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Ex Parte Naukkarinen et al

10534012 (P.T.A.B. Oct. 19, 2012)
Ex Parte Naukkarinen et al

13 Cited authorities

  1. Genentech, Inc. v. Novo Nordisk, A/S

    108 F.3d 1361 (Fed. Cir. 1997)   Cited 337 times   5 Legal Analyses
    Holding a preliminary injunction should not issue if defendant raises a substantial question as to validity, enforceability, or infringement

  2. Invitrogen Corp. v. Clontech Laboratories

    429 F.3d 1052 (Fed. Cir. 2005)   Cited 202 times   8 Legal Analyses
    Holding that a witness's conclusory assertion that the evidence demonstrated "conception, diligence and reduction to practice" did not carry a party's burden on summary judgment

  3. Koito Manufacturing Co., v. Turn-Key-Tech

    381 F.3d 1142 (Fed. Cir. 2004)   Cited 138 times
    Holding that a challenger failed to meet its burden of proving a prior art reference anticipated the patent claims when it "failed to provide any testimony or other evidence that would demonstrate to the jury how that reference met the limitations of the claims"

  4. In re Goodman

    11 F.3d 1046 (Fed. Cir. 1993)   Cited 71 times   2 Legal Analyses
    Holding that PTO actions did not dictate the rate of prosecution when Goodman accepted early issuance of species claims and filed a continuation application to prosecute genus claims

  5. In re Hyatt

    708 F.2d 712 (Fed. Cir. 1983)   Cited 63 times   3 Legal Analyses
    Rejecting "single means" claim, as such claims "cover[] every conceivable means for achieving the stated result"

  6. Application of Fisher

    427 F.2d 833 (C.C.P.A. 1970)   Cited 59 times   2 Legal Analyses
    Holding that the appellant, who was the first to achieve a potency of greater than 1.0 for adrenocorticotrophic hormones ("ACTHs"), had not enabled the preparation of ACTHs having potencies much greater than 2.3, and the claim recitations of potency of "at least 1" rendered the claims insufficiently supported under the first paragraph of 35 U.S.C. § 112

  7. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,277 times   1023 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

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

    35 U.S.C. § 103   Cited 6,055 times   447 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."

  9. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,937 times   944 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  10. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 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"

  11. 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

  12. 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

  13. Section 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 15 times   28 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)