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Ex Parte Silverman et al

13673063 (P.T.A.B. Jan. 25, 2017)
Ex Parte Silverman et al

10 Cited authorities

  1. Cross Med Prod v. Medtronic Sofamor Danek

    424 F.3d 1293 (Fed. Cir. 2005)   Cited 348 times   4 Legal Analyses
    Holding that there can be no direct infringement of a product claim where surgeons, and not the defendant, made the claimed apparatus in the operating room, and remanding to determine whether the surgeons directly infringed such that Medtronic could be held liable for indirect infringement

  2. In re Kubin

    561 F.3d 1351 (Fed. Cir. 2009)   Cited 130 times   10 Legal Analyses
    Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied

  3. In re Spada

    911 F.2d 705 (Fed. Cir. 1990)   Cited 58 times   1 Legal Analyses
    Holding that the claims were properly rejected by the PTO because they were anticipated by a prior art reference

  4. In re Gorman

    933 F.2d 982 (Fed. Cir. 1991)   Cited 42 times   1 Legal Analyses

    No. 90-1362. May 13, 1991. Thomas W. Tolpin, Highland Park, Ill., argued for appellant. Teddy S. Gron, Associate Sol., Office of the Sol., Arlington, Va., argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences. Before RICH, NEWMAN, and RADER, Circuit Judges. PAULINE NEWMAN, Circuit Judge. Jeffrey B. Gorman and Marilyn Katz (hereinafter "Gorman") appeal the decision of the United States

  5. In re Crish

    393 F.3d 1253 (Fed. Cir. 2004)   Cited 19 times   1 Legal Analyses

    No. 04-1075. December 21, 2004. Appeal from the Board of Patent Appeals and Interferences. Peter G. Carroll, Medlen Carroll, LLP, of San Francisco, California, argued for appellants. With him on the brief was Thomas W. Brown. Mary L. Kelly, Associate Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United States Patent and Trademark Office. With her on the brief were John M. Whealan, Solicitor, and William G. Jenks, Associate Solicitor.

  6. In re Young

    927 F.2d 588 (Fed. Cir. 1991)   Cited 17 times
    Observing that in an obviousness inquiry, courts consider a prior art "reference for what it disclose in relation to the claimed invention."

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

    35 U.S.C. § 103   Cited 6,061 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."

  8. 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"

  9. 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

  10. 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)