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Ex Parte Boleyn et al

10211047 (P.T.A.B. Jul. 30, 2014)
Ex Parte Boleyn et al

10 Cited authorities

  1. IPXL Holdings, L.L.C. v. Amazon.com, Inc.

    430 F.3d 1377 (Fed. Cir. 2005)   Cited 265 times   15 Legal Analyses
    Holding claims at issue as indefinite because they simultaneously claimed an apparatus and method steps

  2. In re Jung

    637 F.3d 1356 (Fed. Cir. 2011)   Cited 24 times   4 Legal Analyses
    Holding the prima facie case during patent examination “is merely a procedural device that enables an appropriate shift of the burden of production” from the PTO to the patent applicant

  3. In re Sullivan

    498 F.3d 1345 (Fed. Cir. 2007)   Cited 22 times   2 Legal Analyses
    Considering inventor testimony regarding unexpected properties and holding that Board erred by not considering inventor declaration

  4. In re Glaug

    283 F.3d 1335 (Fed. Cir. 2002)   Cited 13 times   2 Legal Analyses

    Nos. 00-1571, 08/455,374. DECIDED: March 15, 2002. Appeal from the decision of Patent and Trademark Office (PTO) Board of Patent Appeals. Meredith Martin Addy, Brinks, Hofer Gilson Lione, of Chicago, IL, argued for appellants. With her on the brief were Robert N. Carpenter and Henry L. Brinks. Linda Moncys Isacson, Associate Solicitor, Office of the Solicitor, Patent and Trademark Office, of Arlington, VA, argued for appellee. With her on the brief was John M. Whealan, Solicitor, and Mary Critharis

  5. Chester v. Miller

    906 F.2d 1574 (Fed. Cir. 1990)   Cited 19 times   2 Legal Analyses

    No. 90-1039. June 29, 1990. Marina V. Schneller, Mobil Oil Corp., Fairfax, Va., argued, for appellants. With her on the brief, was Alexander J. McKillop. Thomas G. De Jonghe, Chevron Corp., San Francisco, Cal., argued, for appellees. Appeal from the United States Patent and Trademark Office. Before MICHEL, Circuit Judge, BALDWIN, Senior Circuit Judge, and WILL, Senior District Judge. The Honorable Hubert L. Will, Senior District Judge, United States District Court for the Northern District of Illinois

  6. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,143 times   481 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."

  7. Section 132 - Notice of rejection; reexamination

    35 U.S.C. § 132   Cited 310 times   47 Legal Analyses
    Prohibiting addition of "new matter"

  8. 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"

  9. 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

  10. 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