14 Cited authorities
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
598 F.3d 1336 (Fed. Cir. 2010) Cited 615 times 78 Legal AnalysesHolding 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]”
In re Watts
354 F.3d 1362 (Fed. Cir. 2004) Cited 85 times 3 Legal AnalysesHolding patent holder waived new argument on the scope of the prior art never raised to the PTAB
In re Packard
751 F.3d 1307 (Fed. Cir. 2014) Cited 37 times 11 Legal AnalysesAddressing the issues separately
In re Kaslow
707 F.2d 1366 (Fed. Cir. 1983) Cited 75 timesHolding that prior demonstration of computerized supermarket UPC code system was prior use under meaning of Section 102(b)
In re Alton
76 F.3d 1168 (Fed. Cir. 1996) Cited 49 times 1 Legal AnalysesHolding that when the examiner alleges that the claimed embodiment is outside the scope of the specification, he "need only establish this fact to make out a prima facie case"
Application of Wertheim
541 F.2d 257 (C.C.P.A. 1976) Cited 81 times 7 Legal AnalysesHolding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"
In re Wright
866 F.2d 422 (Fed. Cir. 1989) Cited 31 times 3 Legal AnalysesRecognizing that fact that exact words in question are not in specification is "not important"
Hyatt v. Dudas
551 F.3d 1307 (Fed. Cir. 2008) Cited 9 times 1 Legal AnalysesNoting that the final judgment rule applies in section 145 cases
Application of Warner
379 F.2d 1011 (C.C.P.A. 1967) Cited 22 times 1 Legal AnalysesPatent Appeal No. 7822. June 29, 1967. Richard E. Warner, for appellants. Joseph Schimmel, Washington, D.C. (Jere W. Sears, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, RICH, SMITH, and ALMOND, Judges, and WILLIAM H. KIRKPATRICK. Senior District Judge, Eastern District of Pennsylvania, sitting by designation. SMITH, Judge. This is an appeal from the decision of the Board of Appeals affirming the examiner's rejection of the appealed claims under 35 U
Section 112 - Specification
35 U.S.C. § 112 Cited 7,409 times 1059 Legal AnalysesRequiring 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
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,159 times 489 Legal AnalysesHolding 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."
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 188 times 63 Legal AnalysesGiving 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"
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
Section 41.37 - Appeal brief
37 C.F.R. § 41.37 Cited 32 times 25 Legal AnalysesRequiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well