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Ex Parte Shigyo et al

14236192 (P.T.A.B. Jul. 10, 2018)
Ex Parte Shigyo et al

25 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,563 times   187 Legal Analyses
    Holding that, in an obviousness analysis, "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it"

  2. Renishaw PLC v. Marposs Societa' Per Azioni

    158 F.3d 1243 (Fed. Cir. 1998)   Cited 1,719 times   4 Legal Analyses
    Holding that there must be a claim term in need of clarification in order to draw in statements from the written description

  3. Pitney Bowes v. Hewlett-Packard Company

    182 F.3d 1298 (Fed. Cir. 1999)   Cited 1,025 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

  4. Catalina Market. Intern. v. Coolsavings.com

    289 F.3d 801 (Fed. Cir. 2002)   Cited 660 times   5 Legal Analyses
    Holding that "the claims, specification, and prosecution history of the041 patent demonstrate that the preamble phrase `located at predesignated sites such as consumer stores' is not a limitation of Claim 1," for "the applicant did not rely on this phrase to define its invention nor is the phrase essential to understand limitations or terms in the claim body"

  5. Ericsson, Inc. v. D-Link Sys., Inc.

    773 F.3d 1201 (Fed. Cir. 2014)   Cited 329 times   20 Legal Analyses
    Holding that a general verdict will not be set aside if there is sufficient evidence to support any of the alternative factual theories so long as there is no dispute over the legal propriety of the jury instruction

  6. Pfizer v. Apotex

    480 F.3d 1348 (Fed. Cir. 2007)   Cited 382 times   7 Legal Analyses
    Holding the district court clearly erred when it failed to consider relevant prior art

  7. Corning Glass Works v. Sumitomo Elec. U.S.A

    868 F.2d 1251 (Fed. Cir. 1989)   Cited 389 times
    Holding that the phrase "[a]n optical waveguide" in the preamble of the claim language was meant to limit claim scope to "optical waveguides" rather than all optical fibers because the "specification [made it] clear that the inventors were working on the particular problem of an . . . optical communication system not on general improvements in conventional optical fibers"

  8. Kinetic Concepts, Inc. v. Smith & Nephew, Inc.

    688 F.3d 1342 (Fed. Cir. 2012)   Cited 160 times   4 Legal Analyses
    Finding no motivation to combine where "doctors were not using the disclosed devices and methods to heal wounds with negative pressure because they did not believe that these devices were capable of such healing"

  9. Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.

    773 F.3d 1186 (Fed. Cir. 2014)   Cited 149 times   25 Legal Analyses
    Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"

  10. Rowe v. Dror

    112 F.3d 473 (Fed. Cir. 1997)   Cited 229 times   3 Legal Analyses
    Finding that "balloon angioplasty catheter" in preamble to claim was structural limitation

  11. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,154 times   485 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."

  12. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 187 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 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

  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)