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Ex Parte Talalay et al

14358712 (P.T.A.B. Nov. 26, 2018)
Ex Parte Talalay et al

20 Cited authorities

  1. Schering Corp. v. Geneva Pharmaceuticals

    339 F.3d 1373 (Fed. Cir. 2003)   Cited 342 times   8 Legal Analyses
    Holding a claim invalid as anticipated when it claimed compounds in Markush form and a prior art reference disclosed one of the claimed compounds

  2. Perricone v. Medicis Pharmaceutical Corp.

    432 F.3d 1368 (Fed. Cir. 2005)   Cited 147 times   3 Legal Analyses
    Holding that a prior-art reference anticipated claims 1-4 and 7, but not claims 8, 9, and 13, because the latter set of claims contained one fewer limitation

  3. Geneva Pharmaceuticals v. Glaxosmithkline

    349 F.3d 1373 (Fed. Cir. 2003)   Cited 141 times   11 Legal Analyses
    Holding that later patent claiming pharmaceutical composition was obvious variant of earlier patent claiming pharmaceutical composition with "enhanced storage stability, the closed container, the packaged unit-dosages"

  4. In re Cruciferous Sprout Litigation

    301 F.3d 1343 (Fed. Cir. 2002)   Cited 141 times   6 Legal Analyses
    Holding that preamble was limiting in light of arguments made during prosecution "show[ing] a clear reliance by the patentee on the preamble to persuade the Patent Office that the claimed invention is not anticipated by the prior art"

  5. 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"

  6. MEHL/Biophile Int’l Corp. v. Milgraum

    192 F.3d 1362 (Fed. Cir. 1999)   Cited 108 times   2 Legal Analyses
    Finding anticipation by inherency of a method of hair depilation

  7. Bayer Ag. v. Biovail Corp.

    279 F.3d 1340 (Fed. Cir. 2002)   Cited 59 times   5 Legal Analyses
    Holding that it was premature for this court to engage in its own claim construction where the district court had not performed a comprehensive claim construction based on a complete record

  8. In re Packard

    751 F.3d 1307 (Fed. Cir. 2014)   Cited 37 times   11 Legal Analyses
    Addressing the issues separately

  9. Estee Lauder Inc. v. L'Oreal

    129 F.3d 588 (Fed. Cir. 1997)   Cited 60 times
    Holding that reduction to practice does not occur until inventor knows embodiment will work for its intended purposes

  10. In re Oelrich

    666 F.2d 578 (C.C.P.A. 1981)   Cited 94 times   6 Legal Analyses
    Stating that "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient" to establish inherency (quoting Hansgirg v. Kemmer , 102 F.2d 212, 214 (C.C.P.A. 1939) )

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,418 times   1066 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 6,172 times   492 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,030 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  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 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)