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Ex Parte Civil et al

13409920 - (D) (P.T.A.B. Apr. 4, 2019)
Ex Parte Civil et al

23 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,436 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. Bilski v. Kappos

    561 U.S. 593 (2010)   Cited 829 times   160 Legal Analyses
    Holding claims directed to hedging risk ineligible

  3. Ass'n for Molecular Pathology v. Myriad Genetics, Inc.

    569 U.S. 576 (2013)   Cited 461 times   148 Legal Analyses
    Holding that "a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated"

  4. Teleflex, Inc. v. Ficosa North America Corp.

    299 F.3d 1313 (Fed. Cir. 2002)   Cited 1,456 times   7 Legal Analyses
    Holding a patentee may define a claim term by implication, through the term's consistent use throughout the specification

  5. Liebel-Flarsheim Company v. Medrad, Inc.

    358 F.3d 898 (Fed. Cir. 2004)   Cited 1,329 times   6 Legal Analyses
    Holding that claim terms are given the full breadth of their ordinary meaning unless a clear disavowal of scope is stated in the specification

  6. Diamond v. Diehr

    450 U.S. 175 (1981)   Cited 542 times   130 Legal Analyses
    Holding a procedure for molding rubber that included a computer program is within patentable subject matter

  7. Berkheimer v. HP Inc.

    881 F.3d 1360 (Fed. Cir. 2018)   Cited 547 times   47 Legal Analyses
    Holding that claims may be treated as "representative" in a § 101 inquiry if a patentee makes no "meaningful argument for the distinctive significance of any claim limitations not found in the representative claim"

  8. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 614 times   78 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  9. TLI Communications LLC v. AV Automotive, L.L.C.

    823 F.3d 607 (Fed. Cir. 2016)   Cited 421 times   23 Legal Analyses
    Holding that claims directed to a method for recording digital images on a telephone were not directed to an improvement to computer functionality because "they are directed to the use of conventional or generic technology in a nascent but well-known environment" without "describ[ing] a new telephone, a new server, or a new physical combination of the two" or "any technical details for the tangible components"

  10. Parker v. Flook

    437 U.S. 584 (1978)   Cited 371 times   63 Legal Analyses
    Holding narrow mathematical formula unpatentable

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,399 times   1051 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 6,154 times   485 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 3,522 times   2289 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 101 - Executive departments

    5 U.S.C. § 101   Cited 135 times   7 Legal Analyses
    Listing the Department of Commerce as an Executive department

  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)