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Ex Parte Waldmann et al

10615718 (B.P.A.I. Jul. 6, 2011)
Ex Parte Waldmann et al

16 Cited authorities

  1. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 619 times   79 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  2. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 345 times   44 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. University, Rochester v. G.D. Searle Co.

    358 F.3d 916 (Fed. Cir. 2004)   Cited 140 times   7 Legal Analyses
    Holding the patent invalid because "Rochester did not present any evidence that the ordinarily skilled artisan would be able to identify any compound based on [the specification's] vague functional description"

  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. PPG Industries, Inc. v. Guardian Industries Corp.

    75 F.3d 1558 (Fed. Cir. 1996)   Cited 163 times   1 Legal Analyses
    Finding no indefiniteness despite failure to specify which method should be used to measure ultraviolet transmittance because all conventional methods produced “essentially identical results”

  6. Enzo Biochem, Inc. v. Gen-Probe Inc.

    323 F.3d 956 (Fed. Cir. 2002)   Cited 121 times   12 Legal Analyses
    Granting petition for rehearing and vacating prior panel decision reported at 285 F.3d 1013 (Fed. Cir. 2002)

  7. 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

  8. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 91 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  9. In re Spada

    911 F.2d 705 (Fed. Cir. 1990)   Cited 58 times   1 Legal Analyses
    Holding that the claims were properly rejected by the PTO because they were anticipated by a prior art reference

  10. Application of Best

    562 F.2d 1252 (C.C.P.A. 1977)   Cited 18 times   4 Legal Analyses

    Patent Appeal No. 77-509. October 13, 1977. Richard G. Miller, New York City, attorney of record, for appellants, James C. Arvantes, Arlington, Va., of counsel. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, Gerald H. Bjorge, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, C.J., RICH, BALDWIN and LANE, JJ., and FORD, J., United States Customs Court. MARKEY, Chief Judge. Appeal from the decision of the Patent and Trademark

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,419 times   1068 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,033 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. 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"

  14. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 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

  15. 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

  16. 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)