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Ex Parte Ranges et al

12619913 (P.T.A.B. May. 20, 2016)
Ex Parte Ranges et al

12 Cited authorities

  1. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 333 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. Janssen Pharmaceutica v. Teva PHARMACEUTI.., Page 1318

    583 F.3d 1317 (Fed. Cir. 2009)   Cited 43 times   3 Legal Analyses
    Holding that the method of treatment claims at issue were not enabled “because the ... patent's application did not establish utility”

  3. Rasmusson v. Smithkline Beecham Corp.

    413 F.3d 1318 (Fed. Cir. 2005)   Cited 43 times   4 Legal Analyses
    Explaining "proof of efficacy is not required in order for a reference to be enabled for purposes of anticipation"

  4. In re Dillon

    919 F.2d 688 (Fed. Cir. 1990)   Cited 69 times   6 Legal Analyses
    Finding a prima facie case of obviousness where the prior art tri-orthoester compound was found to be equivalent to the claimed tetra-orthoester compound and the use of the tri-orthoester as a fuel additive was expected to produce essentially the same result as the use of the tetra-orthoester

  5. In re Cortright

    165 F.3d 1353 (Fed. Cir. 1999)   Cited 34 times   1 Legal Analyses
    Noting that the patent's written description must "illuminate a credible utility" to meet the enablement requirement

  6. Application of Arkley

    455 F.2d 586 (C.C.P.A. 1972)   Cited 44 times   1 Legal Analyses
    Noting that an anticipating reference "must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference"

  7. Application of Henze

    181 F.2d 196 (C.C.P.A. 1950)   Cited 26 times

    Patent Appeal No. 5659. Argued January 13, 1950. Decided April 3, 1950. Whittemore, Hulbert Belknap, Washington, D.C. (L. Gaylord Hulbert, Detroit, Mich., and George A. Degnan, Washington, D.C., of counsel) for appellant. E.L. Reynolds, Washington, D.C. (J. Schimmel, Washington, D.C., of counsel) for the Commissioner of Patents. Before GARRETT, Chief Judge, and JACKSON, O'CONNELL and JOHNSON, Judges. JOHNSON, Judge. On May 15, 1944, the appellant filed an application in the United States Patent Office

  8. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,280 times   1025 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

  9. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,056 times   449 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."

  10. 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"

  11. 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

  12. 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)