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Ex parte PETER J. WILK et al.

08125671 (B.P.A.I. Sep. 24, 1997)
Ex parte PETER J. WILK et al.

15 Cited authorities

  1. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 345 times   43 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  2. Doyle v. Commissioner of Patents

    416 U.S. 935 (1974)   Cited 20 times

    No. 73-833. April 15, 1974. C. C. P. A. (Pat.) Certiorari denied. Reported below: 482 F. 2d 1385.

  3. In re Wilder

    736 F.2d 1516 (Fed. Cir. 1984)   Cited 48 times
    Finding reissue declaration's assertion of attorney error sufficient

  4. Application of Rinehart

    531 F.2d 1048 (C.C.P.A. 1976)   Cited 45 times
    Considering the problem to be solved in a determination of obviousness

  5. Application of Marzocchi

    439 F.2d 220 (C.C.P.A. 1971)   Cited 42 times
    Involving the enablement requirement of 35 U.S.C. § 112, first paragraph

  6. In re Lalu

    747 F.2d 703 (Fed. Cir. 1984)   Cited 14 times
    Finding two cases about a different legal issue and with different facts contained dicta that "[wa]s helpful as a guide"

  7. In re Strahilevitz

    668 F.2d 1229 (C.C.P.A. 1982)   Cited 9 times

    Appeal No. 81-563. January 15, 1982. J. Philip Polster, St. Louis, Mo., for appellant. Joseph F. Nakamura, Sol., and Fred W. Sherling, Washington, D.C., for Patent and Trademark Office. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges. MILLER, Judge. The decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board") sustaining the rejection of claims 36-48 as unsupported by an adequate disclosure required

  8. Application of Bowen

    492 F.2d 859 (C.C.P.A. 1974)   Cited 16 times
    Describing single embodiment may enable other predictable, undisclosed embodiments, but not unpredictable ones

  9. Martin v. Johnson

    454 F.2d 746 (C.C.P.A. 1972)   Cited 15 times   1 Legal Analyses
    In Johnson, the examiner rejected applicant's claims directed to substituted diphenyl ether compounds as "structurally obvious" over compounds disclosed in two separate prior art references.

  10. Application of Eynde

    480 F.2d 1364 (C.C.P.A. 1973)   Cited 11 times   1 Legal Analyses

    Patent Appeal No. 8934. July 19, 1973. Alfred W. Breiner, Arlington, Va., attorney of record, for appellants. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Raymond E. Martin, Robert D. Edmonds, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals, Serial No. 471,437. Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge. LANE, Judge. This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,412 times   1063 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 6,165 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."

  13. 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)