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Ex Parte Chang et al

12545812 (P.T.A.B. Sep. 15, 2017)
Ex Parte Chang et al

18 Cited authorities

  1. Smithkline Beecham Corp. v. Apotex Corp.

    439 F.3d 1312 (Fed. Cir. 2006)   Cited 282 times   3 Legal Analyses
    Holding arguments insufficiently developed in briefing are forfeited

  2. Richardson-Vicks Inc. v. Upjohn Company

    122 F.3d 1476 (Fed. Cir. 1997)   Cited 194 times   3 Legal Analyses
    Holding that “we must consider all of the evidence under the Graham factors before reaching our decision”

  3. University, Rochester v. G.D. Searle Co.

    358 F.3d 916 (Fed. Cir. 2004)   Cited 140 times   7 Legal Analyses
    Holding the patent invalid because "Rochester did not present any evidence that the ordinarily skilled artisan would be able to identify any compound based on [the specification's] vague functional description"

  4. In re Huai-Hung Kao

    639 F.3d 1057 (Fed. Cir. 2011)   Cited 88 times   16 Legal Analyses
    Holding that a "food effect" was obvious because the effect was an inherent property of the composition

  5. Otsuka Pharm. Co. v. Sandoz, Inc.

    678 F.3d 1280 (Fed. Cir. 2012)   Cited 83 times   16 Legal Analyses
    Holding that issues raised only in a footnote may be deemed waived

  6. Leapfrog v. Fisher-Price

    485 F.3d 1157 (Fed. Cir. 2007)   Cited 90 times   5 Legal Analyses
    Holding that the objective considerations of nonobviousness presented, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid

  7. In re Soni

    54 F.3d 746 (Fed. Cir. 1995)   Cited 92 times   2 Legal Analyses
    Finding "substantially improved results" to overcome obviousness when the 50-fold improvement in tensile strength was much greater than would have been predicted

  8. Asyst Technologies, Inc. v. Emtrak, Inc.

    544 F.3d 1310 (Fed. Cir. 2008)   Cited 44 times   1 Legal Analyses
    Affirming judgment as a matter of law of obviousness

  9. Hyatt v. Dudas

    492 F.3d 1365 (Fed. Cir. 2007)   Cited 22 times   3 Legal Analyses
    Upholding the patent examiner's initial rejection in which the examiner found failure to satisfy the written description requirement because “the written description did not support the particular claimed combination of elements”— i.e., “while each element may be individually described in the specification, the deficiency was the lack of adequate description of their combination ”

  10. In re Harris

    409 F.3d 1339 (Fed. Cir. 2005)   Cited 14 times
    Holding that unexpected results require a difference in kind, not merely degree (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996))

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,419 times   1068 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 6,172 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."

  13. 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"

  14. 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

  15. 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)