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Ex Parte Kuo et al

12169142 - (D) (P.T.A.B. Sep. 25, 2013)
Ex Parte Kuo et al

8 Cited authorities

  1. 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"

  2. Bicon, Inc. v. Straumann Co.

    441 F.3d 945 (Fed. Cir. 2006)   Cited 336 times   3 Legal Analyses
    Holding a patent claim construction that reads limitations out of a claim is "contrary to the principle that claim language should not [be] treated as meaningless"

  3. Corning Glass Works v. Sumitomo Elec. U.S.A

    868 F.2d 1251 (Fed. Cir. 1989)   Cited 389 times
    Holding that the phrase "[a]n optical waveguide" in the preamble of the claim language was meant to limit claim scope to "optical waveguides" rather than all optical fibers because the "specification [made it] clear that the inventors were working on the particular problem of an . . . optical communication system not on general improvements in conventional optical fibers"

  4. In re Schreiber

    128 F.3d 1473 (Fed. Cir. 1997)   Cited 150 times   2 Legal Analyses
    Holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency

  5. Stumbo v. Eastman Outdoors

    508 F.3d 1358 (Fed. Cir. 2007)   Cited 63 times   1 Legal Analyses
    Holding that an expert's statement "in conclusory fashion" that two methods were not "significantly different" is the type of "cursory conclusion" that "will not withstand summary judgment."

  6. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,016 times   1014 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  7. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 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"

  8. 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