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Ex Parte Burt et al

10881705 (B.P.A.I. Sep. 15, 2010)
Ex Parte Burt et al

18 Cited authorities

  1. Bilski v. Kappos

    561 U.S. 593 (2010)   Cited 820 times   160 Legal Analyses
    Holding claims directed to hedging risk ineligible

  2. Diamond v. Diehr

    450 U.S. 175 (1981)   Cited 537 times   130 Legal Analyses
    Holding a procedure for molding rubber that included a computer program is within patentable subject matter

  3. Gottschalk v. Benson

    409 U.S. 63 (1972)   Cited 502 times   59 Legal Analyses
    Holding claim involving mathematical formula invalid under § 101 that did not preempt a mathematical formula

  4. 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"

  5. Parker v. Flook

    437 U.S. 584 (1978)   Cited 369 times   63 Legal Analyses
    Holding narrow mathematical formula unpatentable

  6. In re Bilski

    545 F.3d 943 (Fed. Cir. 2008)   Cited 270 times   40 Legal Analyses
    Holding that non-preemption under the second step of what was then called the "Freeman –Walter –Abele test" requires that the claim be "tied to a particular machine or bring about a particular transformation of a particular article"

  7. Microsoft Corp. v. AT&T Corp.

    550 U.S. 437 (2007)   Cited 54 times   29 Legal Analyses
    Holding that Windows "software, uncoupled from a medium" was not a "combinable component" and that "a copy of Windows, not Windows in the abstract, qualifies as a 'component' under § 271(f)."

  8. In re Comiskey

    554 F.3d 967 (Fed. Cir. 2009)   Cited 83 times   5 Legal Analyses
    Holding that lack of statutory subject matter, a legal question, is a permissible alternative ground for affirmance of the Board

  9. In re Nuijten

    500 F.3d 1346 (Fed. Cir. 2007)   Cited 62 times   13 Legal Analyses
    Declining to import a tangible medium element into the claims directed to only encoded signals, which were unpatentable under § 101

  10. 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

  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 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

  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 41.52 - Rehearing

    37 C.F.R. § 41.52   Cited 7 times   9 Legal Analyses

    (a) (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by

  18. Section 1.197 - Termination of proceedings

    37 C.F.R. § 1.197   Cited 6 times

    (a) Proceedings on an application are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action except: (1) Where claims stand allowed in an application; or (2) Where the nature of the decision requires further action by the examiner. (b) The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or