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Ex Parte Feist et al

12937310 (P.T.A.B. Jan. 29, 2019)
Ex Parte Feist et al

15 Cited authorities

  1. Perricone v. Medicis Pharmaceutical Corp.

    432 F.3d 1368 (Fed. Cir. 2005)   Cited 147 times   2 Legal Analyses
    Holding that a prior-art reference anticipated claims 1-4 and 7, but not claims 8, 9, and 13, because the latter set of claims contained one fewer limitation

  2. Atlas Powder Company v. Ireco Incorporated

    190 F.3d 1342 (Fed. Cir. 1999)   Cited 160 times   4 Legal Analyses
    Holding asserted claims covering air mixed into an explosive composition anticipated by prior art that necessarily also contained air as claimed, even though benefits of the air were not recognized

  3. Alza Corp. v. Mylan Laboratories, Inc.

    464 F.3d 1286 (Fed. Cir. 2006)   Cited 105 times   5 Legal Analyses
    Holding that, to rely on in vitro approximations of in vivo measurements, the proponent must credibly link the in vitro method with the relevant in vivo parameter

  4. Atofina v. Great Lakes Chemical Corp.

    441 F.3d 991 (Fed. Cir. 2006)   Cited 85 times   8 Legal Analyses
    Finding 0.001 to 1.0 percent range did not disclose a D.I to 5.0 percent range

  5. Titanium Metals Corp. of America v. Banner

    778 F.2d 775 (Fed. Cir. 1985)   Cited 130 times   6 Legal Analyses
    Holding that an earlier species disclosure in the prior art defeats any generic claim

  6. In re Peterson

    315 F.3d 1325 (Fed. Cir. 2003)   Cited 67 times   14 Legal Analyses
    Holding that any overlap between a claimed range and one in the prior art is sufficient for a prima facie case of obviousness, even if insufficient to render it unpatentable

  7. In re Vaeck

    947 F.2d 488 (Fed. Cir. 1991)   Cited 75 times   1 Legal Analyses
    Holding the examiner did not err in rejecting as nonenabled claims drawn to all genetically-engineered cyanobacteria expressing a given protein because the claimed 150 genera of cyanobacteria represent a vast, diverse, and poorly understood group; heterologous gene expression in cyanobacteria was "unpredictable"; and the patent's disclosure referred to only a genus

  8. Orthopedic Equipment Co. v. United States

    702 F.2d 1005 (Fed. Cir. 1983)   Cited 82 times
    Addressing obviousness

  9. In re Harris

    409 F.3d 1339 (Fed. Cir. 2005)   Cited 14 times
    Holding that unexpected results require a difference in kind, not merely degree (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996))

  10. Application of Schaumann

    572 F.2d 312 (C.C.P.A. 1978)   Cited 27 times   2 Legal Analyses
    Concluding that the prior art patent provides a description of a set of 7 chemical compositions resulting in HEP “just as surely as if they were identified in the reference by name,” where “claim 1 of the [prior art] patent, read in conjunction with the signification given the expression ‘alkyl radical’ in the specification, embrace[d] a very limited number of compounds closely related to one another in structure”

  11. 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."

  12. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,997 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. 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"

  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