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Ex Parte Pettersson et al

12406798 (P.T.A.B. Apr. 27, 2017)
Ex Parte Pettersson et al

15 Cited authorities

  1. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 334 times   41 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. In re Schreiber

    128 F.3d 1473 (Fed. Cir. 1997)   Cited 148 times   2 Legal Analyses
    Holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency

  3. In re Vaeck

    947 F.2d 488 (Fed. Cir. 1991)   Cited 75 times   1 Legal Analyses
    Holding the examiner did not err in rejecting as nonenabled claims drawn to all genetically-engineered cyanobacteria expressing a given protein because the claimed 150 genera of cyanobacteria represent a vast, diverse, and poorly understood group; heterologous gene expression in cyanobacteria was "unpredictable"; and the patent's disclosure referred to only a genus

  4. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  5. 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

  6. Application of Moore

    439 F.2d 1232 (C.C.P.A. 1971)   Cited 46 times
    Noting that the question is whether the scope of enablement conveyed by the disclosure to a person of ordinary skill in the art is commensurate with the scope of protection taught by the claims

  7. 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

  8. Application of Angstadt

    537 F.2d 498 (C.C.P.A. 1976)   Cited 33 times   7 Legal Analyses
    Holding that patent applicants are not required to enable every species encompassed by their claims

  9. Application of Gardner

    427 F.2d 786 (C.C.P.A. 1970)   Cited 26 times

    Patent Appeal No. 8311. June 25, 1970. Arthur R. Eglington, attorney of record for appellants, George J. Harding, 3rd, Joan S. Keps, Philadelphia, Pa., of counsel. S. Wm. Cochran, Washington, D.C., for Commissioner of Patents, Leroy B. Randall, Jack Armore, Washington, D.C., of counsel. Before RICH, Acting Chief Judge, ALMOND, BALDWIN, and LANE, Judges, and FISHER, Chief Judge, Eastern District of Texas, sitting by designation. RICH, Acting Chief Judge. This appeal is from the decision of the Patent

  10. Application of Miller

    441 F.2d 689 (C.C.P.A. 1971)   Cited 11 times

    Patent Appeal No. 8444. May 13, 1971. Jay P. Friedenson, Morristown, N.J., attorney of record, for appellant. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Joseph F. Nakamura, Washington, D.C., of counsel. Before RICH, ALMOND, BALDWIN and LANE, Judges, and FORD, Judge, United States Customs Court, sitting by designation. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 1, 2, and 4-18 in appellant's

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,283 times   1029 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 6,061 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,942 times   958 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. 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"

  15. 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