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Ex Parte Swartz

24 Cited authorities

  1. 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

  2. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 345 times   43 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  3. Orthokinetics, Inc. v. Safety Travel Chairs

    806 F.2d 1565 (Fed. Cir. 1986)   Cited 252 times
    Holding that the limitation that the claimed wheelchair have a "front leg portion . . . so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof" was not indefinite

  4. Brenner v. Manson

    383 U.S. 519 (1966)   Cited 112 times   7 Legal Analyses
    Holding that "a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion"

  5. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 90 times   1 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  6. Fujikawa v. Wattanasin

    93 F.3d 1559 (Fed. Cir. 1996)   Cited 78 times   7 Legal Analyses
    Holding that 17-month delay did not warrant inference of suppression or concealment due to, among other things, "the complexity of the subject matter"

  7. In re Zletz

    893 F.2d 319 (Fed. Cir. 1990)   Cited 42 times   3 Legal Analyses
    Holding that claims failing this test during prosecution must be rejected under § 112, ¶ 2

  8. In re Berger

    279 F.3d 975 (Fed. Cir. 2002)   Cited 15 times   2 Legal Analyses
    Declining to consider the merits of indefiniteness rejections not contested before the Board

  9. Newman v. Quigg

    877 F.2d 1575 (Fed. Cir. 1989)   Cited 25 times   2 Legal Analyses
    Holding that under the utility requirement of 35 U.S.C. § 101, a claimed invention must "operate to produce what [the patentee] claims it does"

  10. In re Swartz

    232 F.3d 862 (Fed. Cir. 2000)   Cited 12 times
    Discussing the "substantial evidence" that claimed LENR results are "irreproducible" and that "those skilled in the art would 'reasonably doubt' the asserted utility and operability" of LENR technology

  11. Section 1001 - Statements or entries generally

    18 U.S.C. § 1001   Cited 7,569 times   309 Legal Analyses
    Making false statements

  12. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,409 times   1060 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

  13. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,530 times   2294 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 188 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 25 - Declaration in lieu of oath

    35 U.S.C. § 25   Cited 12 times   2 Legal Analyses

    (a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required. (b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment,

  17. Section 1.132 - Affidavits or declarations traversing rejections or objections

    37 C.F.R. § 1.132   Cited 104 times   14 Legal Analyses

    When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. 37 C.F.R. §1.132 65 FR 57057 , Sept. 20, 2000 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the

  18. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  19. 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)