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Ex Parte Shah

21 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. Electric Power Group, LLC v. Alstom S.A.

    830 F.3d 1350 (Fed. Cir. 2016)   Cited 514 times   39 Legal Analyses
    Holding that claims directed to "a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions" are 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. McRo, Inc. v. Bandai Namco Games Am. Inc.

    837 F.3d 1299 (Fed. Cir. 2016)   Cited 365 times   63 Legal Analyses
    Holding that using "unconventional rules that relate to sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea"

  6. Internet Patents Corp. v. Active Network, Inc.

    790 F.3d 1343 (Fed. Cir. 2015)   Cited 360 times   15 Legal Analyses
    Holding that the dependent claims did not salvage the corresponding independent claims from a finding of ineligibility where they did not add an inventive concept

  7. OIP Technologies, Inc. v. Amazon.com, Inc.

    788 F.3d 1359 (Fed. Cir. 2015)   Cited 262 times   9 Legal Analyses
    Holding that a Section 101 inquiry is a question of law

  8. Cybersource Corp.. v. Retail Decisions Inc.

    654 F.3d 1366 (Fed. Cir. 2011)   Cited 278 times   22 Legal Analyses
    Holding that a claim whose "steps can be performed in the human mind, or by a human using a pen and paper" is directed to an "unpatentable mental process"

  9. 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

  10. KCJ Corp. v. Kinetic Concepts, Inc.

    223 F.3d 1351 (Fed. Cir. 2000)   Cited 218 times   4 Legal Analyses
    Holding that the article "a" would only be limited to its singular meaning when the inventor evinced a clear intent to so limit it

  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 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."

  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

  15. Section 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 15 times   28 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)

  16. Section 1.144 - Petition from requirement for restriction

    37 C.F.R. § 1.144   Cited 4 times

    After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181 ). 37 C.F.R. §1.144 62 FR 53195, Oct. 10, 1997 Part 2 is placed in the separate