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Ex Parte Howard et al

13900889 (P.T.A.B. Aug. 29, 2017)
Ex Parte Howard et al

13 Cited authorities

  1. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 614 times   78 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  2. Catalina Market. Intern. v. Coolsavings.com

    289 F.3d 801 (Fed. Cir. 2002)   Cited 660 times   5 Legal Analyses
    Holding that "the claims, specification, and prosecution history of the041 patent demonstrate that the preamble phrase `located at predesignated sites such as consumer stores' is not a limitation of Claim 1," for "the applicant did not rely on this phrase to define its invention nor is the phrase essential to understand limitations or terms in the claim body"

  3. In re Packard

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

  4. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  5. 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

  6. In re Baird

    16 F.3d 380 (Fed. Cir. 1994)   Cited 27 times
    Holding that obviousness had not been shown based on a single reference because the PTO had not demonstrated motivation to select claimed species from prior genus of millions of compounds

  7. Application of Burckel

    592 F.2d 1175 (C.C.P.A. 1979)   Cited 14 times   1 Legal Analyses

    Appeal No. 78-616. March 1, 1979. C. Wayne Stephens, Wilmington, Del., for appellant; Hoge T. Sutherland, Los Angeles, Cal., of counsel. Joseph F. Nakamura, Washington, D.C., for Commissioner of Patents; Gerald H. Bjorge, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. RICH, Judge. This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming

  8. Application of Leshin

    277 F.2d 197 (C.C.P.A. 1960)

    Patent Appeal No. 6554. April 6, 1960. Morrison, Kennedy Campbell, Luther E. Morrison, New York City, for appellant. Clarence W. Moore, Washington, D.C. (Raymond E. Martin, Washington, D.C., of counsel), for Commissioner of Patents. Before WORLEY, Chief Judge, RICH, MARTIN and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK. United States Senior Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'Connell, pursuant to provisions of Section 294(d), Title 28

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,399 times   1056 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 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,154 times   487 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."

  11. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 187 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)