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Ex Parte GOLDENBERG et al

13402480 (P.T.A.B. Feb. 10, 2017)
Ex Parte GOLDENBERG et al

11 Cited authorities

  1. Lockwood v. American Airlines, Inc.

    107 F.3d 1565 (Fed. Cir. 1997)   Cited 304 times   6 Legal Analyses
    Holding that "[e]ach application in the chain must describe the claimed features" and that if "one of the intervening applications does not describe" the subject matter, the later application cannot claim the benefit of the earlier application

  2. Atlas Powder Co. v. E.I. du Pont De Nemours & Co.

    750 F.2d 1569 (Fed. Cir. 1984)   Cited 243 times   6 Legal Analyses
    Finding of enablement is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive

  3. PPG Industries, Inc. v. Guardian Industries Corp.

    75 F.3d 1558 (Fed. Cir. 1996)   Cited 163 times   1 Legal Analyses
    Finding no indefiniteness despite failure to specify which method should be used to measure ultraviolet transmittance because all conventional methods produced “essentially identical results”

  4. Falko-Gunter Falkner v. Inglis

    448 F.3d 1357 (Fed. Cir. 2006)   Cited 89 times   16 Legal Analyses
    Holding that where “accessible literature sources clearly provided” a description of the teachings at issue, the written description requirement does not require their incorporation by reference

  5. Capon v. Eshhar

    418 F.3d 1349 (Fed. Cir. 2005)   Cited 68 times   5 Legal Analyses
    Holding it was error for the Board of Patent Appeals and Interferences to require "recitation in the specification of the nucleotide sequence of claimed DNA, when that sequence is already known in the field"

  6. 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

  7. Pandrol USA, LP v. Airboss Railway Products, Inc.

    424 F.3d 1161 (Fed. Cir. 2005)   Cited 27 times   1 Legal Analyses
    Affirming the district court’s exclusion of an assignor-inventor’s testimony as to the invalidity of his own patent on the ground of assignor estoppel

  8. Application of Marzocchi

    439 F.2d 220 (C.C.P.A. 1971)   Cited 42 times
    Involving the enablement requirement of 35 U.S.C. § 112, first paragraph

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,393 times   1049 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

  10. 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"

  11. 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