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Stephen C.P. Joseph et al.

13863028 - (D) (P.T.A.B. Jul. 2, 2020)
Stephen C.P. Joseph et al.

12 Cited authorities

  1. Pitney Bowes v. Hewlett-Packard Company

    182 F.3d 1298 (Fed. Cir. 1999)   Cited 1,024 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. Corning Glass Works v. Sumitomo Elec. U.S.A

    868 F.2d 1251 (Fed. Cir. 1989)   Cited 389 times
    Holding that the phrase "[a]n optical waveguide" in the preamble of the claim language was meant to limit claim scope to "optical waveguides" rather than all optical fibers because the "specification [made it] clear that the inventors were working on the particular problem of an . . . optical communication system not on general improvements in conventional optical fibers"

  3. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 343 times   43 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."

  4. In re Packard

    751 F.3d 1307 (Fed. Cir. 2014)   Cited 37 times   11 Legal Analyses
    Addressing the issues separately

  5. In re Strahilevitz

    668 F.2d 1229 (C.C.P.A. 1982)   Cited 9 times

    Appeal No. 81-563. January 15, 1982. J. Philip Polster, St. Louis, Mo., for appellant. Joseph F. Nakamura, Sol., and Fred W. Sherling, Washington, D.C., for Patent and Trademark Office. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges. MILLER, Judge. The decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board") sustaining the rejection of claims 36-48 as unsupported by an adequate disclosure required

  6. Application of Warner

    379 F.2d 1011 (C.C.P.A. 1967)   Cited 22 times   1 Legal Analyses

    Patent Appeal No. 7822. June 29, 1967. Richard E. Warner, for appellants. Joseph Schimmel, Washington, D.C. (Jere W. Sears, Washington, D.C., of counsel), for the Commissioner of Patents. Before WORLEY, Chief Judge, RICH, SMITH, and ALMOND, Judges, and WILLIAM H. KIRKPATRICK. Senior District Judge, Eastern District of Pennsylvania, sitting by designation. SMITH, Judge. This is an appeal from the decision of the Board of Appeals affirming the examiner's rejection of the appealed claims under 35 U

  7. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,394 times   1049 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

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

    35 U.S.C. § 103   Cited 6,148 times   482 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."

  9. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,016 times   1014 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  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 1.42 - 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