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Ex Parte 7582058 et al

95001247 (P.T.A.B. Mar. 15, 2013)
Ex Parte 7582058 et al

17 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,551 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. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,844 times   167 Legal Analyses
    Holding that "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence"

  3. Johnson Worldwide Assoc. v. Zebco Corp.

    175 F.3d 985 (Fed. Cir. 1999)   Cited 584 times
    Holding that "modifiers will not be added to broad terms standing alone"

  4. Lockwood v. American Airlines, Inc.

    107 F.3d 1565 (Fed. Cir. 1997)   Cited 304 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. Tronzo v. Biomet

    156 F.3d 1154 (Fed. Cir. 1998)   Cited 197 times   2 Legal Analyses
    Holding substantial evidence did not support finding that parent application provided written description of later-claimed genus encompassing any shape where it "tout[ed] the advantages of conical shape," mentioned other shapes only in reciting the prior art, and "specifically distinguishe[d] the prior art as inferior"

  6. In re Kubin

    561 F.3d 1351 (Fed. Cir. 2009)   Cited 134 times   10 Legal Analyses
    Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied

  7. Quantum Corp. v. Rodime, PLC

    65 F.3d 1577 (Fed. Cir. 1995)   Cited 119 times   2 Legal Analyses
    Holding that a change in a limitation from "at least 600 [tracks per inch (tpi)]" to "at least approximately 600 tpi" impermissibly broadened the claim

  8. In re Freeman

    30 F.3d 1459 (Fed. Cir. 1994)   Cited 98 times   4 Legal Analyses
    Explaining that "a court is not without some discretion to decide whether a particular case is appropriate for application of [issue preclusion]"

  9. Estee Lauder Inc. v. L'Oreal

    129 F.3d 588 (Fed. Cir. 1997)   Cited 60 times
    Holding that reduction to practice does not occur until inventor knows embodiment will work for its intended purposes

  10. In re Fritch

    972 F.2d 1260 (Fed. Cir. 1992)   Cited 30 times
    Stating "dependent claims are nonobvious if the independent claims from which they depend are nonobvious"

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,374 times   1046 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 6,133 times   479 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 314 - Institution of inter partes review

    35 U.S.C. § 314   Cited 377 times   632 Legal Analyses
    Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

  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 1.132 - Affidavits or declarations traversing rejections or objections

    37 C.F.R. § 1.132   Cited 104 times   14 Legal Analyses

    When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. 37 C.F.R. §1.132 65 FR 57057 , Sept. 20, 2000 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the

  16. Section 41.77 - Decisions and other actions by the Board

    37 C.F.R. § 41.77   Cited 16 times   3 Legal Analyses

    (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent