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Ex Parte LI et al

13187730 (P.T.A.B. Feb. 29, 2016)
Ex Parte LI et al

18 Cited authorities

  1. In re Hiniker Co.

    150 F.3d 1362 (Fed. Cir. 1998)   Cited 180 times   6 Legal Analyses
    Upholding rejection for obviousness even though prior art performed less efficiently than patent's device because it refused to read specification's operational characteristics into broader claims

  2. In re Huang

    100 F.3d 135 (Fed. Cir. 1996)   Cited 94 times   4 Legal Analyses
    Holding that the inventor's opinion as to the purchaser's reason for buying the product is insufficient to demonstrate a nexus

  3. In re Zletz

    893 F.2d 319 (Fed. Cir. 1990)   Cited 42 times   3 Legal Analyses
    Holding that claims failing this test during prosecution must be rejected under § 112, ¶ 2

  4. In re De Blauwe

    736 F.2d 699 (Fed. Cir. 1984)   Cited 49 times   1 Legal Analyses

    Appeal No. 84-513. June 8, 1984. Jeffrey G. Sheldon, Pasadena, Cal., argued for appellants. John F. Pitrelli, Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and John W. Dewhirst, Associate Sol., Washington, D.C. Appeal from the United States Patent and Trademark Office Board of Appeals. Before BENNETT, Circuit Judge, SKELTON, Senior Circuit Judge, and MILLER, Circuit Judge. JACK R. MILLER, Circuit Judge. This appeal is from that part of the decision of the

  5. Application of Prater

    415 F.2d 1393 (C.C.P.A. 1969)   Cited 78 times   4 Legal Analyses
    Holding that claims are given their broadest reasonable interpretation during examination "since the applicant may then amend his claims"

  6. In re Thorpe

    777 F.2d 695 (Fed. Cir. 1985)   Cited 40 times   3 Legal Analyses
    Holding that prior art pertinent only to product is proper ground for rejecting product-by-process claims

  7. Application of Aller

    220 F.2d 454 (C.C.P.A. 1955)   Cited 47 times   2 Legal Analyses
    Finding no criticality where claimed conditions allegedly contributed to roughly 20 percentage point improvement in yield

  8. In re Mraz

    455 F.2d 1069 (C.C.P.A. 1972)   Cited 18 times
    Explaining that features that patent drawings "show clearly" can be sufficient to establish anticipation, especially when they are the focus of the figure and shown "with great particularity," but distinguishing a case where the patent drawing at issue was "obviously never intended to show the dimensions of anything"

  9. Application of Fessmann

    489 F.2d 742 (C.C.P.A. 1974)   Cited 7 times

    Patent Appeal No. 9121. January 10, 1974. Edward W. Goldstein, Washington, D.C., attorney of record, for appellant. Joseph F. Nakamura, Washington, D.C., for Commissioner of Patents, Jack E. Armore, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals. Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge. ALMOND, Senior Judge. This is an appeal from the decision of the Patent Office Board of Appeals affirming the examiner's rejection, under 35

  10. Application of Garnero

    412 F.2d 276 (C.C.P.A. 1969)   Cited 9 times   2 Legal Analyses
    Holding that "interbonded one to another by interfusion" connotes structure to a claimed composite and should therefore be considered in the determination of patentability

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

    35 U.S.C. § 103   Cited 6,159 times   489 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 132 - Notice of rejection; reexamination

    35 U.S.C. § 132   Cited 310 times   47 Legal Analyses
    Prohibiting addition of "new matter"

  13. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 188 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"

  14. 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

  15. 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

  16. Section 1.136 - [Effective until 1/19/2025] 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)