§

Medtronic, Inc.

2021003873 (P.T.A.B. Feb. 2, 2022)
Medtronic, Inc.

18 Cited authorities

  1. 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

  2. Net Moneyin v. Verisign

    545 F.3d 1359 (Fed. Cir. 2008)   Cited 279 times   6 Legal Analyses
    Holding that, to anticipate, a single prior art reference must not only disclose all the limitations claimed but also must disclose those limitations "arranged or combined in the same way as recited in the claim"

  3. Ormco Corp. v. Align Technology, Inc.

    463 F.3d 1299 (Fed. Cir. 2006)   Cited 203 times   5 Legal Analyses
    Holding that evidence that success was due to prior art features rebutted the presumption

  4. Sibia Neurosciences v. Cadus Pharm

    225 F.3d 1349 (Fed. Cir. 2000)   Cited 132 times
    Holding that motivation to modify a prior art reference may derive from the knowledge of one of ordinary skill in the art

  5. In re O'Farrell

    853 F.2d 894 (Fed. Cir. 1988)   Cited 167 times   9 Legal Analyses
    Finding patent obvious where the prior art provided a "reasonable expectation of success"

  6. Life Tech. v. Clontech Lab., Inc.

    224 F.3d 1320 (Fed. Cir. 2000)   Cited 101 times
    Finding inventors' interpretation of a reference's teaching was merely an argument the patent examiner was free to reject and could not "give rise to a determination of inequitable conduct"

  7. In re Vaeck

    947 F.2d 488 (Fed. Cir. 1991)   Cited 75 times   1 Legal Analyses
    Holding the examiner did not err in rejecting as nonenabled claims drawn to all genetically-engineered cyanobacteria expressing a given protein because the claimed 150 genera of cyanobacteria represent a vast, diverse, and poorly understood group; heterologous gene expression in cyanobacteria was "unpredictable"; and the patent's disclosure referred to only a genus

  8. In re Merck Co., Inc.

    800 F.2d 1091 (Fed. Cir. 1986)   Cited 70 times   2 Legal Analyses
    Holding that a person of skill in the art would have expected amitriptyline to resemble imipramine in the alleviation of depression in humans because of the drugs’ close structural similarity and similar use

  9. In re Epstein

    32 F.3d 1559 (Fed. Cir. 1994)   Cited 47 times
    Finding “no clear error” in the Board's fact finding that writings dated after the filing date demonstrated the level of skill in the art at the time of the invention

  10. Therasense v. Becton

    593 F.3d 1289 (Fed. Cir. 2010)   Cited 18 times
    Finding that the patentee was not entitled to a presumption of nexus because the product embodied at least two patented inventions, and the burden thus remained on the patentee to show that the product’s success was due to the invention claimed in the patent asserted in the case

  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 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

  16. 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)

  17. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and