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Ex Parte Alcodray et al

12824552 (P.T.A.B. Jun. 13, 2016)
Ex Parte Alcodray et al

15 Cited authorities

  1. Typhoon Touch Technologies v. Dell, Inc.

    659 F.3d 1376 (Fed. Cir. 2011)   Cited 203 times
    Holding that a patent applicant narrowed its application in a response to the examiner's rejection on prior art grounds

  2. Microprocessor Enhancement Corp. v. Texas Instruments Inc.

    520 F.3d 1367 (Fed. Cir. 2008)   Cited 212 times   2 Legal Analyses
    Holding that, while there is a presumption that a claim term will be construed consistently when used throughout the claims, there is no requirement that a claim term be construed uniformly, particularly if it would lead to a “nonsensical reading”

  3. Ergo Licensing, LLC v. CareFusion 303, Inc.

    673 F.3d 1361 (Fed. Cir. 2012)   Cited 121 times   3 Legal Analyses
    Holding indefinite a claim reciting a computer-implemented means-plus-function term where "[t]he specification merely provide[d] functional language and d[id] not contain any step-by-step process" for performing the claimed function

  4. In re Schreiber

    128 F.3d 1473 (Fed. Cir. 1997)   Cited 150 times   2 Legal Analyses
    Holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency

  5. King Pharmaceuticals, Inc. v. Eon Labs, Inc.

    616 F.3d 1267 (Fed. Cir. 2010)   Cited 89 times   6 Legal Analyses
    Holding that a claimed step of informing someone about an inherent property of a method was printed matter

  6. Telcordia Tech. v. Cisco Systems

    612 F.3d 1365 (Fed. Cir. 2010)   Cited 89 times
    Holding that “controller” was sufficient disclosure because “[t]he record shows that an ordinary artisan would have recognized the controller as an electronic device with a known structure”

  7. In re Lowry

    32 F.3d 1579 (Fed. Cir. 1994)   Cited 17 times
    Holding that printed matter doctrine did not apply to sequences of bits stored in memory because the claims dictated how application programs manage information, not the information content of the memory

  8. Application of Bernhart

    417 F.2d 1395 (C.C.P.A. 1969)   Cited 38 times   1 Legal Analyses
    Discussing patentability of a programmed computer

  9. Application of Otto

    312 F.2d 937 (C.C.P.A. 1963)   Cited 2 times

    Patent Appeal No. 6901. February 13, 1963. Clarence M. Fisher, Pennie, Edmonds, Morton, Barrows Taylor, Washington, D.C. (John T. Roberts, Washington, D.C., of counsel), for appellants. Clarence W. Moore, Washington, D.C. (Joseph F. Nakamura, Washington, D.C., of counsel), for Commissioner of Patents. Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges. MARTIN, Judge. This is an appeal from the decision of the Patent Office Board of Appeals affirming the Primary Examiner's rejection

  10. 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

  11. 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."

  12. 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"

  13. 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"

  14. 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

  15. 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)