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Ex Parte Sundaresh et al

12485167 (P.T.A.B. Apr. 17, 2017)
Ex Parte Sundaresh et al

11 Cited authorities

  1. Baldwin Graphic v. Siebert

    512 F.3d 1338 (Fed. Cir. 2008)   Cited 297 times   6 Legal Analyses
    Holding that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase comprising” unless a patentee has “ ‘evidence[d] a clear intent’ to limit ‘a’ or ‘an’ to ‘one’ ”

  2. In re Gleave

    560 F.3d 1331 (Fed. Cir. 2009)   Cited 149 times
    Finding that the prior art reference was enabling and stating that “the fact that [the reference] provides ‘no understanding of which of the targets would be useful’ is of no import, because [the patent applicant] admits that it is well within the skill of an ordinary person in the art to make any oligodeoxynucleotide sequence”

  3. Abtox, Inc. v. Exitron Corporation

    122 F.3d 1019 (Fed. Cir. 1997)   Cited 195 times   17 Legal Analyses
    Holding that Class II medical devices, which are not subject to a “rigorous premarket approval process” and thus cannot receive patent term extensions, are nonetheless covered by the safe harbor

  4. Clearvalue, Inc. v. Pearl River Polymers, Inc.

    668 F.3d 1340 (Fed. Cir. 2012)   Cited 52 times   2 Legal Analyses
    Holding that while the disclosure of a broad genus does not disclose every species within that genus, where there is "no allegation of criticality or any evidence demonstrating any difference across the range" the disclosure of the range in the prior art discloses the value within the range

  5. In re Ngai

    367 F.3d 1336 (Fed. Cir. 2004)   Cited 15 times   1 Legal Analyses
    Noting that allowing claims where the printed matter was the only novel contribution would allow "anyone [to] continue patenting a product indefinitely provided that they add a new instruction sheet to the product"

  6. 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."

  7. 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"

  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)

  11. Section 41.41 - Reply brief

    37 C.F.R. § 41.41   Cited 8 times   25 Legal Analyses

    (a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence