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Ex parte Cashman

08848477 (B.P.A.I. Sep. 28, 2001)
Ex parte Cashman

16 Cited authorities

  1. Eli Lilly & Co. v. Barr Laboratories, Inc.

    251 F.3d 955 (Fed. Cir. 2001)   Cited 392 times   8 Legal Analyses
    Holding that the best mode does not extend to unclaimed, non-novel subject matter

  2. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  3. In re Woodruff

    919 F.2d 1575 (Fed. Cir. 1990)   Cited 58 times   4 Legal Analyses
    Holding a claimed invention obvious because claimed range (“more than 5% to about 25%” carbon monoxide) abutted range of prior art (“about 1–5%” carbon monoxide)

  4. In re Spada

    911 F.2d 705 (Fed. Cir. 1990)   Cited 58 times   1 Legal Analyses
    Holding that the claims were properly rejected by the PTO because they were anticipated by a prior art reference

  5. In re Berg

    140 F.3d 1428 (Fed. Cir. 1998)   Cited 38 times   3 Legal Analyses
    Affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus

  6. In re Thorpe

    777 F.2d 695 (Fed. Cir. 1985)   Cited 40 times   3 Legal Analyses
    Holding that prior art pertinent only to product is proper ground for rejecting product-by-process claims

  7. In re Braat

    937 F.2d 589 (Fed. Cir. 1991)   Cited 26 times
    Holding that while " better characterization of the relationship between the inventions is as combination/subcombination," the reasoning of Borah is applicable

  8. Application of Best

    562 F.2d 1252 (C.C.P.A. 1977)   Cited 18 times   4 Legal Analyses

    Patent Appeal No. 77-509. October 13, 1977. Richard G. Miller, New York City, attorney of record, for appellants, James C. Arvantes, Arlington, Va., of counsel. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, Gerald H. Bjorge, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, C.J., RICH, BALDWIN and LANE, JJ., and FORD, J., United States Customs Court. MARKEY, Chief Judge. Appeal from the decision of the Patent and Trademark

  9. Application of Pilkington

    411 F.2d 1345 (C.C.P.A. 1969)   Cited 9 times
    Noting that the product itself must be new

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

    35 U.S.C. § 103   Cited 6,174 times   493 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."

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,034 times   1029 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  12. Section 154 - Contents and term of patent; provisional rights

    35 U.S.C. § 154   Cited 784 times   278 Legal Analyses
    Granting twenty years for utility patents

  13. 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

  14. Section 1.321 - Statutory disclaimers, including terminal disclaimers

    37 C.F.R. § 1.321   Cited 75 times   35 Legal Analyses
    Incorporating the language of § 253

  15. Section 1.181 - Petition to the Director

    37 C.F.R. § 1.181   Cited 53 times   18 Legal Analyses
    Allowing for petitions invoking the Director's supervisory authority

  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)