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Matichuk, Bruce et al.

2019001633 (P.T.A.B. May. 14, 2020)
Matichuk, Bruce et al.

14 Cited authorities

  1. Motor Vehicle Manufacturers Assoc. of the United States, Inc. v. State Farm Mutual Auto. Ins. Co.

    463 U.S. 29 (1983)   Cited 6,884 times   62 Legal Analyses
    Holding that " `settled course of behavior embodies the agency's informed judgment that, by pursuing that course, it will carry out the policies [of applicable statutes or regulations]'"

  2. In re NuVasive, Inc.

    842 F.3d 1376 (Fed. Cir. 2016)   Cited 112 times   16 Legal Analyses
    Vacating and remanding so that an agency could fulfill its obligation to "make the necessary findings and have an adequate evidentiary basis for its findings" and to "articulate a satisfactory explanation for its action"

  3. In re Kotzab

    217 F.3d 1365 (Fed. Cir. 2000)   Cited 120 times   1 Legal Analyses
    Holding that for a patent to be obvious, "there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant."

  4. Pers. Web Techs., LLC v. Apple, Inc.

    848 F.3d 987 (Fed. Cir. 2017)   Cited 67 times   11 Legal Analyses
    Concluding that the Board provided an inadequate analysis to provide meaningful appellate review

  5. Synopsys, Inc. v. Mentor Graphics Corp.

    814 F.3d 1309 (Fed. Cir. 2016)   Cited 46 times   23 Legal Analyses
    Finding that "the validity of claims for which the Board did not institute inter partes review can still be litigated in district court"

  6. 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

  7. In re Warsaw Orthopedic, Inc.

    832 F.3d 1327 (Fed. Cir. 2016)   Cited 43 times   3 Legal Analyses
    Explaining that the court "may not reweigh ... evidence on appeal"

  8. In re Vaeck

    947 F.2d 488 (Fed. Cir. 1991)   Cited 75 times   1 Legal Analyses
    Holding the examiner did not err in rejecting as nonenabled claims drawn to all genetically-engineered cyanobacteria expressing a given protein because the claimed 150 genera of cyanobacteria represent a vast, diverse, and poorly understood group; heterologous gene expression in cyanobacteria was "unpredictable"; and the patent's disclosure referred to only a genus

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,419 times   1069 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

  10. 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."

  11. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,547 times   2302 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."

  12. 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"

  13. 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

  14. 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