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Ex Parte Pearson et al

13356004 (P.T.A.B. Aug. 14, 2017)
Ex Parte Pearson et al

20 Cited authorities

  1. Schering Corp. v. Geneva Pharmaceuticals

    339 F.3d 1373 (Fed. Cir. 2003)   Cited 339 times   8 Legal Analyses
    Holding a claim invalid as anticipated when it claimed compounds in Markush form and a prior art reference disclosed one of the claimed compounds

  2. Continental Can Co. USA, v. Monsanto Co.

    948 F.2d 1264 (Fed. Cir. 1991)   Cited 332 times   3 Legal Analyses
    Holding that an inherent limitation must be “necessarily present” and cannot be established by “probabilities or possibilities”

  3. Eibel Co. v. Paper Co.

    261 U.S. 45 (1923)   Cited 519 times   7 Legal Analyses
    Holding that the oral testimony of prior public use "falls short of being enough to overcome the presumption of novelty from the granting of the patent" when "there is not a single written record, letter or specification of prior date to [the patentee's] application that discloses any such discovery by anyone. . . ."

  4. In re Peterson

    315 F.3d 1325 (Fed. Cir. 2003)   Cited 67 times   14 Legal Analyses
    Holding that any overlap between a claimed range and one in the prior art is sufficient for a prima facie case of obviousness, even if insufficient to render it unpatentable

  5. In re Robertson

    169 F.3d 743 (Fed. Cir. 1999)   Cited 65 times
    Holding that inherent anticipation requires more than mere probability or possibility that the missing descriptive materials are present in the prior art

  6. In re Oelrich

    666 F.2d 578 (C.C.P.A. 1981)   Cited 92 times   5 Legal Analyses
    Stating that "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient" to establish inherency (quoting Hansgirg v. Kemmer , 102 F.2d 212, 214 (C.C.P.A. 1939) )

  7. Ex parte Lawson

    233 So. 3d 943 (Ala. 2016)   Cited 10 times

    1151163 (2150095) 09-16-2016 EX PARTE Levy Morris LAWSON DECISION WITHOUT PUBLISHED OPINION Cert. denied.

  8. In re Young

    927 F.2d 588 (Fed. Cir. 1991)   Cited 17 times
    Observing that in an obviousness inquiry, courts consider a prior art "reference for what it disclose in relation to the claimed invention."

  9. Application of Best

    562 F.2d 1252 (C.C.P.A. 1977)   Cited 18 times   4 Legal Analyses

    Patent Appeal No. 77-509. October 13, 1977. Richard G. Miller, New York City, attorney of record, for appellants, James C. Arvantes, Arlington, Va., of counsel. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, Gerald H. Bjorge, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, C.J., RICH, BALDWIN and LANE, JJ., and FORD, J., United States Customs Court. MARKEY, Chief Judge. Appeal from the decision of the Patent and Trademark

  10. Application of Marshall

    578 F.2d 301 (C.C.P.A. 1978)   Cited 14 times

    Appeal No. 77-625. June 30, 1978. Edward D. O'Brian, Anaheim, Cal., atty. of record, for appellant. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Jack E. Armore, Washington, D.C., of counsel. Appeal from the Board of Appeals of United States Patent Office. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, and MILLER, Judges. LANE, Judge. This is an appeal from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the examiner's rejection

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

    35 U.S.C. § 103   Cited 6,129 times   479 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."

  12. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,995 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 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"

  14. 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

  15. Section 1.132 - Affidavits or declarations traversing rejections or objections

    37 C.F.R. § 1.132   Cited 104 times   14 Legal Analyses

    When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. 37 C.F.R. §1.132 65 FR 57057 , Sept. 20, 2000 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the

  16. 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

  17. Section 1.136 - 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)