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Ex Parte Kienzle et al

12544649 (P.T.A.B. Sep. 27, 2016)
Ex Parte Kienzle et al

12 Cited authorities

  1. Williamson v. Citrix Online, LLC

    792 F.3d 1339 (Fed. Cir. 2015)   Cited 614 times   28 Legal Analyses
    Holding that a means-plus-function term is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim"

  2. Atmel Corp. v. Info. Storage Devices, Inc.

    198 F.3d 1374 (Fed. Cir. 1999)   Cited 297 times   5 Legal Analyses
    Holding that the determination of whether sufficient structure is disclosed in the specification to support a means-plus-function limitation is based on the understanding of one skilled in the art

  3. Biomedino v. Waters

    490 F.3d 946 (Fed. Cir. 2007)   Cited 198 times   2 Legal Analyses
    Holding that "a bare statement that known techniques or methods can be used does not disclose structure"

  4. In re Donaldson Co., Inc.

    16 F.3d 1189 (Fed. Cir. 1994)   Cited 206 times   6 Legal Analyses
    Holding that 35 U.S.C. § 112 ¶ 6, which limits means-plus-function claims to the structures described in the specification and their equivalents, "applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court"

  5. In re Keller

    642 F.2d 413 (C.C.P.A. 1981)   Cited 43 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"

  6. Application of Jolly

    172 F.2d 566 (C.C.P.A. 1949)   Cited 7 times

    Patent Appeals No. 5484. February 1, 1949. Appeal from Board of Appeals of the United States Patent Office, Serial No. 492,227. Proceeding in the matter of the application of Samuel Edward Jolly for a patent relating to the preparation of sulfurized nitriles. From a decision of the Board of Appeals affirming that of the Primary Examiner rejecting all process claims, applicant appeals. Decision affirmed. Busser Harding, of Philadelphia, Pa. (Frank S. Busser, of Philadelphia, Pa., and Donald A. Gardiner

  7. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,280 times   1025 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

  8. 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."

  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)