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Ex Parte Ohmi et al

10861388 (B.P.A.I. Nov. 21, 2008)
Ex Parte Ohmi et al

12 Cited authorities

  1. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 397 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  2. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  3. Application of Wertheim

    541 F.2d 257 (C.C.P.A. 1976)   Cited 81 times   7 Legal Analyses
    Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"

  4. Application of Smith

    481 F.2d 910 (C.C.P.A. 1973)   Cited 34 times

    Patent Appeal No. 8935. August 2, 1973. James A. Smith, St. Paul, Minn., Alexander, Sell, Steldt DeLaHunt, St. Paul, Minn., attorneys of record, for appellants. Ellsworth H. Mosher, Arlington, Va., Stevens, Davis, Miller Mosher, Arlington, Va., of counsel. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Jack E. Armore, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals. Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge

  5. Application of Royka

    490 F.2d 981 (C.C.P.A. 1974)   Cited 18 times
    Recognizing that if an independent claim is not anticipated, its dependent claims are also not anticipated

  6. 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

  7. 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."

  8. 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"

  9. 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

  10. Section 1.63 - Inventor's oath or declaration

    37 C.F.R. § 1.63   Cited 27 times   7 Legal Analyses
    Instructing patent applicant must "[i]dentify each inventor"

  11. Section 1.83 - Content of drawing

    37 C.F.R. § 1.83   Cited 13 times   3 Legal Analyses

    (a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that

  12. Section 1.115 - Preliminary amendments

    37 C.F.R. § 1.115   Cited 13 times

    (a) A preliminary amendment is an amendment that is received in the Office (§ 1.6 ) on or before the mail date of the first Office action under § 1.104 . The patent application publication may include preliminary amendments (§ 1.215(a) ). (1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application. (2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application