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Ex Parte Foo et al

13253853 (P.T.A.B. Oct. 24, 2017)
Ex Parte Foo et al

12 Cited authorities

  1. Pitney Bowes v. Hewlett-Packard Company

    182 F.3d 1298 (Fed. Cir. 1999)   Cited 1,007 times   3 Legal Analyses
    Holding that if, "when read in the context of the entire claim," the preamble "recites limitations of the claim., or . . . is `necessary to give life, meaning, and vitality' to" the claim, the preamble language is properly treated as limiting

  2. Superguide Corp. v. Directv Enterprises

    358 F.3d 870 (Fed. Cir. 2004)   Cited 294 times   12 Legal Analyses
    Holding that a party "waived its right to assert a construction other than 'matches or equals' for the term 'meet'" because it agreed to that construction in its briefs

  3. Corning Glass Works v. Sumitomo Elec. U.S.A

    868 F.2d 1251 (Fed. Cir. 1989)   Cited 385 times
    Holding that the phrase "[a]n optical waveguide" in the preamble of the claim language was meant to limit claim scope to "optical waveguides" rather than all optical fibers because the "specification [made it] clear that the inventors were working on the particular problem of an . . . optical communication system not on general improvements in conventional optical fibers"

  4. Rowe v. Dror

    112 F.3d 473 (Fed. Cir. 1997)   Cited 223 times   3 Legal Analyses
    Finding that "balloon angioplasty catheter" in preamble to claim was structural limitation

  5. Leapfrog v. Fisher-Price

    485 F.3d 1157 (Fed. Cir. 2007)   Cited 90 times   5 Legal Analyses
    Holding that the objective considerations of nonobviousness presented, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid

  6. Marston v. J.C. Penney Company

    353 F.2d 976 (4th Cir. 1965)   Cited 35 times
    In Marston, the court refused to limit a patent's claim by the language of the preamble when so limited the accused article would not infringe. The preamble called for a flexible buoyant filler pad.

  7. In re Rundell

    48 F.2d 958 (C.C.P.A. 1931)   Cited 10 times

    Patent Appeal No. 2710. April 29, 1931. Appeal from the Board of Patent Appeals. Application for patent by Rupert E. Rundell. From a decision rejecting certain claims, the applicant appeals. Affirmed. Sydney I. Prescott, of New York City (George S. Hastings, of New York City, of counsel), for appellant. T.A. Hostetler, of Washington, D.C. (Howard S. Miller, of Washington, D.C., of counsel), for the Commissioner of Patents. Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT

  8. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,061 times   459 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."

  9. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,415 times   2196 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."

  10. 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

  11. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  12. 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)