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Ex Parte 8101808 et al

95000666 (P.T.A.B. Aug. 30, 2016)
Ex Parte 8101808 et al

23 Cited authorities

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

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 604 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. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 395 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  3. Lockwood v. American Airlines, Inc.

    107 F.3d 1565 (Fed. Cir. 1997)   Cited 303 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

  4. ICU Medical, Inc. v. Alaris Medical Systems, Inc.

    558 F.3d 1368 (Fed. Cir. 2009)   Cited 179 times   8 Legal Analyses
    Finding that importing limitations from the specification into the claims may be proper where the specification "repeatedly and uniformly describes the spike as a pointed instrument for the purpose of piercing a seal inside the valve."

  5. In re Mouttet

    686 F.3d 1322 (Fed. Cir. 2012)   Cited 86 times   4 Legal Analyses
    Finding "the Board's determination that eliminating the optical components of Falk would not destroy its principle of operation to be supported by substantial evidence"

  6. In re Gurley

    27 F.3d 551 (Fed. Cir. 1994)   Cited 102 times   3 Legal Analyses
    Upholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."

  7. 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”

  8. In re Icon Health

    496 F.3d 1374 (Fed. Cir. 2007)   Cited 46 times   3 Legal Analyses
    Concluding that "[a]nalogous art to Icon's application," which related to "a treadmill with a folding mechanism and a means for retaining that mechanism in the folded position," included "any area describing hinges, springs, latches, counterweights, or other similar mechanisms—such as the folding bed in" the prior art

  9. 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

  10. In re Alton

    76 F.3d 1168 (Fed. Cir. 1996)   Cited 49 times   1 Legal Analyses
    Holding that when the examiner alleges that the claimed embodiment is outside the scope of the specification, he "need only establish this fact to make out a prima facie case"

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,362 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 6,129 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 141 - Appeal to Court of Appeals for the Federal Circuit

    35 U.S.C. § 141   Cited 455 times   91 Legal Analyses
    Imposing no such requirement

  14. Section 311 - Inter partes review

    35 U.S.C. § 311   Cited 404 times   190 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  15. 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"

  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 41.79 - Rehearing

    37 C.F.R. § 41.79   Cited 5 times

    (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of: (1) The original decision of the Board under § 41.77(a) , (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2) , (3) The expiration of the time for the owner to take action under § 41.77(b)(2) , or (4) The new decision of the Board under § 41.77(f) . (b) (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked

  18. Section 1.906 - Scope of reexamination in inter partes reexamination proceeding

    37 C.F.R. § 1.906   Cited 4 times

    (a) Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112 . (b) Claims in an inter partes reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent. (c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in an inter partes

  19. Section 41.81 - Action following decision

    37 C.F.R. § 41.81   Cited 2 times

    The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board. 37 C.F.R. §41.81

  20. Section 1.983 - Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination

    37 C.F.R. § 1.983   Cited 2 times

    (a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied with the decision of the Patent Trial and Appeal Board may, subject to § 41.81 , appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Patent Trial and Appeal Board. (b) The appellant must take the following steps in such an appeal:

  21. Section 90.1 - Scope

    37 C.F.R. § 90.1   Cited 2 times

    The provisions herein govern judicial review for Patent Trial and Appeal Board decisions under chapter 13 of title 35, United States Code. Judicial review of decisions arising out of inter partes reexamination proceedings that are requested under 35 U.S.C. 311 , and where available, judicial review of decisions arising out of interferences declared pursuant to 35 U.S.C. 135 continue to be governed by the pertinent regulations in effect on July 1, 2012. 37 C.F.R. §90.1

  22. Section 41.68 - Respondent's brief

    37 C.F.R. § 41.68

    (a) (1) Respondent(s) in an appeal may once, within the time limit for filing set forth in § 41.66 , file a respondent brief and serve the brief on all parties in accordance with § 1.903 of this title. (2) The brief must be signed by the party, or the party's duly authorized attorney or agent, and must be accompanied by the requisite fee set forth in § 41.20(b)(2) . (3) The respondent brief shall be limited to issues raised in the appellant brief to which the respondent brief is directed. (4) A requester's