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Ex Parte Roth

13 Cited authorities

  1. Genentech, Inc. v. Novo Nordisk, A/S

    108 F.3d 1361 (Fed. Cir. 1997)   Cited 349 times   5 Legal Analyses
    Holding a preliminary injunction should not issue if defendant raises a substantial question as to validity, enforceability, or infringement

  2. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 343 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."

  3. National Recovery v. Magnetic Sep. Sys

    166 F.3d 1190 (Fed. Cir. 1999)   Cited 113 times   1 Legal Analyses
    Holding that, under the facts of that case, the dependent claims were invalid solely because their independent claim was invalid

  4. In re Fulton

    391 F.3d 1195 (Fed. Cir. 2004)   Cited 84 times   8 Legal Analyses
    Holding that "a particular combination" need not "be the preferred, or the most desirable, combination described in the prior art in order to provide motivation"

  5. CFMT, Inc. v. Yieldup Intern. Corp.

    349 F.3d 1333 (Fed. Cir. 2003)   Cited 78 times   3 Legal Analyses
    Finding no material misrepresentation in part because a PTO examiner's reasons for allowance did not reflect that the PTO relied on the allegedly false applicant statements

  6. 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

  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. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,389 times   1048 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 6,144 times   481 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 186 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 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

  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)