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Ex Parte Horton et al

12088149 (P.T.A.B. Feb. 20, 2013)
Ex Parte Horton et al

12 Cited authorities

  1. In re O'Farrell

    853 F.2d 894 (Fed. Cir. 1988)   Cited 163 times   9 Legal Analyses
    Finding patent obvious where the prior art provided a "reasonable expectation of success"

  2. In re Spada

    911 F.2d 705 (Fed. Cir. 1990)   Cited 58 times   1 Legal Analyses
    Holding that the claims were properly rejected by the PTO because they were anticipated by a prior art reference

  3. In re De Blauwe

    736 F.2d 699 (Fed. Cir. 1984)   Cited 49 times   1 Legal Analyses

    Appeal No. 84-513. June 8, 1984. Jeffrey G. Sheldon, Pasadena, Cal., argued for appellants. John F. Pitrelli, Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and John W. Dewhirst, Associate Sol., Washington, D.C. Appeal from the United States Patent and Trademark Office Board of Appeals. Before BENNETT, Circuit Judge, SKELTON, Senior Circuit Judge, and MILLER, Circuit Judge. JACK R. MILLER, Circuit Judge. This appeal is from that part of the decision of the

  4. Application of Wood

    599 F.2d 1032 (C.C.P.A. 1979)   Cited 55 times   2 Legal Analyses
    Finding that reference in the patent's specification to a field of art encompassing the alleged prior art supported a finding that the alleged prior art was within the inventor's field of endeavor.

  5. Application of Payne

    606 F.2d 303 (C.C.P.A. 1979)   Cited 28 times   2 Legal Analyses
    Discussing the presumption of obviousness based on close structural similarity

  6. In re Pearson

    494 F.2d 1399 (C.C.P.A. 1974)   Cited 28 times
    Affirming § 103 rejection when § 102 rejection would also have been appropriate

  7. Application of Greenfield

    571 F.2d 1185 (C.C.P.A. 1978)   Cited 17 times
    Finding evidence of secondary considerations was not commensurate with the scope of the claims where evidence related to only one compound and there was no adequate basis to conclude that other compounds included within the scope of the claims would behave in the same manner

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

    35 U.S.C. § 103   Cited 6,056 times   447 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 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 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"

  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)