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Ex Parte Desbrandes et al

11569357 (P.T.A.B. Sep. 26, 2016)
Ex Parte Desbrandes et al

16 Cited authorities

  1. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 345 times   43 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  2. Brooktree Corp. v. Advanced Micro Devices

    977 F.2d 1555 (Fed. Cir. 1993)   Cited 194 times   4 Legal Analyses
    Holding that even where the infringer had not yet begun to actually sell the infringing product, "losses incurred upon announcement by [the infringer] of the infringing activity may be included [in lost profits damages], when the losses are found to be reasonably related to the infringing activity"

  3. Chiron Corp. v. Genentech, Inc.

    363 F.3d 1247 (Fed. Cir. 2004)   Cited 98 times   6 Legal Analyses
    Holding that an earlier application must enable later claims that claim priority to the earlier filing date

  4. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 91 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  5. In re Brana

    51 F.3d 1560 (Fed. Cir. 1995)   Cited 43 times   6 Legal Analyses
    Holding that patent applicants had established the utility of claimed therapeutic compounds by presenting in vitro test results and evidence of structural similarity to therapeutically useful compounds

  6. In re Cortright

    165 F.3d 1353 (Fed. Cir. 1999)   Cited 35 times   1 Legal Analyses
    Noting that the patent's written description must "illuminate a credible utility" to meet the enablement requirement

  7. In re Swartz

    232 F.3d 862 (Fed. Cir. 2000)   Cited 12 times
    Discussing the "substantial evidence" that claimed LENR results are "irreproducible" and that "those skilled in the art would 'reasonably doubt' the asserted utility and operability" of LENR technology

  8. In re Gunn

    537 F.2d 1123 (C.C.P.A. 1976)   Cited 5 times   1 Legal Analyses

    Patent Appeal No. 76-564. July 15, 1976. Jim Zegeer, Washington, D.C. atty. of record, for appellant. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, R. V. Lupo, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. MILLER, Judge. This appeal is from the decision of the Patent and Trademark Office Board of Appeals affirming the rejection of claims 4, 6-10, and 12, all

  9. Application of Budnick

    537 F.2d 535 (C.C.P.A. 1976)   Cited 3 times

    Patent Appeal No. 76-517. July 15, 1976. Alvin Guttag, William T. Bullinger, Watson T. Scott, Washington, D.C., attys. of record, for appellant. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Gerald H. Bjorge, Washington, D.C., of counsel. Appeal from the Board of Appeals of the United States Patent Office. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. MILLER, Judge. This appeal is from the decision of the Patent and Trademark Office Board of Appeals

  10. Application of Harwood

    390 F.2d 985 (C.C.P.A. 1968)   Cited 6 times

    Patent Appeal No. 7830. March 7, 1968. Harvey W. Edelblute, New York City, (George R. Jones, Beale and Jones, Washington, D.C., George P. Maskas, New York City, of counsel), for appellant. Joseph Schimmel, Washington, D.C. (Raymond E. Martin, Washington, D.C., of counsel), for Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and KIRKPATRICK, Judges. Senior District Judge, Eastern District of Pennsylvania, sitting by designation. WORLEY, Chief Judge. This appeal is from

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,409 times   1060 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 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,530 times   2294 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."

  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 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

  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)

  16. Section 1.68 - Declaration in lieu of oath

    37 C.F.R. § 1.68   Cited 6 times

    Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001 ) and may jeopardize the validity of the application or any patent issuing thereon