12 Cited authorities
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
598 F.3d 1336 (Fed. Cir. 2010) Cited 597 times 77 Legal AnalysesHolding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”
Vas-Cath Inc. v. Mahurkar
935 F.2d 1555 (Fed. Cir. 1991) Cited 394 times 3 Legal AnalysesHolding construction of § 112, ¶ 1 requires separate written description and enablement requirements
Lockwood v. American Airlines, Inc.
107 F.3d 1565 (Fed. Cir. 1997) Cited 301 times 6 Legal AnalysesHolding 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
Purdue Pharma L.P. v. Faulding Inc.
230 F.3d 1320 (Fed. Cir. 2000) Cited 76 times 6 Legal AnalysesHolding that the disclosure does not have to provide in kaec verba support in order to satisfy the written description requirement
In re Gosteli
872 F.2d 1008 (Fed. Cir. 1989) Cited 77 times 2 Legal AnalysesHolding that “[t]he CCPA's later decisions control because that court always sat en banc”
Application of Smith
458 F.2d 1389 (C.C.P.A. 1972) Cited 30 timesPatent Appeal No. 8590. May 18, 1972. Herbert B. Keil, Richard L. Johnston, Johnston, Root, O'Keeffe, Keil, Thompson Shurtleff, Chicago, Ill., attorneys of record, for appellant. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D.C., of counsel. Appeal from the Patent Office. Before RICH, ALMOND, BALDWIN and LANE, Judges, and RAO, Judge, United States Customs Court, sitting by designation. LANE, Judge. This appeal is from the decision of the Board of
Application of Barker
559 F.2d 588 (C.C.P.A. 1977) Cited 23 timesHolding that a broad claim requiring selecting a backing board having a length at least as long as six shingles is not supported by a specification contemplating only backing boards the length of eight or sixteen shingles
Section 112 - Specification
35 U.S.C. § 112 Cited 7,329 times 1038 Legal AnalysesRequiring 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
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,105 times 470 Legal AnalysesHolding 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."
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 184 times 63 Legal AnalysesGiving 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"
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
Section 41.50 - Decisions and other actions by the Board
37 C.F.R. § 41.50 Cited 34 times 30 Legal AnalysesRequiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing