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Ex Parte McElroy et al

09532806 (B.P.A.I. Aug. 29, 2003)
Ex Parte McElroy et al

13 Cited authorities

  1. Regents of the Univ. of Cal. v. Lilly & Co.

    119 F.3d 1559 (Fed. Cir. 1997)   Cited 333 times   17 Legal Analyses
    Holding that written description requires more than a "mere wish or plan for obtaining the claimed chemical invention"

  2. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 397 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  3. Lockwood v. American Airlines, Inc.

    107 F.3d 1565 (Fed. Cir. 1997)   Cited 305 times   6 Legal Analyses
    Holding that "[e]ach application in the chain must describe the claimed features" and that if "one of the intervening applications does not describe" the subject matter, the later application cannot claim the benefit of the earlier application

  4. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 345 times   44 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."

  5. In re Vaeck

    947 F.2d 488 (Fed. Cir. 1991)   Cited 75 times   1 Legal Analyses
    Holding the examiner did not err in rejecting as nonenabled claims drawn to all genetically-engineered cyanobacteria expressing a given protein because the claimed 150 genera of cyanobacteria represent a vast, diverse, and poorly understood group; heterologous gene expression in cyanobacteria was "unpredictable"; and the patent's disclosure referred to only a genus

  6. Minerals Separation, Ltd. v. Hyde

    242 U.S. 261 (1916)   Cited 158 times   18 Legal Analyses
    In Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 [ 37 S.Ct. 82, 61 L.Ed. 286] (1916), the Court stated that an applicant need only make reasonable disclosure, but there there was good reason why he did not do better.

  7. Enzo Biochem Inc. v. Gen- Probe Inc.

    296 F.3d 1316 (Fed. Cir. 2002)   Cited 23 times
    In Enzo Biochem, 296 F.3d at 1326, this court reaffirmed that deposit of a physical sample may replace words when description is beyond present scientific capability.

  8. In re Wilder

    736 F.2d 1516 (Fed. Cir. 1984)   Cited 48 times
    Finding reissue declaration's assertion of attorney error sufficient

  9. Ex Parte Jackson

    415 So. 2d 1169 (Ala. 1982)   Cited 32 times
    In Jackson the Youthful Offender Act provided that the court could, in certain circumstances, put a juvenile offender on probation for a period not to exceed three years.

  10. Application of Marzocchi

    439 F.2d 220 (C.C.P.A. 1971)   Cited 42 times
    Involving the enablement requirement of 35 U.S.C. § 112, first paragraph

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,420 times   1069 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

  12. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 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