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Ex Parte Shackelford

10920084 (B.P.A.I. Dec. 18, 2008)
Ex Parte Shackelford

16 Cited authorities

  1. Pitney Bowes v. Hewlett-Packard Company

    182 F.3d 1298 (Fed. Cir. 1999)   Cited 1,028 times   3 Legal Analyses
    Holding that if, "when read in the context of the entire claim," the preamble "recites limitations of the claim., or . . . is `necessary to give life, meaning, and vitality' to" the claim, the preamble language is properly treated as limiting

  2. Computervision Corp. v. Perkin-Elmer Corp.

    469 U.S. 857 (1984)   Cited 154 times
    Applying Federal Circuit law on review of denial of post-verdict motion

  3. Bristol-Myers Squibb v. Ben Venue Labs

    246 F.3d 1368 (Fed. Cir. 2001)   Cited 279 times   12 Legal Analyses
    Holding preamble language non-limiting in method of treatment claims containing two steps, the second of which was administering a compound

  4. Schumer v. Laboratory Computer Systems

    308 F.3d 1304 (Fed. Cir. 2002)   Cited 262 times
    Holding that the preambles at issue — "point of origin," "angle of rotation," and "scale" — did not limit the scope of the digitizer invention but simply described features that necessarily exit in any coordinate system for a digitizer

  5. Perkin-Elmer Corp. v. Computervision Corp.

    732 F.2d 888 (Fed. Cir. 1984)   Cited 370 times   1 Legal Analyses
    Holding that when "a court does not discuss certain propositions," that "does not make the decision inadequate or suggest the court failed to understand them"

  6. Rowe v. Dror

    112 F.3d 473 (Fed. Cir. 1997)   Cited 230 times   3 Legal Analyses
    Finding that "balloon angioplasty catheter" in preamble to claim was structural limitation

  7. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 90 times   2 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  8. Karsten Mfg. Corp. v. Cleveland Golf Co.

    242 F.3d 1376 (Fed. Cir. 2001)   Cited 66 times
    Finding that preamble term limited claim because the term was used in the specification as well as in all of the claims

  9. In re Bond

    910 F.2d 831 (Fed. Cir. 1990)   Cited 57 times   1 Legal Analyses
    Finding that, since "structural equivalency ... is a question of fact," where the Board made no finding as to structural equivalency, this Court would "not reach that question in the first instance" and instead vacate and remand

  10. Gerber Garment Technology v. Lectra Systems

    916 F.2d 683 (Fed. Cir. 1990)   Cited 55 times   4 Legal Analyses
    Approving of the description of the purpose of § 121 set forth in concurring opinion in Studiengesellschaft

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,033 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  12. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 188 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"

  13. 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

  14. 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)