Accenture Global Servs. v. Guidewire Software, Inc.

    728 F.3d 1336 (Fed. Cir. 2013)   Cited 236 times   8 Legal Analyses
    Holding that "generating tasks [based on] rules . . . to be completed upon the occurrence of an event" is an abstract idea

  6. Synopsys, Inc. v. Mentor Graphics Corp.

    839 F.3d 1138 (Fed. Cir. 2016)   Cited 181 times   4 Legal Analyses
    Holding that an argument about the absence of complete preemption "misses the mark"

  7. Thales Visionix Inc. v. United States

    850 F.3d 1343 (Fed. Cir. 2017)   Cited 148 times   22 Legal Analyses
    Holding that "claims directed to a new and useful technique for using sensors to more efficiently track an object on a moving platform" were not abstract

  8. Apple, Inc. v. Ameranth, Inc.

    842 F.3d 1229 (Fed. Cir. 2016)   Cited 114 times   10 Legal Analyses
    Holding claimed menu interface abstract because claimant "[did] not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting systems"

  9. 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

  10. SmartGene, Inc. v. Advanced Biological Laboratories, SA

    555 F. App'x 950 (Fed. Cir. 2014)   Cited 22 times   7 Legal Analyses
    Finding ineligible a claim which "does no more than call on a 'computing device,' with basic functionality for comparing stored and input data and rules, to do what doctors do routinely"

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,394 times   1049 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 6,148 times   482 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 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,519 times   2288 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 186 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 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)