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Ex Parte Xia et al

12713604 (P.T.A.B. Sep. 30, 2016)
Ex Parte Xia et al

21 Cited authorities

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

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 600 times   78 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. Amgen Inc. v. Hoechst Marion Roussel, Inc.

    314 F.3d 1313 (Fed. Cir. 2003)   Cited 504 times   14 Legal Analyses
    Holding that “non-naturally occurring” and “not isolated” were structural elements defining the source of the claimed material, rather than steps for obtaining it

  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. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 339 times   43 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  5. Santarus, Inc. v. Par Pharm., Inc.

    694 F.3d 1344 (Fed. Cir. 2012)   Cited 68 times   15 Legal Analyses
    Finding that "[d]ue to breaks in the chain of priority," the "[parent] patent [was] prior art for some of the asserted claims"

  6. Inphi Corp. v. Netlist, Inc.

    805 F.3d 1350 (Fed. Cir. 2015)   Cited 18 times   7 Legal Analyses
    In Inphi, we confirmed that the written description requirement is satisfied where " ‘the essence of the original disclosure’ conveys the necessary information—‘regardless of how it’ conveys such information, and regardless of whether the disclosure's ‘words [a]re open to different interpretation[s].’ "

  7. In re McDaniel

    293 F.3d 1379 (Fed. Cir. 2002)   Cited 28 times   3 Legal Analyses
    Noting "the Board is free to select a single claim from each group of claims subject to a common ground of rejection as representative of all claims in that group and to decide the appeal of that rejection based solely on the selected representative claim" in the absence of a clear statement asserting separate patentability of the claims

  8. Hyatt v. Dudas

    551 F.3d 1307 (Fed. Cir. 2008)   Cited 9 times   1 Legal Analyses
    Noting that the final judgment rule applies in section 145 cases

  9. Application of Smith

    458 F.2d 1389 (C.C.P.A. 1972)   Cited 30 times

    Patent 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

  10. Application of Edwards

    568 F.2d 1349 (C.C.P.A. 1978)   Cited 17 times

    Appeal No. 77-532. January 12, 1978. As Amended January 18, 1978. James L. Bailey, Houston, Tex., attorney of record, for appellants. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, Fred W. Sherling, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. LANE, Judge. This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the final

  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 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"

  15. 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

  16. Section 1.111 - Reply by applicant or patent owner to a non-final Office action

    37 C.F.R. § 1.111   Cited 86 times   6 Legal Analyses
    Regarding Application No. 15/892, 603

  17. 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

  18. 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

  19. 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)