§

Ex Parte Kim et al

13327624 (P.T.A.B. Oct. 26, 2018)
Ex Parte Kim et al

10 Cited authorities

  1. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 599 times   77 Legal Analyses
    Holding 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]”

  2. Abbvie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.

    759 F.3d 1285 (Fed. Cir. 2014)   Cited 104 times   15 Legal Analyses
    Affirming verdict of invalidity for lack of written description because the patent disclosed only one very limited subgenus within a diverse claimed genus

  3. University, Rochester v. G.D. Searle Co.

    358 F.3d 916 (Fed. Cir. 2004)   Cited 138 times   6 Legal Analyses
    Holding the patent invalid because "Rochester did not present any evidence that the ordinarily skilled artisan would be able to identify any compound based on [the specification's] vague functional description"

  4. Enzo Biochem, Inc. v. Gen-Probe Inc.

    323 F.3d 956 (Fed. Cir. 2002)   Cited 120 times   12 Legal Analyses
    Granting petition for rehearing and vacating prior panel decision reported at 285 F.3d 1013 (Fed. Cir. 2002)

  5. Centocor Ortho Biotech v. Abbott Lab

    636 F.3d 1341 (Fed. Cir. 2011)   Cited 71 times   11 Legal Analyses
    Holding claims invalid for inadequate written description and reversing the denial of a post-verdict motion for judgment as a matter of law

  6. Amgen Inc. v. Sanofi, Aventisub LLC

    872 F.3d 1367 (Fed. Cir. 2017)   Cited 33 times   21 Legal Analyses
    Applying Ariad to a claimed genus

  7. Noelle v. Lederman

    355 F.3d 1343 (Fed. Cir. 2004)   Cited 33 times   9 Legal Analyses
    In Noelle, the applicant claimed a human monoclonal antibody (or fragment thereof) secreted from a particular hybridoma that binds to an antigen expressed on activated T-cells. The application did not, however, disclose any structural information about the human antigen.

  8. In re Wallach

    378 F.3d 1330 (Fed. Cir. 2004)   Cited 14 times   7 Legal Analyses
    Discussing how it is now a "routine matter" to convert an amino acid sequence into all the DNA sequences that can encode it

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,343 times   1041 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

  10. 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