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Ex parte Capon et al.

07949327 (B.P.A.I. Sep. 2, 1998)
Ex parte Capon et al.

17 Cited authorities

  1. Regents of the Univ. of Cal. v. Lilly & Co.

    119 F.3d 1559 (Fed. Cir. 1997)   Cited 333 times   17 Legal Analyses
    Holding that written description requires more than a "mere wish or plan for obtaining the claimed chemical invention"

  2. In re O'Farrell

    853 F.2d 894 (Fed. Cir. 1988)   Cited 168 times   9 Legal Analyses
    Finding patent obvious where the prior art provided a "reasonable expectation of success"

  3. Fiers v. Revel

    984 F.2d 1164 (Fed. Cir. 1993)   Cited 74 times   7 Legal Analyses
    Holding a claim to a genus of DNA molecules not supported by written description of a method for obtaining the molecules

  4. In re Gosteli

    872 F.2d 1008 (Fed. Cir. 1989)   Cited 78 times   2 Legal Analyses
    Holding that “[t]he CCPA's later decisions control because that court always sat en banc”

  5. In re Fine

    837 F.2d 1071 (Fed. Cir. 1988)   Cited 67 times   1 Legal Analyses
    Reversing the Board's determination that dependent claims were invalid because "[d]ependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious."

  6. In re Deuel

    51 F.3d 1552 (Fed. Cir. 1995)   Cited 52 times   5 Legal Analyses
    Commenting that scholars have been critical of Deuel, which "overly favored patent applicants in biotech by adopting an overly lax nonobviousness standard." ( citing Anita Varma David Abraham, DNA Is Different: Legal Obviousness and the Balance Between Biotech Inventors and the Market, 9 Harv. J.L. Tech. 53 (1996))

  7. In re Bell

    991 F.2d 781 (Fed. Cir. 1993)   Cited 32 times   1 Legal Analyses

    No. 92-1375. April 20, 1993. Robert P. Blackburn, Chiron Corp., Emeryville, CA, argued for appellant. With him on the brief were Debra A. Shetka and Thomas E. Ciotti, Morrison Foerster, Palo Alto, CA, and Donald S. Chisum, Morrison Foerster, Seattle, WA. Teddy S. Gron, Associate Sol., Office of the Sol., Arlington, VA, argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Of counsel were John W. Dewhirst, Lee E. Barrett, Richard E. Schafer and Albin F. Drost. Appeal from the Patent

  8. In re Eli Lilly & Co.

    902 F.2d 943 (Fed. Cir. 1990)   Cited 15 times
    Holding that an unexpected result in increasing the efficiency of feed utilization in ruminant animals was not sufficient when it was expected that the combination would increase weight gain in animals, as the prior art had invited experimentation in this area

  9. In re Hoch

    428 F.2d 1341 (C.C.P.A. 1970)   Cited 20 times

    Patent Appeal No. 8323. July 30, 1970. Raymond F. Kramer, Buffalo, N.Y., Donald C. Studley, William J. Schramm, Niagara Falls, N.Y., attorneys of record, for appellant. Joseph Schimmel, Washington, D.C., for the Commissioner of Patents. Jack E. Armore, Washington, D.C., of counsel. Before RICH, ALMOND, BALDWIN and LANE, Judges, and FISHER, Chief Judge, Eastern District of Texas, sitting by designation. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the

  10. Application of Scheiber

    587 F.2d 59 (C.C.P.A. 1978)   Cited 7 times
    Construing the section 112, ¶ 1 requirements of section 120

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,363 times   1046 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 6,130 times   479 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,997 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. Section 120 - Benefit of earlier filing date in the United States

    35 U.S.C. § 120   Cited 600 times   109 Legal Analyses
    Granting an earlier priority date to later applications for inventions that were disclosed in a previous application

  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 1.132 - Affidavits or declarations traversing rejections or objections

    37 C.F.R. § 1.132   Cited 104 times   14 Legal Analyses

    When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. 37 C.F.R. §1.132 65 FR 57057 , Sept. 20, 2000 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the

  17. Section 1.192-1.196 - Reserved

    37 C.F.R. § 1.192-1.196   Cited 20 times   4 Legal Analyses
    Requiring "a statement . . . that the claims of the group do not stand or fall together," and an explanation "why the claims of the group are believed to be separately patentable"