Ex Parte SOHN

26 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. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,523 times   180 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"
  3. Williamson v. Citrix Online, LLC

    792 F.3d 1339 (Fed. Cir. 2015)   Cited 614 times   28 Legal Analyses
    Holding that a means-plus-function term is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim"
  4. Catalina Market. Intern. v. Coolsavings.com

    289 F.3d 801 (Fed. Cir. 2002)   Cited 648 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. Multiform Desiccants, Inc. v. Medzam, Ltd.

    133 F.3d 1473 (Fed. Cir. 1998)   Cited 538 times   1 Legal Analyses
    Holding that after all claims and counterclaims were decided or withdrawn, the district court acted properly when it “recognized that it could, in its discretion, decide this affirmative defense, but chose not to do so, citing Fed.R.Civ.P. 8(c)”
  6. B. Braun Medical v. Abbott Laboratories

    124 F.3d 1419 (Fed. Cir. 1997)   Cited 511 times   7 Legal Analyses
    Holding that the district court's pre- Markman failure to instruct the jury on the construction of a means-plus-function limitation was harmless because the jury adopted the correct construction
  7. Aristocrat Tech v. Intern. Game

    521 F.3d 1328 (Fed. Cir. 2008)   Cited 324 times   18 Legal Analyses
    Holding that in cases involving means-plus-function claims where structure is "a computer, or microprocessor, programmed to carry out an algorithm," specification must disclose corresponding algorithm to be sufficiently definite
  8. Helmsderfer v. Bobrick Washroom Equipment

    527 F.3d 1379 (Fed. Cir. 2008)   Cited 220 times
    Finding dictionary definitions supported district court's claim construction
  9. Hewlett-Packard Co. v. Bausch Lomb Inc.

    909 F.2d 1464 (Fed. Cir. 1990)   Cited 316 times   7 Legal Analyses
    Holding § 271(c) codified common law doctrine prohibiting sale of "component" that "had no other use except with claimed product or process"
  10. Function Media, L.L.C. v. Google Inc.

    708 F.3d 1310 (Fed. Cir. 2013)   Cited 100 times
    Holding that a specification's mere disclosure of "a computer program that transmits" is not structure as a matter of law because it is merely a non-limiting "abstraction that simply describes the function"
  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 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."
  13. 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."
  14. 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"
  15. 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

  16. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing
  17. 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)