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Ex Parte Rosen

19 Cited authorities

  1. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 585 times   76 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  2. 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."

  3. Atlas Powder Co. v. E.I. du Pont De Nemours & Co.

    750 F.2d 1569 (Fed. Cir. 1984)   Cited 240 times   6 Legal Analyses
    Finding of enablement is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive

  4. Seattle Box Co. v. Indus. Crating Packing

    731 F.2d 818 (Fed. Cir. 1984)   Cited 231 times   3 Legal Analyses
    Holding that "[a]n original patent cannot be infringed once a reissue patent has issued, for the original patent is surrendered" and "[t]he original claims are dead"

  5. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 90 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  6. In re Packard

    751 F.3d 1307 (Fed. Cir. 2014)   Cited 35 times   11 Legal Analyses
    Addressing the issues separately

  7. In re Morris

    127 F.3d 1048 (Fed. Cir. 1997)   Cited 49 times   7 Legal Analyses
    Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness

  8. In re Kaslow

    707 F.2d 1366 (Fed. Cir. 1983)   Cited 74 times
    Holding that prior demonstration of computerized supermarket UPC code system was prior use under meaning of Section 102(b)

  9. In re Alton

    76 F.3d 1168 (Fed. Cir. 1996)   Cited 48 times   1 Legal Analyses
    Holding that when the examiner alleges that the claimed embodiment is outside the scope of the specification, he "need only establish this fact to make out a prima facie case"

  10. Application of Wertheim

    541 F.2d 257 (C.C.P.A. 1976)   Cited 80 times   7 Legal Analyses
    Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"

  11. 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

  12. 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."

  13. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,404 times   2192 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  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

  16. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing