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Ex Parte Kelly et al

11915515 (P.T.A.B. Feb. 26, 2016)
Ex Parte Kelly et al

14 Cited authorities

  1. Hewlett-Packard Co. v. Bausch Lomb Inc.

    909 F.2d 1464 (Fed. Cir. 1990)   Cited 316 times   7 Legal Analyses
    Holding § 271(c) codified common law doctrine prohibiting sale of "component" that "had no other use except with claimed product or process"

  2. King Pharmaceuticals, Inc. v. Eon Labs, Inc.

    616 F.3d 1267 (Fed. Cir. 2010)   Cited 88 times   6 Legal Analyses
    Holding that a claimed step of informing someone about an inherent property of a method was printed matter

  3. In re Distefano

    808 F.3d 845 (Fed. Cir. 2015)   Cited 16 times   4 Legal Analyses
    Holding that the relevant limitation was not printed matter because although selected web assets can and likely do communicate some information, the content of the information is not claimed

  4. In re Ngai

    367 F.3d 1336 (Fed. Cir. 2004)   Cited 15 times   1 Legal Analyses
    Noting that allowing claims where the printed matter was the only novel contribution would allow "anyone [to] continue patenting a product indefinitely provided that they add a new instruction sheet to the product"

  5. In re Graff

    585 F. App'x 1012 (Fed. Cir. 2014)

    2014-1288 12-08-2014 IN RE RICHARD A. GRAFF MICHAEL K. MUTTER, Birch, Stewart, Kolasch & Birch, of Falls Church, Virginia, argued for appellant. With him on the brief was D. RICHARD ANDERSON. Of counsel on the brief was PETER K. TRYNA, Peter K. Trzyna Law Office P.C., of Chicago, Illinois. JOSEPH MATEL, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were NATHAN K. KELLEY, Solicitor, THOMAS W. KRAUSE, Deputy Solicitor

  6. In re Gulack

    703 F.2d 1381 (Fed. Cir. 1983)   Cited 31 times   1 Legal Analyses
    Holding that even though the claim included printed matter, the printed matter was still entitled to patentable weight because there was a functional relationship between the printed matter and its underlying substrate

  7. In re Lowry

    32 F.3d 1579 (Fed. Cir. 1994)   Cited 17 times
    Holding that printed matter doctrine did not apply to sequences of bits stored in memory because the claims dictated how application programs manage information, not the information content of the memory

  8. In re Jie Xiao

    462 F. App'x 947 (Fed. Cir. 2011)

    Serial No. 11/161,741 2011-1195 10-12-2011 IN RE JIE XIAO JIE XIAO, of Holbrook, New York, pro se. RAYMOND T. CHEN, Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, for appellee. With him on the brief were LYNNE E. PETTIGREW and SCOTT C. WEIDENFELLER. LOURIE NOTE: This disposition is nonprecedential. Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences JIE XIAO, of Holbrook, New York, pro se. RAYMOND T. CHEN, Solicitor

  9. Application of Bernhart

    417 F.2d 1395 (C.C.P.A. 1969)   Cited 38 times   1 Legal Analyses
    Discussing patentability of a programmed computer

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

    35 U.S.C. § 103   Cited 6,056 times   449 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 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"

  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 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  14. 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)