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Ex Parte Engel et al

11865593 (P.T.A.B. May. 10, 2018)
Ex Parte Engel et al

21 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,374 times   507 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. Mayo Collaborative Servs. v. Prometheus Labs., Inc.

    566 U.S. 66 (2012)   Cited 774 times   145 Legal Analyses
    Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

  3. Bilski v. Kappos

    561 U.S. 593 (2010)   Cited 807 times   158 Legal Analyses
    Holding claims directed to hedging risk ineligible

  4. Williamson v. Citrix Online, LLC

    792 F.3d 1339 (Fed. Cir. 2015)   Cited 614 times   28 Legal Analyses
    Holding that a means-plus-function term is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim"

  5. Gottschalk v. Benson

    409 U.S. 63 (1972)   Cited 498 times   59 Legal Analyses
    Holding claim involving mathematical formula invalid under § 101 that did not preempt a mathematical formula

  6. McRo, Inc. v. Bandai Namco Games Am. Inc.

    837 F.3d 1299 (Fed. Cir. 2016)   Cited 365 times   63 Legal Analyses
    Holding that using "unconventional rules that relate to sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea"

  7. Internet Patents Corp. v. Active Network, Inc.

    790 F.3d 1343 (Fed. Cir. 2015)   Cited 362 times   15 Legal Analyses
    Holding that the dependent claims did not salvage the corresponding independent claims from a finding of ineligibility where they did not add an inventive concept

  8. Function Media, L.L.C. v. Google Inc.

    708 F.3d 1310 (Fed. Cir. 2013)   Cited 100 times
    Holding that a specification's mere disclosure of "a computer program that transmits" is not structure as a matter of law because it is merely a non-limiting "abstraction that simply describes the function"

  9. Advanced Ground Info. Sys., Inc. v. Life360, Inc.

    830 F.3d 1341 (Fed. Cir. 2016)   Cited 45 times   4 Legal Analyses
    Finding "symbol generator" analogous to "means for generating symbols" on similar grounds

  10. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,287 times   1030 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 6,063 times   460 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,944 times   960 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,418 times   2199 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."

  15. Section 132 - Notice of rejection; reexamination

    35 U.S.C. § 132   Cited 308 times   47 Legal Analyses
    Prohibiting addition of "new matter"

  16. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 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"

  17. 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

  18. Section 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 15 times   28 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)