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Shin-Etsu Chemical Co., Ltd.

2021000542 (P.T.A.B. Jan. 20, 2022)
Shin-Etsu Chemical Co., Ltd.

14 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. Andersen v. Fiber

    474 F.3d 1361 (Fed. Cir. 2007)   Cited 268 times   9 Legal Analyses
    Holding that the specification disavowed claim scope

  3. Centocor Ortho Biotech v. Abbott Lab

    636 F.3d 1341 (Fed. Cir. 2011)   Cited 71 times   11 Legal Analyses
    Holding claims invalid for inadequate written description and reversing the denial of a post-verdict motion for judgment as a matter of law

  4. Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc.

    752 F.3d 967 (Fed. Cir. 2014)   Cited 63 times   5 Legal Analyses
    Finding no clear error in district court's fact finding that "entecavir's ‘effectiveness against hepatitis B without known toxicity issues’ was ‘not unexpected ,’ " and deferring to district court's finding that this was not sufficient evidence of nonobviousness

  5. Nuvo Pharm. (Ireland) Designated Activity Co. v. Dr. Reddy's Labs. Inc.

    923 F.3d 1368 (Fed. Cir. 2019)   Cited 30 times   7 Legal Analyses
    Holding that "inventor testimony . . . illuminates the absence of critical description in this case"

  6. Application of Wertheim

    541 F.2d 257 (C.C.P.A. 1976)   Cited 81 times   7 Legal Analyses
    Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"

  7. Application of Lukach

    442 F.2d 967 (C.C.P.A. 1971)   Cited 44 times
    Recognizing that there are "anomalies between the requirements for claim-anticipating disclosures and for claim-supporting disclosures" and citing Hafner as an example

  8. Application of Baird

    52 C.C.P.A. 1747 (C.C.P.A. 1965)   Cited 17 times   2 Legal Analyses

    Patent Appeal No. 7445. July 1, 1965. Supplemental Opinion August 20, 1965. Alvin Guttag, Washington, D.C. (C. Edward Parker, Cambridge, Mass., of counsel), for appellants. Clarence W. Moore, Washington, D.C. (Fred W. Sherling, Washington, D.C., of counsel), for Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges. RICH, Judge. This appeal is from the decision of the Board of Appeals of the Patent Office in application serial No. 817,246, filed June 1, 1959

  9. In re Draeger

    32 C.C.P.A. 1217 (C.C.P.A. 1945)   Cited 16 times

    Patent Appeals No. 5041. June 25, 1945. Appeal from the Board of Appeals of the Patent Office, Serial No. 238,966. Application by Arthur A. Draeger and another for a patent. From a decision of the Board of Appeals affirming the Primary Examiner's rejection of certain claims, applicants appeal. Affirmed. W.E. Currie and P.L. Young, both of New York City, and W.F. Weigester, of Washington, D.C. (J. Cashman, of New York City, of counsel), for appellants. W.W. Cochran, of Washington, D.C. (E.L. Reynolds

  10. 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

  11. 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"

  12. 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

  13. 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)

  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