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Ex Parte 6,892,861 B2 et al

95002222 (P.T.A.B. May. 31, 2016)
Ex Parte 6,892,861 B2 et al

23 Cited authorities

  1. Merck & Co. v. Teva Pharmaceuticals USA, Inc.

    395 F.3d 1364 (Fed. Cir. 2005)   Cited 431 times   10 Legal Analyses
    Holding that commercial success is not significantly probative of non-obviousness where others are barred from acting on the prior art

  2. In re Gleave

    560 F.3d 1331 (Fed. Cir. 2009)   Cited 149 times
    Finding that the prior art reference was enabling and stating that “the fact that [the reference] provides ‘no understanding of which of the targets would be useful’ is of no import, because [the patent applicant] admits that it is well within the skill of an ordinary person in the art to make any oligodeoxynucleotide sequence”

  3. Inventio v. Thyssenkrupp Elevator Amercs

    649 F.3d 1350 (Fed. Cir. 2011)   Cited 105 times   7 Legal Analyses
    Holding "modernizing device" denoted sufficient structure based on surrounding claim language

  4. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  5. Mangosoft v. Oracle

    525 F.3d 1327 (Fed. Cir. 2008)   Cited 24 times
    Finding further support for the proper construction in the prosecution history

  6. Tillotson, Ltd. v. Walbro Corp.

    831 F.2d 1033 (Fed. Cir. 1987)   Cited 40 times   1 Legal Analyses
    Holding that summary judgment was improperly granted "in view of the need for careful interpretation of the original and reissue claims in light of the specification, the prosecution history, and the alleged industry practice. . . ."

  7. Anderson v. Int. Eng. and Mfg., Inc.

    160 F.3d 1345 (Fed. Cir. 1998)   Cited 25 times
    Rejecting argument that reexamined claim "simply clarified the scope of the claim as originally granted" and reiterating that the proper inquiry is whether the original claims were as broad when issued, not whether specification could have supported claim as broadened in reexamination

  8. Beloit Corp. v. Valmet Oy

    742 F.2d 1421 (Fed. Cir. 1984)   Cited 24 times   4 Legal Analyses
    Noting we do not "sit to review what the Commission has not decided"

  9. Application of Geerdes

    491 F.2d 1260 (C.C.P.A. 1974)   Cited 11 times

    Patent Appeal No. 9118. February 21, 1974. Boris Haskell, Washington, D.C., attorney of record, for appellant. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Fred E. McKelvey, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. MILLER, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 2-4, 7, 8, 19, and 20 of application

  10. Glass v. Betsey

    3 U.S. 6 (1794)   Cited 3 times

    FEBRUARY TERM, 1794. For the Appellants, the case was briefly opened, upon the following principles. The question is of great importance; and extends to the whole judicial authority of the United States; for, if the admiralty has no jurisdiction, there can be no jurisdiction in any common law court. Nor is it material to distinguish the ownership of the vessel and cargo; since strangers, or aliens, in amity, are entitled equally with Americans to have their property protected by the laws. Vatt. B

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,350 times   1045 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 6,124 times   478 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 141 - Appeal to Court of Appeals for the Federal Circuit

    35 U.S.C. § 141   Cited 455 times   91 Legal Analyses
    Imposing no such requirement

  14. Section 314 - Institution of inter partes review

    35 U.S.C. § 314   Cited 375 times   632 Legal Analyses
    Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

  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 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)

  17. 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

  18. 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

  19. Section 1.906 - Scope of reexamination in inter partes reexamination proceeding

    37 C.F.R. § 1.906   Cited 4 times

    (a) Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112 . (b) Claims in an inter partes reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent. (c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in an inter partes

  20. Section 41.67 - Appellant's brief

    37 C.F.R. § 41.67   Cited 2 times

    (a) (1) Appellant(s) may once, within time limits for filing set forth in § 41.66 , file a brief and serve the brief on all other parties to the proceeding in accordance with § 1.903 of this title. (2) The brief must be signed by the appellant, or the appellant's duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 41.20(b)(2) . (b) An appellant's appeal shall stand dismissed upon failure of that appellant to file an appellant's brief, accompanied by the requisite

  21. Section 41.81 - Action following decision

    37 C.F.R. § 41.81   Cited 2 times

    The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board. 37 C.F.R. §41.81

  22. Section 1.983 - Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination

    37 C.F.R. § 1.983   Cited 2 times

    (a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied with the decision of the Patent Trial and Appeal Board may, subject to § 41.81 , appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Patent Trial and Appeal Board. (b) The appellant must take the following steps in such an appeal:

  23. Section 1.956 - Patent owner extensions of time in inter partes reexamination

    37 C.F.R. § 1.956   Cited 1 times

    The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition fee set forth in § 1.17(g) . See § 1.304(a) for extensions of time for filing a