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Ex Parte Pera et al

14720902 (P.T.A.B. Aug. 29, 2018)
Ex Parte Pera et al

18 Cited authorities

  1. Johns Hopkins University v. Cellpro

    152 F.3d 1342 (Fed. Cir. 1998)   Cited 245 times   1 Legal Analyses
    Holding previously that "[w]hether infringement was willful is a question of fact, and we will not reverse a jury determination on this issue unless it was unsupported by substantial evidence"

  2. Atlas Powder Co. v. E.I. du Pont De Nemours & Co.

    750 F.2d 1569 (Fed. Cir. 1984)   Cited 241 times   6 Legal Analyses
    Finding of enablement is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive

  3. Interconnect Planning Corp. v. Feil

    774 F.2d 1132 (Fed. Cir. 1985)   Cited 175 times   1 Legal Analyses
    Holding "[t]he invention must be viewed not with the blueprint drawn by the inventor, but in the state of the art that existed at the time"

  4. Sensonics, Inc. v. Aerosonic Corp.

    81 F.3d 1566 (Fed. Cir. 1996)   Cited 130 times   2 Legal Analyses
    Remanding case to district court for consideration of whether parties' conduct was so vexatious that case may be deemed exceptional

  5. Carnegie Mellon v. Hoffmann-La

    541 F.3d 1115 (Fed. Cir. 2008)   Cited 88 times   4 Legal Analyses
    Holding that the narrow description of the E. coli polA gene did not adequately support a broad claim to the gene from any bacterial source

  6. 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

  7. 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

  8. Wyeth & Cordis Corp. v. Abbott Labs.

    720 F.3d 1380 (Fed. Cir. 2013)   Cited 47 times   20 Legal Analyses
    Holding that undue experimentation was required to practice the full scope of the claims where the specification "disclose[d] only a starting point for further iterative research in an unpredictable and poorly understood field"

  9. In re Swartz

    232 F.3d 862 (Fed. Cir. 2000)   Cited 12 times
    Discussing the "substantial evidence" that claimed LENR results are "irreproducible" and that "those skilled in the art would 'reasonably doubt' the asserted utility and operability" of LENR technology

  10. Application of Borkowski

    422 F.2d 904 (C.C.P.A. 1970)   Cited 52 times   1 Legal Analyses
    Noting that a claim of clear scope that is not adequately supported by an enabling disclosure commensurate with that scope is objectionable under § 112, ¶ 1, not § 112, ¶ 2

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,287 times   1030 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 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,063 times   459 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."

  13. 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"

  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 1.136 - 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)

  16. Section 41.41 - Reply brief

    37 C.F.R. § 41.41   Cited 8 times   25 Legal Analyses

    (a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence