§

Ex Parte Morys et al

11993430 (P.T.A.B. Jun. 29, 2018)
Ex Parte Morys et al

14 Cited authorities

  1. Festo Corp. v. Shoketsu Kinzoku Kogyokabushiki Co.

    535 U.S. 722 (2002)   Cited 825 times   40 Legal Analyses
    Holding that "[t]he scope of a patent is not limited to its literal terms but instead embraces all equivalents to the claims described," because "[t]he language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty."

  2. 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."

  3. Abbvie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.

    759 F.3d 1285 (Fed. Cir. 2014)   Cited 107 times   16 Legal Analyses
    Upholding jury verdict of invalidity for lack of adequate written description because the pharmaceutical patents did not describe representative examples “to support the full scope of the claims”

  4. National Recovery v. Magnetic Sep. Sys

    166 F.3d 1190 (Fed. Cir. 1999)   Cited 113 times   1 Legal Analyses
    Holding that, under the facts of that case, the dependent claims were invalid solely because their independent claim was invalid

  5. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 91 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  6. Application of Wilson

    424 F.2d 1382 (C.C.P.A. 1970)   Cited 3 times
    Noting that the court cannot ignore the specific language in a claim

  7. Application of Steele

    305 F.2d 859 (C.C.P.A. 1962)   Cited 2 times

    Patent Appeal No. 6719. July 25, 1962. J. Hart Evans, Louis C. Smith, Jr., New York City, and Paul A. Rose, Washington D.C., for appellants. Clarence W. Moore, Washington, D.C. (Joseph Schimmel, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK. United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'CONNELL, pursuant to provisions

  8. O'REILLY ET AL. v. MORSE ET AL

    56 U.S. 62 (1853)   Cited 112 times   16 Legal Analyses
    In Morse, for example, the Court held that one of the claims in Morse's patent for a telegraphic system was "too broad, and not warranted by law."

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,418 times   1068 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

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

    35 U.S.C. § 103   Cited 6,172 times   492 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."

  11. 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"

  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

  13. 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

  14. 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)