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Ex Parte Scholz

15 Cited authorities

  1. Bicon, Inc. v. Straumann Co.

    441 F.3d 945 (Fed. Cir. 2006)   Cited 329 times   3 Legal Analyses
    Holding a patent claim construction that reads limitations out of a claim is "contrary to the principle that claim language should not [be] treated as meaningless"

  2. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 392 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  3. Lockwood v. American Airlines, Inc.

    107 F.3d 1565 (Fed. Cir. 1997)   Cited 298 times   6 Legal Analyses
    Holding that "[e]ach application in the chain must describe the claimed features" and that if "one of the intervening applications does not describe" the subject matter, the later application cannot claim the benefit of the earlier application

  4. Cat Tech LLC v. Tubemaster, Inc.

    528 F.3d 871 (Fed. Cir. 2008)   Cited 147 times   4 Legal Analyses
    Holding that even after the Supreme Court's decision in MedImmune, "the issue of whether there has been meaningful preparation to conduct potentially infringing activity remains an important element in the totality of circumstances which must be considered in determining whether a declaratory judgment is appropriate"

  5. On-Line Tech. v. Bodenseewerk Perkin-Elmer

    386 F.3d 1133 (Fed. Cir. 2004)   Cited 137 times   2 Legal Analyses
    Finding district court's claim construction erroneously excluded a toroidal shape where "the reference to the preferred embodiment as having mirrors with toroidal surfaces would give rise to a very strong inference that the claim should be construed to include such surfaces"

  6. Telcordia Tech. v. Cisco Systems

    612 F.3d 1365 (Fed. Cir. 2010)   Cited 89 times
    Holding that “controller” was sufficient disclosure because “[t]he record shows that an ordinary artisan would have recognized the controller as an electronic device with a known structure”

  7. In re Packard

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

  8. In re Giannelli

    739 F.3d 1375 (Fed. Cir. 2014)   Cited 26 times   2 Legal Analyses
    Reversing affirmance of examiner's obviousness determination where the Board's analysis "contained no explanation why or how [a skilled artisan] would modify" the prior art to arrive at the claimed invention

  9. 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

  10. In re Johnston

    435 F.3d 1381 (Fed. Cir. 2006)   Cited 22 times   1 Legal Analyses
    Finding that many factors are relevant to the motivation to combine aspect of the obviousness inquiry, including the extent to which the references are in the same or related fields of technology

  11. 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

  12. 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."

  13. 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"

  14. 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