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Ex Parte Houbertz et al

13696966 (P.T.A.B. Dec. 21, 2018)
Ex Parte Houbertz et al

14 Cited authorities

  1. Markman v. Westview Instruments, Inc.

    52 F.3d 967 (Fed. Cir. 1995)   Cited 5,222 times   12 Legal Analyses
    Holding that inventor testimony as to "[t]he subjective intent of the inventor when he used a particular term is of little or no probative weight in determining the scope of a claim (except as documented in the prosecution history)."

  2. Exxon Chemical Patents v. Lubrizol Corp.

    64 F.3d 1553 (Fed. Cir. 1995)   Cited 272 times   3 Legal Analyses
    Holding that the claimed composition exists at the moment that each of the claimed ingredients are present in the amounts specifically claimed

  3. In re Packard

    751 F.3d 1307 (Fed. Cir. 2014)   Cited 37 times   11 Legal Analyses
    Addressing the issues separately

  4. Yorkey v. Diab

    601 F.3d 1279 (Fed. Cir. 2010)   Cited 29 times   4 Legal Analyses
    Holding that the Board is "well within its discretion" to give more or less credibility to expert testimony unless "no reasonable trier of fact could have done so"

  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. In re Zletz

    893 F.2d 319 (Fed. Cir. 1990)   Cited 42 times   3 Legal Analyses
    Holding that claims failing this test during prosecution must be rejected under § 112, ¶ 2

  7. In re Keller

    642 F.2d 413 (C.C.P.A. 1981)   Cited 47 times   1 Legal Analyses
    Stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"

  8. In re Warmerdam

    33 F.3d 1354 (Fed. Cir. 1994)   Cited 20 times
    Holding unpatentable a process for controlling objects to avoid collisions which described “nothing more than the manipulation of basic mathematical constructs, the paradigmatic ‘abstract idea’ ”

  9. 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

  10. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,412 times   1063 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

  11. 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"

  12. 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

  13. Section 1.136 - [Effective until 1/19/2025] 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)

  14. Section 41.41 - Reply brief

    37 C.F.R. § 41.41   Cited 9 times   25 Legal Analyses

    (a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence