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Ex Parte Baumgartner et al

11866110 (B.P.A.I. May. 4, 2012)
Ex Parte Baumgartner et al

15 Cited authorities

  1. Catalina Market. Intern. v. Coolsavings.com

    289 F.3d 801 (Fed. Cir. 2002)   Cited 657 times   5 Legal Analyses
    Holding that "the claims, specification, and prosecution history of the041 patent demonstrate that the preamble phrase `located at predesignated sites such as consumer stores' is not a limitation of Claim 1," for "the applicant did not rely on this phrase to define its invention nor is the phrase essential to understand limitations or terms in the claim body"

  2. In re Donaldson Co., Inc.

    16 F.3d 1189 (Fed. Cir. 1994)   Cited 206 times   6 Legal Analyses
    Holding that 35 U.S.C. § 112 ¶ 6, which limits means-plus-function claims to the structures described in the specification and their equivalents, "applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court"

  3. American Medical Systems v. Biolitec

    618 F.3d 1354 (Fed. Cir. 2010)   Cited 123 times   2 Legal Analyses
    Holding that the term "photoselective vaporization" as used in the preamble was simply "a label for the overall invention and not a limitation on the claims"

  4. In re Morris

    127 F.3d 1048 (Fed. Cir. 1997)   Cited 49 times   7 Legal Analyses
    Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness

  5. In re Ferguson

    558 F.3d 1359 (Fed. Cir. 2009)   Cited 27 times   3 Legal Analyses
    Reaffirming that the "useful, concrete, and tangible" result test has no continuing validity

  6. In re Zletz

    893 F.2d 319 (Fed. Cir. 1990)   Cited 42 times   3 Legal Analyses
    Holding that claims failing this test during prosecution must be rejected under § 112, ¶ 2

  7. In re Ngai

    367 F.3d 1336 (Fed. Cir. 2004)   Cited 15 times   1 Legal Analyses
    Noting that allowing claims where the printed matter was the only novel contribution would allow "anyone [to] continue patenting a product indefinitely provided that they add a new instruction sheet to the product"

  8. In re Warmerdam

    33 F.3d 1354 (Fed. Cir. 1994)   Cited 20 times
    Holding unpatentable a process for controlling objects to avoid collisions which described “nothing more than the manipulation of basic mathematical constructs, the paradigmatic ‘abstract idea’ ”

  9. In re Gulack

    703 F.2d 1381 (Fed. Cir. 1983)   Cited 31 times   1 Legal Analyses
    Holding that even though the claim included printed matter, the printed matter was still entitled to patentable weight because there was a functional relationship between the printed matter and its underlying substrate

  10. Application of Gyurik

    596 F.2d 1012 (C.C.P.A. 1979)   Cited 11 times

    Appeal No. 78-615. April 12, 1979. Stuart R. Suter, Philadelphia, Pa., attorney of record, for appellants. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, Jack E. Armore, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, and MILLER, Judges. Judge Lane took no part in the decision in this matter. MARKEY, Chief Judge. Appeal from the decision of the Patent and Trademark Office (PTO)

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,995 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  12. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,493 times   2273 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  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 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)