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Ex Parte Hlavka et al

10622207 (B.P.A.I. May. 24, 2012)
Ex Parte Hlavka et al

12 Cited authorities

  1. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 340 times   43 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  2. Invitrogen Corp. v. Clontech Laboratories

    429 F.3d 1052 (Fed. Cir. 2005)   Cited 205 times   8 Legal Analyses
    Holding that a witness's conclusory assertion that the evidence demonstrated "conception, diligence and reduction to practice" did not carry a party's burden on summary judgment

  3. Lizardtech, Inc. v. Earth Resource Mapping

    424 F.3d 1336 (Fed. Cir. 2005)   Cited 154 times   3 Legal Analyses
    Holding that "[a]fter reading the patent, a person of skill in the art would not understand" the patentee to have invented a generic method where the patent only disclosed one embodiment of it

  4. Chiron Corp. v. Genentech, Inc.

    363 F.3d 1247 (Fed. Cir. 2004)   Cited 95 times   5 Legal Analyses
    Holding that an earlier application must enable later claims that claim priority to the earlier filing date

  5. In re Jung

    637 F.3d 1356 (Fed. Cir. 2011)   Cited 24 times   4 Legal Analyses
    Holding the prima facie case during patent examination “is merely a procedural device that enables an appropriate shift of the burden of production” from the PTO to the patent applicant

  6. 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

  7. Hyatt v. Dudas

    492 F.3d 1365 (Fed. Cir. 2007)   Cited 22 times   3 Legal Analyses
    Upholding the patent examiner's initial rejection in which the examiner found failure to satisfy the written description requirement because “the written description did not support the particular claimed combination of elements”— i.e., “while each element may be individually described in the specification, the deficiency was the lack of adequate description of their combination ”

  8. In re Curtis

    354 F.3d 1347 (Fed. Cir. 2004)   Cited 16 times   1 Legal Analyses
    Holding that an application would not have put persons skilled in the art on notice of the broad scope claimed by the applicant, where there is "`unpredictability in performance of certain species or subcombinations other than those specifically enumerated'" (quoting In re Smythe, 480 F.2d at 1383)

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,362 times   1046 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 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 1.84 - Standards for drawings

    37 C.F.R. § 1.84   Cited 20 times   3 Legal Analyses
    Explaining that exploded views "show the relationship or order of assembly of various parts"

  12. Section 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 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)