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Hoffman, Edward A. et al.

14455255 - (D) (P.T.A.B. Dec. 2, 2019)
Hoffman, Edward A. et al.

25 Cited authorities

  1. Pitney Bowes v. Hewlett-Packard Company

    182 F.3d 1298 (Fed. Cir. 1999)   Cited 1,004 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. Rowe v. Dror

    112 F.3d 473 (Fed. Cir. 1997)   Cited 222 times   3 Legal Analyses
    Finding that "balloon angioplasty catheter" in preamble to claim was structural limitation

  3. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 141 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  4. Boehringer Ingelheim v. Schering-Plough

    320 F.3d 1339 (Fed. Cir. 2003)   Cited 130 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"

  5. In re Schreiber

    128 F.3d 1473 (Fed. Cir. 1997)   Cited 148 times   2 Legal Analyses
    Holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency

  6. In re Bigio

    381 F.3d 1320 (Fed. Cir. 2004)   Cited 71 times   10 Legal Analyses
    Affirming conclusion that toothbrush and small hair brush were in same field of endeavor because "the structural similarities between toothbrushes and small brushes for hair would have led one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes"

  7. In re Clay

    966 F.2d 656 (Fed. Cir. 1992)   Cited 87 times   10 Legal Analyses
    Concluding that a reference was not reasonably pertinent where a PHOSITA "would not reasonably have expected to solve the [relevant] problem ... by considering" that reference

  8. In re Giannelli

    739 F.3d 1375 (Fed. Cir. 2014)   Cited 26 times   2 Legal Analyses
    Reversing affirmance of examiner's obviousness determination where the Board's analysis "contained no explanation why or how [a skilled artisan] would modify" the prior art to arrive at the claimed invention

  9. In re Jung

    637 F.3d 1356 (Fed. Cir. 2011)   Cited 23 times   4 Legal Analyses
    Holding the prima facie case during patent examination “is merely a procedural device that enables an appropriate shift of the burden of production” from the PTO to the patent applicant

  10. OutDry Techs. Corp. v. Geox S.P.A.

    859 F.3d 1364 (Fed. Cir. 2017)   Cited 10 times   2 Legal Analyses
    Finding the Board’s decision sufficient where it "clearly articulated [party’s] arguments," "engaged in reasoned decisionmaking," and "sufficiently articulated its analysis in its opinion to permit our review"

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,264 times   1021 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 6,052 times   443 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 5,933 times   941 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 180 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 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)

  17. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and