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Ex Parte Chiang et al

11323964 (B.P.A.I. Jul. 31, 2012)
Ex Parte Chiang et al

16 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,545 times   185 Legal Analyses
    Holding that, in an obviousness analysis, "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it"

  2. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,178 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 394 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  4. 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

  5. Purdue Pharma L.P. v. Faulding Inc.

    230 F.3d 1320 (Fed. Cir. 2000)   Cited 76 times   6 Legal Analyses
    Holding that the disclosure does not have to provide in kaec verba support in order to satisfy the written description requirement

  6. Union Oil of Cal. v. Atlantic Richfield

    208 F.3d 989 (Fed. Cir. 2000)   Cited 77 times   2 Legal Analyses
    Concluding that the application need only contain information sufficient for “persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed”

  7. Reiffin v. Microsoft Corp.

    214 F.3d 1342 (Fed. Cir. 2000)   Cited 73 times
    In Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345-46 (Fed. Cir. 2000), the court explained the need "to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification."

  8. In re Gosteli

    872 F.2d 1008 (Fed. Cir. 1989)   Cited 78 times   2 Legal Analyses
    Holding that “[t]he CCPA's later decisions control because that court always sat en banc”

  9. Application of Wertheim

    541 F.2d 257 (C.C.P.A. 1976)   Cited 81 times   7 Legal Analyses
    Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"

  10. In re Rijckaert

    9 F.3d 1531 (Fed. Cir. 1993)   Cited 22 times   4 Legal Analyses

    No. 93-1206. November 23, 1993. Edward W. Goodman, North American Philips Corp., of Tarrytown, NY, argued for appellant. With him on the brief was Algy Tamoshunas. Lee E. Barrett, Associate Sol., Office of the Sol., Arlington, VA, argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Appeal from the Patent and Trademark Office. Before MAYER and LOURIE, Circuit Judges, and LAY, Senior Circuit Judge. Honorable Donald P. Lay, Senior Circuit Judge, United States Court of Appeals for the

  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 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)