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Ex Parte Chapaneri et al

13593690 (P.T.A.B. Mar. 11, 2016)
Ex Parte Chapaneri et al

12 Cited authorities

  1. Corning Glass Works v. Sumitomo Elec. U.S.A

    868 F.2d 1251 (Fed. Cir. 1989)   Cited 388 times
    Holding that the phrase "[a]n optical waveguide" in the preamble of the claim language was meant to limit claim scope to "optical waveguides" rather than all optical fibers because the "specification [made it] clear that the inventors were working on the particular problem of an . . . optical communication system not on general improvements in conventional optical fibers"

  2. Perkin-Elmer Corp. v. Computervision Corp.

    732 F.2d 888 (Fed. Cir. 1984)   Cited 369 times   1 Legal Analyses
    Holding that when "a court does not discuss certain propositions," that "does not make the decision inadequate or suggest the court failed to understand them"

  3. 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

  4. Verizon Services Corp. v. Cox Fibernet Virginia, Inc.

    602 F.3d 1325 (Fed. Cir. 2010)   Cited 78 times   1 Legal Analyses
    Holding that a "district court did not abuse its discretion in limiting inventor testimony to factual testimony that did not require expert opinion" because the witnesses "had not previously provided expert reports or been qualified as ... expert"

  5. In re Montgomery

    677 F.3d 1375 (Fed. Cir. 2012)   Cited 37 times   5 Legal Analyses
    Holding that "[c]laim construction is a question of law"

  6. Gerber Garment Technology v. Lectra Systems

    916 F.2d 683 (Fed. Cir. 1990)   Cited 55 times   4 Legal Analyses
    Approving of the description of the purpose of § 121 set forth in concurring opinion in Studiengesellschaft

  7. In re Stencel

    828 F.2d 751 (Fed. Cir. 1987)   Cited 33 times
    Noting that "such [non-limiting] statements often, although not necessarily, appear in the claim's preamble"

  8. In re Pearson

    494 F.2d 1399 (C.C.P.A. 1974)   Cited 28 times
    Affirming § 103 rejection when § 102 rejection would also have been appropriate

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

    35 U.S.C. § 103   Cited 6,120 times   473 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."

  10. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,983 times   993 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  11. 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"

  12. 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