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Ex Parte Rothman et al

11282644 (P.T.A.B. Aug. 3, 2018)
Ex Parte Rothman et al

13 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,372 times   507 Legal Analyses
    Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation

  2. Mayo Collaborative Servs. v. Prometheus Labs., Inc.

    566 U.S. 66 (2012)   Cited 772 times   145 Legal Analyses
    Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

  3. Enfish, LLC v. Microsoft Corp.

    822 F.3d 1327 (Fed. Cir. 2016)   Cited 702 times   118 Legal Analyses
    Holding that claims to self-referential tables that allowed for more efficient launching and adaptation of databases were not directed to an abstract idea

  4. Ultramercial, Inc. v. Hulu, LLC

    772 F.3d 709 (Fed. Cir. 2014)   Cited 490 times   47 Legal Analyses
    Holding that displaying an advertisement in exchange for access to copyrighted material is an abstract idea

  5. Thales Visionix Inc. v. United States

    850 F.3d 1343 (Fed. Cir. 2017)   Cited 143 times   22 Legal Analyses
    Holding that "claims directed to a new and useful technique for using sensors to more efficiently track an object on a moving platform" were not abstract

  6. Versata Development Group, Inc. v. SAP America, Inc.

    793 F.3d 1306 (Fed. Cir. 2015)   Cited 114 times   43 Legal Analyses
    Holding that "the definition of ‘covered business method patent’ is not limited to products and services of only the financial industry, or to patents owned by or directly affecting the activities of financial institutions"

  7. Intellectual Ventures I LLC v. Erie Indem. Co.

    850 F.3d 1315 (Fed. Cir. 2017)   Cited 105 times   8 Legal Analyses
    Holding that the features constituting the inventive concept in step two of Mayo/Alice "must be more than 'well-understood, routine, conventional activity'" (quoting Mayo, 132 S. Ct. at 1298)

  8. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,287 times   1030 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 6,063 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."

  10. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,416 times   2199 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."

  11. 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"

  12. 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

  13. 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