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Ex Parte Vaillancourt

11134012 - (D) (P.T.A.B. Dec. 18, 2014)
Ex Parte Vaillancourt

12 Cited authorities

  1. Catalina Market. Intern. v. Coolsavings.com

    289 F.3d 801 (Fed. Cir. 2002)   Cited 656 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"

  2. Toro Co. v. White Consol. Industries, Inc.

    199 F.3d 1295 (Fed. Cir. 1999)   Cited 204 times   3 Legal Analyses
    Holding that construction of "including" required attachment between structures where that was the only embodiment disclosed and where nothing in the remainder of the specification supported an unattached embodiment; "[T]he specification describes the advantages of the unitary structure as important to the invention. . . . No other, broader concept was described as embodying the applicant's invention, or shown in any of the drawings, or presented for examination."

  3. Boehringer Ingelheim v. Schering-Plough

    320 F.3d 1339 (Fed. Cir. 2003)   Cited 133 times   2 Legal Analyses
    Holding the court "must draw all reasonable inferences in favor of the nonmoving party . . . disregard all evidence favorable to the moving party that the jury was not required to believe"

  4. In re Abbott Diabetes Care Inc.

    696 F.3d 1142 (Fed. Cir. 2012)   Cited 40 times   2 Legal Analyses
    Holding that the conclusion that the claimed electrochemical sensor could not have external wires was supported by, among other considerations, the fact that "every embodiment disclosed in the specification shows . . . sensor without external cables or wires"

  5. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  6. In re Hyatt

    211 F.3d 1367 (Fed. Cir. 2000)   Cited 36 times
    Rejecting Hyatt's claim that the Board failed to analyze the claims on an element-by-element and claim-by-claim basis and affirming the Board's anticipation determination

  7. Hyatt v. Dudas

    492 F.3d 1365 (Fed. Cir. 2007)   Cited 22 times   3 Legal Analyses
    Upholding the patent examiner's initial rejection in which the examiner found failure to satisfy the written description requirement because “the written description did not support the particular claimed combination of elements”— i.e., “while each element may be individually described in the specification, the deficiency was the lack of adequate description of their combination ”

  8. In re Stencel

    828 F.2d 751 (Fed. Cir. 1987)   Cited 33 times
    Noting that "such [non-limiting] statements often, although not necessarily, appear in the claim's preamble"

  9. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,124 times   478 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."

  10. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 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"

  11. 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

  12. Section 1.136 - 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)