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Ex Parte DEN BOEF et al

14281346 (P.T.A.B. Jun. 15, 2018)
Ex Parte DEN BOEF et al

13 Cited authorities

  1. Markman v. Westview Instruments, Inc.

    517 U.S. 370 (1996)   Cited 5,442 times   66 Legal Analyses
    Holding that claim construction is a matter of law for the court

  2. Nautilus, Inc. v. Biosig Instruments, Inc.

    572 U.S. 898 (2014)   Cited 1,396 times   95 Legal Analyses
    Holding that claims are not indefinite if, "viewed in light of the specification and prosecution history, [they] inform those skilled in the art about the scope of the invention with reasonable certainty"

  3. Halliburton Energy v. M-I LLC

    514 F.3d 1244 (Fed. Cir. 2008)   Cited 452 times   7 Legal Analyses
    Holding that a claim is "indefinite if a [claim] term does not have proper antecedent basis"

  4. Exxon Research and Engineering Co. v. U.S.

    265 F.3d 1371 (Fed. Cir. 2001)   Cited 465 times   6 Legal Analyses
    Holding that a claim limitation that average particle diameter be greater than 5 was not indefinite where no upper limit on particle size was given

  5. In re Morris

    127 F.3d 1048 (Fed. Cir. 1997)   Cited 49 times   7 Legal Analyses
    Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness

  6. McClain v. Ortmayer

    141 U.S. 419 (1891)   Cited 275 times   3 Legal Analyses
    In McClain v. Ortmayer, 141 U.S. 419, 12 S. Ct. 76, 79, 35 L. Ed. 800, the Supreme Court said, as to the claim that a patented article having gone into general use was evidence of utility: "It is not conclusive even of that, much less of its patentable novelty."

  7. In re Zletz

    893 F.2d 319 (Fed. Cir. 1990)   Cited 42 times   3 Legal Analyses
    Holding that claims failing this test during prosecution must be rejected under § 112, ¶ 2

  8. Application of Steele

    305 F.2d 859 (C.C.P.A. 1962)   Cited 2 times

    Patent Appeal No. 6719. July 25, 1962. J. Hart Evans, Louis C. Smith, Jr., New York City, and Paul A. Rose, Washington D.C., for appellants. Clarence W. Moore, Washington, D.C. (Joseph Schimmel, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK. United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'CONNELL, pursuant to provisions

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,366 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

  10. 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."

  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

  13. Section 1.136 - 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)