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Ex Parte 7010508 et al

90012671 (P.T.A.B. Apr. 17, 2015)
Ex Parte 7010508 et al

25 Cited authorities

  1. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,813 times   166 Legal Analyses
    Holding that "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence"

  2. Festo Corp. v. Shoketsu Kinzoku Kogyokabushiki Co.

    535 U.S. 722 (2002)   Cited 819 times   39 Legal Analyses
    Holding that "[t]he scope of a patent is not limited to its literal terms but instead embraces all equivalents to the claims described," because "[t]he language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty."

  3. Omega Engineering, Inc v. Raytek Corp.

    334 F.3d 1314 (Fed. Cir. 2003)   Cited 1,186 times   11 Legal Analyses
    Holding that the doctrine of prosecution disclaimer does not extend to situations where the supposed disavowal of claim scope is ambiguous

  4. Southwall Techs., Inc. v. Cardinal IG Co.

    54 F.3d 1570 (Fed. Cir. 1995)   Cited 972 times   8 Legal Analyses
    Holding that "sputter-deposited dielectric" could not be formed by a two-step process because patentee argued during prosecution that it was formed by a one-step process

  5. Lockwood v. American Airlines, Inc.

    107 F.3d 1565 (Fed. Cir. 1997)   Cited 302 times   6 Legal Analyses
    Holding that "[e]ach application in the chain must describe the claimed features" and that if "one of the intervening applications does not describe" the subject matter, the later application cannot claim the benefit of the earlier application

  6. Hoganas AB v. Dresser Indus., Inc.

    9 F.3d 948 (Fed. Cir. 1994)   Cited 180 times
    Finding patentee's proposed definition unsupported in the specification or prosecution history

  7. 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

  8. Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.

    796 F.2d 443 (Fed. Cir. 1986)   Cited 145 times
    Holding that the term "smooth," in light of the intrinsic record, "means smooth enough to serve the inventor's purpose"

  9. In re NTP, Inc.

    654 F.3d 1268 (Fed. Cir. 2011)   Cited 48 times   2 Legal Analyses
    Holding "priority can be considered and determined during reexamination proceedings," which are governed by similar statutory language

  10. In re Icon Health

    496 F.3d 1374 (Fed. Cir. 2007)   Cited 46 times   3 Legal Analyses
    Concluding that "[a]nalogous art to Icon's application," which related to "a treadmill with a folding mechanism and a means for retaining that mechanism in the folded position," included "any area describing hinges, springs, latches, counterweights, or other similar mechanisms—such as the folding bed in" the prior art

  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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,990 times   998 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. Section 120 - Benefit of earlier filing date in the United States

    35 U.S.C. § 120   Cited 600 times   109 Legal Analyses
    Granting an earlier priority date to later applications for inventions that were disclosed in a previous application

  15. Section 305 - Conduct of reexamination proceedings

    35 U.S.C. § 305   Cited 175 times   12 Legal Analyses
    Noting that "reexamination will be conducted according to the procedures established for initial examination under the provisions of Sections 132 and 133"

  16. 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

  17. Section 1.56 - Duty to disclose information material to patentability

    37 C.F.R. § 1.56   Cited 858 times   69 Legal Analyses
    Adopting broad standard of materiality requiring that information not be cumulative

  18. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  19. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  20. 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)