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Ex Parte SIMARD

14 Cited authorities

  1. Bristol-Myers Squibb v. Ben Venue Labs

    246 F.3d 1368 (Fed. Cir. 2001)   Cited 273 times   11 Legal Analyses
    Holding preamble language non-limiting in method of treatment claims containing two steps, the second of which was administering a compound

  2. In re Schreiber

    128 F.3d 1473 (Fed. Cir. 1997)   Cited 148 times   2 Legal Analyses
    Holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency

  3. In re Omeprazole Patent

    483 F.3d 1364 (Fed. Cir. 2007)   Cited 87 times   3 Legal Analyses
    Stating that an "inequitable conduct claim was not technically moot, because it would have rendered the entire . . . patent unenforceable, rather than just the claims that were held invalid"

  4. In re McDaniel

    293 F.3d 1379 (Fed. Cir. 2002)   Cited 28 times   3 Legal Analyses
    Noting "the Board is free to select a single claim from each group of claims subject to a common ground of rejection as representative of all claims in that group and to decide the appeal of that rejection based solely on the selected representative claim" in the absence of a clear statement asserting separate patentability of the claims

  5. In re Keller

    642 F.2d 413 (C.C.P.A. 1981)   Cited 43 times   1 Legal Analyses
    Stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"

  6. In re Baird

    16 F.3d 380 (Fed. Cir. 1994)   Cited 25 times
    Holding that obviousness had not been shown based on a single reference because the PTO had not demonstrated motivation to select claimed species from prior genus of millions of compounds

  7. Application of Best

    562 F.2d 1252 (C.C.P.A. 1977)   Cited 18 times   4 Legal Analyses

    Patent Appeal No. 77-509. October 13, 1977. Richard G. Miller, New York City, attorney of record, for appellants, James C. Arvantes, Arlington, Va., of counsel. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, Gerald H. Bjorge, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, C.J., RICH, BALDWIN and LANE, JJ., and FORD, J., United States Customs Court. MARKEY, Chief Judge. Appeal from the decision of the Patent and Trademark

  8. Application of Burckel

    592 F.2d 1175 (C.C.P.A. 1979)   Cited 14 times   1 Legal Analyses

    Appeal No. 78-616. March 1, 1979. C. Wayne Stephens, Wilmington, Del., for appellant; Hoge T. Sutherland, Los Angeles, Cal., of counsel. Joseph F. Nakamura, Washington, D.C., for Commissioner of Patents; Gerald H. Bjorge, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. RICH, Judge. This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming

  9. Application of Preda

    401 F.2d 825 (C.C.P.A. 1968)   Cited 5 times   1 Legal Analyses

    Patent Appeal No. 8016. October 24, 1968. Wenderoth, Lind Ponack, A. Ponak, Washington, D.C. (John T. Miller, Washington, D.C., of counsel) for appellant. Joseph Schimmel, Washington, D.C. (Jack E. Armore, Washington, D.C., of counsel) for the Commissioner of Patents. Before WORLEY, Chief Judge and RICH, SMITH, ALMOND, and BALDWIN, Judges. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 7 and 8 of application serial No. 269,707

  10. 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."

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,944 times   959 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 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"

  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 - 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)