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Ex Parte Milliman et al

12877476 (P.T.A.B. Oct. 14, 2014)
Ex Parte Milliman et al

16 Cited authorities

  1. Exxon Research and Engineering Co. v. U.S.

    265 F.3d 1371 (Fed. Cir. 2001)   Cited 465 times   6 Legal Analyses
    Holding that a claim limitation that average particle diameter be greater than 5 was not indefinite where no upper limit on particle size was given

  2. Superguide Corp. v. Directv Enterprises

    358 F.3d 870 (Fed. Cir. 2004)   Cited 305 times   12 Legal Analyses
    Holding that a party "waived its right to assert a construction other than 'matches or equals' for the term 'meet'" because it agreed to that construction in its briefs

  3. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.

    334 F.3d 1294 (Fed. Cir. 2003)   Cited 159 times   1 Legal Analyses
    Holding that "the correct meaning of a word or phrase is informed only by considering the surrounding text. . . . [R]esort must always be made to the surrounding text of the claims in question, the other claims, the written description and the prosecution history."

  4. In re Morris

    127 F.3d 1048 (Fed. Cir. 1997)   Cited 49 times   7 Legal Analyses
    Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness

  5. In re Bond

    910 F.2d 831 (Fed. Cir. 1990)   Cited 57 times   1 Legal Analyses
    Finding that, since "structural equivalency ... is a question of fact," where the Board made no finding as to structural equivalency, this Court would "not reach that question in the first instance" and instead vacate and remand

  6. In re Cortright

    165 F.3d 1353 (Fed. Cir. 1999)   Cited 35 times   1 Legal Analyses
    Noting that the patent's written description must "illuminate a credible utility" to meet the enablement requirement

  7. In re Trans Texas

    498 F.3d 1290 (Fed. Cir. 2007)   Cited 22 times   3 Legal Analyses
    Holding that the Patent Office is not bound by district court claim construction because Patent Office was not a party to the district court proceeding

  8. 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

  9. In re Stepan Co.

    660 F.3d 1341 (Fed. Cir. 2011)   Cited 14 times

    No. 2010–1261.Reexamination Nos. 90/006,824 90/007,619. 2011-10-5 In re STEPAN COMPANY. Thomas J. Wimbiscus, McAndrews, Held & Malloy, Ltd. of Chicago, Illinois, argued for appellant. With him on the brief were George Wheeler, and Dennis H. Jaskoviak, Jr. Mary L. Kelly, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With her on the brief were, Raymond T. Chen, Solicitor, and Janet A. Gongola, Associate Solicitor. PROST Thomas J. Wimbiscus

  10. 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"

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,014 times   1009 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  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 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  15. 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)