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Ex Parte 6,777,231 et al

95001592 (P.T.A.B. Nov. 26, 2013)
Ex Parte 6,777,231 et al

17 Cited authorities

  1. Smithkline Beecham Corp. v. Apotex Corp.

    403 F.3d 1331 (Fed. Cir. 2005)   Cited 248 times   7 Legal Analyses
    Holding a chemical patent inherently anticipated and stating that it was irrelevant whether the inherently disclosed chemical was ever actually produced

  2. Johns Hopkins University v. Cellpro

    152 F.3d 1342 (Fed. Cir. 1998)   Cited 245 times   1 Legal Analyses
    Holding previously that "[w]hether infringement was willful is a question of fact, and we will not reverse a jury determination on this issue unless it was unsupported by substantial evidence"

  3. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 88 times   1 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  4. In re Abbott Diabetes Care Inc.

    696 F.3d 1142 (Fed. Cir. 2012)   Cited 40 times   2 Legal Analyses
    Holding that the conclusion that the claimed electrochemical sensor could not have external wires was supported by, among other considerations, the fact that "every embodiment disclosed in the specification shows . . . sensor without external cables or wires"

  5. Univ. of Pittsburgh v. Hedrick

    573 F.3d 1290 (Fed. Cir. 2009)   Cited 44 times   4 Legal Analyses
    Finding a "patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution," but an examiner's summary of disavowal may only create a "weak inference" of the disavowal

  6. In re Suitco Surface

    603 F.3d 1255 (Fed. Cir. 2010)   Cited 36 times   5 Legal Analyses
    In Suitco, we disagreed with the Board's broadest reasonable construction of the term "finishing the top surface of the floor," because the Board's construction "allow[ed] the finishing material to fall anywhere above the surface being finished regardless of whether it actually ‘finishes’ the surface."

  7. 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

  8. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,350 times   1046 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

  9. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,991 times   1000 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  10. Section 311 - Inter partes review

    35 U.S.C. § 311   Cited 403 times   190 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  11. 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"

  12. Section 1.75 - Claim(s)

    37 C.F.R. § 1.75   Cited 112 times   11 Legal Analyses
    Setting forth proper drafts for independent and dependent claims

  13. Section 41.77 - Decisions and other actions by the Board

    37 C.F.R. § 41.77   Cited 16 times   3 Legal Analyses

    (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent

  14. Section 1.915 - Content of request for inter partes reexamination

    37 C.F.R. § 1.915   Cited 7 times

    (a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in § 1.20(c)(2) . (b) A request for inter partes reexamination must include the following parts: (1) An identification of the patent by patent number and every claim for which reexamination is requested. (2) A citation of the patents and printed publications which are presented to provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of

  15. Section 41.79 - Rehearing

    37 C.F.R. § 41.79   Cited 5 times

    (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of: (1) The original decision of the Board under § 41.77(a) , (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2) , (3) The expiration of the time for the owner to take action under § 41.77(b)(2) , or (4) The new decision of the Board under § 41.77(f) . (b) (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked

  16. Section 1.943 - Requirements of responses, written comments, and briefs in inter partes reexamination

    37 C.F.R. § 1.943

    (a) The form of responses, written comments, briefs, appendices, and other papers must be in accordance with the requirements of § 1.52 . (b) Responses by the patent owner and written comments by the third party requester shall not exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as prior art references. (c) Appellant's briefs filed by the patent owner and the third party requester shall not exceed thirty pages or 14,000 words in length, excluding

  17. Section 41.60 - Definitions

    37 C.F.R. § 41.60

    In addition to the definitions in § 41.2 , the following definitions apply to proceedings under this subpart unless otherwise clear from the context: Appellant means any party, whether the owner or a requester, filing a notice of appeal or cross appeal under § 41.61 . If more than one party appeals or cross appeals, each appealing or cross appealing party is an appellant with respect to the claims to which his or her appeal or cross appeal is directed. Filing means filing with a certificate indicating