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Ex Parte Nakanishi et al

10149450 (B.P.A.I. Oct. 20, 2009)
Ex Parte Nakanishi et al

21 Cited authorities

  1. Cybor Corp. v. FAS Technologies, Inc.

    138 F.3d 1448 (Fed. Cir. 1998)   Cited 1,579 times   42 Legal Analyses
    Holding that claim construction was purely a matter of law and therefore subject to de novo review

  2. Amgen Inc. v. Hoechst Marion Roussel, Inc.

    314 F.3d 1313 (Fed. Cir. 2003)   Cited 508 times   14 Legal Analyses
    Holding that “non-naturally occurring” and “not isolated” were structural elements defining the source of the claimed material, rather than steps for obtaining it

  3. Amgen, Inc. v. Chugai Pharmaceutical Co. LTD

    927 F.2d 1200 (Fed. Cir. 1991)   Cited 273 times   11 Legal Analyses
    Holding that the term "at least about" was indefinite because the patent provided no guidance as to where the line should be drawn between the numerical value of the prior art cited in the prosecution history and the close numerical value in the patent

  4. Shatterproof Glass Corp. v. Libbey-Owens Ford Co.

    758 F.2d 613 (Fed. Cir. 1985)   Cited 210 times   3 Legal Analyses
    Finding “substantial evidence on which a reasonable jury could have found that the inventors were correctly named” despite conflicting trial testimony

  5. Falko-Gunter Falkner v. Inglis

    448 F.3d 1357 (Fed. Cir. 2006)   Cited 89 times   16 Legal Analyses
    Holding that where “accessible literature sources clearly provided” a description of the teachings at issue, the written description requirement does not require their incorporation by reference

  6. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 90 times   1 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  7. Capon v. Eshhar

    418 F.3d 1349 (Fed. Cir. 2005)   Cited 68 times   5 Legal Analyses
    Holding it was error for the Board of Patent Appeals and Interferences to require "recitation in the specification of the nucleotide sequence of claimed DNA, when that sequence is already known in the field"

  8. Reiffin v. Microsoft Corp.

    214 F.3d 1342 (Fed. Cir. 2000)   Cited 75 times
    In Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345-46 (Fed. Cir. 2000), the court explained the need "to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification."

  9. 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

  10. 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

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,409 times   1059 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 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"

  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 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)