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Ex Parte Pestrue

09971866 (B.P.A.I. Mar. 29, 2006)
Ex Parte Pestrue

16 Cited authorities

  1. Markman v. Westview Instruments, Inc.

    52 F.3d 967 (Fed. Cir. 1995)   Cited 5,227 times   12 Legal Analyses
    Holding that inventor testimony as to "[t]he subjective intent of the inventor when he used a particular term is of little or no probative weight in determining the scope of a claim (except as documented in the prosecution history)."

  2. Intervet America v. Kee-Vet Laboratories

    887 F.2d 1050 (Fed. Cir. 1989)   Cited 231 times
    Holding that erroneous statement made during prosecution does not limit claim scope because "[t]he claims themselves control"

  3. In re Cruciferous Sprout Litigation

    301 F.3d 1343 (Fed. Cir. 2002)   Cited 141 times   6 Legal Analyses
    Holding that preamble was limiting in light of arguments made during prosecution "show[ing] a clear reliance by the patentee on the preamble to persuade the Patent Office that the claimed invention is not anticipated by the prior art"

  4. McGinley v. Franklin Sports, Inc.

    262 F.3d 1339 (Fed. Cir. 2001)   Cited 116 times
    Affirming identification of corresponding structure as including "egg-shaped indicia having `a slight taper at the portion of each indicia situated closest to the palm of the hand, and any equivalents of such structure'"

  5. In re Sang-Su Lee

    277 F.3d 1338 (Fed. Cir. 2002)   Cited 106 times   11 Legal Analyses
    Holding that agency tribunals "must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action"

  6. In re Watts

    354 F.3d 1362 (Fed. Cir. 2004)   Cited 86 times   3 Legal Analyses
    Holding patent holder waived new argument on the scope of the prior art never raised to the PTAB

  7. In re Dembiczak

    175 F.3d 994 (Fed. Cir. 1999)   Cited 93 times   2 Legal Analyses
    Refusing to consider an obviousness rejection raised for the first time on appeal from the PTO

  8. In re Fritch

    972 F.2d 1260 (Fed. Cir. 1992)   Cited 32 times
    Stating "dependent claims are nonobvious if the independent claims from which they depend are nonobvious"

  9. McElmurry v. Arkansas Power Light Co.

    995 F.2d 1576 (Fed. Cir. 1993)   Cited 29 times
    In McElmurry, Arkansas Power & Light ("AP&L") used the invention in question only in its own facilities, even though a third-party contractor, upon receipt of the design and specifications for the invention from AP&L, had manufactured and installed the invention.

  10. In re Dance

    160 F.3d 1339 (Fed. Cir. 1998)   Cited 19 times

    No. 97-1229. October 30, 1998. Grady J. Frenchick, Stroud, Stroud, Willink Thompson Howard, Madison, Wisconsin, argued for appellants Dance, et al. of counsel on the brief was Karen B. King. David J. Ball, Jr., Associate Solicitor, Office of Solicitor, Arlington, Virginia, argued for appellee, Commissioner of Patents and Trademarks. With him on the brief were Nancy J. Linck, Solicitor, Albin F. Drost, Deputy Solicitor, and Scott A. Chambers, Associate Solicitor. Before MAYER, Chief Judge, NEWMAN

  11. 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."

  12. 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

  13. 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

  14. 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)