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Ex Parte Perez et al

13618178 (P.T.A.B. Jun. 20, 2018)
Ex Parte Perez et al

11 Cited authorities

  1. Santarus, Inc. v. Par Pharm., Inc.

    694 F.3d 1344 (Fed. Cir. 2012)   Cited 68 times   15 Legal Analyses
    Finding that "[d]ue to breaks in the chain of priority," the "[parent] patent [was] prior art for some of the asserted claims"

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

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 88 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

  3. Inphi Corp. v. Netlist, Inc.

    805 F.3d 1350 (Fed. Cir. 2015)   Cited 18 times   7 Legal Analyses
    In Inphi, we confirmed that the written description requirement is satisfied where " ‘the essence of the original disclosure’ conveys the necessary information—‘regardless of how it’ conveys such information, and regardless of whether the disclosure's ‘words [a]re open to different interpretation[s].’ "

  4. Google LLC v. Network-1 Techs., Inc.

    2016-2509 (Fed. Cir. Mar. 26, 2018)

    2016-2509 2016-2510 2016-2511 2016-2512 03-26-2018 GOOGLE LLC, Appellant v. NETWORK-1 TECHNOLOGIES, INC., Appellee DAN L. BAGATELL, Perkins Coie LLP, Hanover, NH, argued for appellant. Also represented by ROBERT SWANSON, Washington, DC; ANDREW GISH, DOUGLAS R. NEMEC, Skadden, Arps, Slate, Meagher & Flom LLP, New York, NY. GREGORY S. DOVEL, Dovel & Luner, LLP, Santa Monica, CA, argued for appellee. Also represented by SEAN LUNER, MATTHAEUS MARTINO-WEINHARDT; JUNG SUK HAHM, CHARLES R. MACEDO, Amster

  5. Application of Johnson

    558 F.2d 1008 (C.C.P.A. 1977)   Cited 12 times   1 Legal Analyses
    Reversing rejection for inadequate written description where specification disclosed several species of a genus and claims recited genus but excluded two species of lost interference count

  6. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,389 times   1048 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 6,144 times   481 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,014 times   1009 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  9. 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"

  10. 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

  11. 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)