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Ex Parte Fredholm

13202110 (P.T.A.B. Aug. 18, 2016)
Ex Parte Fredholm

17 Cited authorities

  1. Hewlett-Packard Co. v. Bausch Lomb Inc.

    909 F.2d 1464 (Fed. Cir. 1990)   Cited 318 times   7 Legal Analyses
    Holding § 271(c) codified common law doctrine prohibiting sale of "component" that "had no other use except with claimed product or process"

  2. In re Schreiber

    128 F.3d 1473 (Fed. Cir. 1997)   Cited 150 times   2 Legal Analyses
    Holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency

  3. In re Fulton

    391 F.3d 1195 (Fed. Cir. 2004)   Cited 84 times   8 Legal Analyses
    Holding that "a particular combination" need not "be the preferred, or the most desirable, combination described in the prior art in order to provide motivation"

  4. In re Gurley

    27 F.3d 551 (Fed. Cir. 1994)   Cited 102 times   3 Legal Analyses
    Upholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."

  5. Application of Moore

    439 F.2d 1232 (C.C.P.A. 1971)   Cited 46 times
    Noting that the question is whether the scope of enablement conveyed by the disclosure to a person of ordinary skill in the art is commensurate with the scope of protection taught by the claims

  6. Application of Swinehart

    439 F.2d 210 (C.C.P.A. 1971)   Cited 42 times   2 Legal Analyses
    Holding that the term "transparent" was definite because the disclosure, which showed that a substantial amount of infrared radiation was always transmitted even though the precise degree of transparency varied depending on certain factors, was sufficiently clear

  7. In re Hallman

    655 F.2d 212 (C.C.P.A. 1981)   Cited 1 times

    Appeal No. 81-524. July 16, 1981. Harry V. Strampel, Wallenstein, Spangenberg, Hattis Strampel, Sidney W. Russell, Arlington, Va., for appellant. Joseph F. Nakamura, Fred W. Sherling, Washington, D.C., for Board of Appeals. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges. MARKEY, Chief Judge. Appeal from the decision of the Patent and Trademark Office Board of Appeals ("board") sustaining the Examiner's rejection

  8. Roberts v. Ryer

    91 U.S. 150 (1875)   Cited 98 times
    In Roberts v. Ryer, 91 U.S. 150, 151, 23 L. Ed. 267, the Supreme Court said it is no new invention to use an old machine for a new purpose.

  9. Application of Gardiner

    171 F.2d 313 (C.C.P.A. 1948)   Cited 15 times

    Patent Appeal No. 5492. December 7, 1948. Appeal from the Board of Appeals of the United States Patent Office, Serial No. 527,224. Proceeding in the matter of the application of Duncan B. Gardiner for a patent. From a decision of the Board of Appeals affirming that of the primary examiner rejecting claims 15 to 19, inclusive, the applicant appeals. Affirmed. Ralph L. Tweedale, of Detroit, Mich. (N. Douglas Parker, Jr., of Washington, D.C., of counsel), for appellant. W.W. Cochran, of Washington,

  10. Application of Michlin

    45 C.C.P.A. 1028 (C.C.P.A. 1958)   Cited 6 times

    Patent Appeal No. 6373. June 24, 1958. Hyman A. Michlin, pro se. Clarence W. Moore, Washington, D.C. (David Kreider, Washington, D.C., of counsel), for the Commissioner of Patents. Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, and RICH, Judges. WORLEY, Judge. This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the final rejection by the Primary Examiner of claims 94, 95, and 97 to 100, inclusive, of appellant's application for a patent on

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,409 times   1059 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 6,159 times   489 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 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,530 times   2291 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."

  14. 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"

  15. 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

  16. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing