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Ex Parte Miyagawa et al

09460221 (B.P.A.I. Mar. 31, 2006)
Ex Parte Miyagawa et al

12 Cited authorities

  1. North American Container v. Plastipak Pack

    415 F.3d 1335 (Fed. Cir. 2005)   Cited 119 times   2 Legal Analyses
    Holding that recapture rule applied to reissued claims that had been “enlarged” and were not “materially narrowed in other respects”

  2. In re Clement

    131 F.3d 1464 (Fed. Cir. 1997)   Cited 51 times   1 Legal Analyses
    Deciding as a matter of law "whether and in what aspect the reissue claims are broader than the patent claims"

  3. Hester Industries, Inc. v. Stein, Inc.

    142 F.3d 1472 (Fed. Cir. 1998)   Cited 49 times
    Finding patentee's repeated arguments regarding the limitations constituted an admission that the limitations were necessary to overcome the prior art and the reissue claims impermissibly recaptured surrendered subject matter

  4. Pannu v. Storz Instruments, Inc.

    258 F.3d 1366 (Fed. Cir. 2001)   Cited 31 times
    Holding that recapture rule applied when “the reissued claims were not narrowed in any material respect compared with their broadening”

  5. Mentor Corp. v. Coloplast, Inc.

    998 F.2d 992 (Fed. Cir. 1993)   Cited 32 times
    Finding surrender by way of claim amendments

  6. Ball Corp. v. United States

    729 F.2d 1429 (Fed. Cir. 1984)   Cited 37 times
    Noting that a court may draw inferences from changes in claim scope

  7. Application of Wesseler

    367 F.2d 838 (C.C.P.A. 1966)   Cited 12 times

    Patent Appeal No. 7614. October 20, 1966. Robert W. Beach, Seattle, Wash. (George R. Jones, Washington, D.C., of counsel), for appellant. Joseph Schimmel, Washington, D.C. (S. Wm. Cochran, Washington, D.C., of counsel), for Commissioner of Patents. Before RICH, Acting Chief Judge, MARTIN, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK. United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Chief Judge WORLEY, pursuant to provisions

  8. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,421 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

  9. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,034 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  10. Section 251 - Reissue of defective patents

    35 U.S.C. § 251   Cited 467 times   74 Legal Analyses
    Describing the reissue of defective patents

  11. Section 2 - Powers and duties

    35 U.S.C. § 2   Cited 116 times   27 Legal Analyses
    Authorizing the Patent Office to cover the expenses of "persons" other than federal employees attending programs on intellectual-property protection

  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