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Ex Parte Lacaze et al

13535594 (P.T.A.B. Mar. 19, 2018)
Ex Parte Lacaze et al

14 Cited authorities

  1. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 340 times   43 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  2. Amgen, Inc. v. Chugai Pharmaceutical Co. LTD

    927 F.2d 1200 (Fed. Cir. 1991)   Cited 273 times   11 Legal Analyses
    Holding that the term "at least about" was indefinite because the patent provided no guidance as to where the line should be drawn between the numerical value of the prior art cited in the prosecution history and the close numerical value in the patent

  3. Atlas Powder Co. v. E.I. du Pont De Nemours & Co.

    750 F.2d 1569 (Fed. Cir. 1984)   Cited 242 times   6 Legal Analyses
    Finding of enablement is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive

  4. In re Gurley

    27 F.3d 551 (Fed. Cir. 1994)   Cited 102 times   3 Legal Analyses
    Upholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."

  5. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 91 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  6. In re Swartz

    232 F.3d 862 (Fed. Cir. 2000)   Cited 12 times
    Discussing the "substantial evidence" that claimed LENR results are "irreproducible" and that "those skilled in the art would 'reasonably doubt' the asserted utility and operability" of LENR technology

  7. In re Mlot-Fijalkowski

    676 F.2d 666 (C.C.P.A. 1982)   Cited 4 times

    Appeal No. 81-597. April 15, 1982. Otto R. Krause, Chicago, Ill., for appellant. Joseph F. Nakamura, Sol., and Henry W. Tarring, II, Associate Sol., Washington, D.C., for the Patent and Trademark Office. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges. MARKEY, Chief Judge. This is an appeal from a decision of the Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the examiner's rejection of claims

  8. Application of Ellis

    476 F.2d 1370 (C.C.P.A. 1973)   Cited 8 times

    Patent Appeal No. 8860. April 26, 1973. Francis D. Thomas, Jr., Washington, D.C., attorney of record, for appellant. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents; John W. Dewhirst, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals. Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and WATSON, Judge, United States Customs Court, sitting by designation. BALDWIN, Judge. This appeal is from the decision of the Patent Office Board of Appeals,

  9. Application of Schulze

    346 F.2d 600 (C.C.P.A. 1965)   Cited 9 times

    Patent Appeal No. 7405. June 17, 1965. V. Alexander Scher, George J. Brandt, Jr., New York City, for appellant. Clarence W. Moore, Washington, D.C. (George C. Roeming, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges. WORLEY, Chief Judge. This is an appeal from the decision of the Board of Appeals which affirmed the examiner's rejection of claims 8-11 in appellant's application for a "Method of Preparing Bituminous

  10. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,362 times   1046 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 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,129 times   479 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."

  12. 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"

  13. 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

  14. Section 1.136 - 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)