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Ex Parte Decarreau et al

14220491 - (D) (P.T.A.B. Apr. 4, 2019)
Ex Parte Decarreau et al

14 Cited authorities

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

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 615 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 396 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 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

  4. Mentor Graphics Corp. v. Eve-USA, Inc.

    851 F.3d 1275 (Fed. Cir. 2017)   Cited 148 times   5 Legal Analyses
    Holding that "satisfaction of the Panduit factors satisifie[d] principles of apportionment" where, "on the undisputed facts of this record," it was clear the plaintiff’s damages were "tied to the worth of its patented features"

  5. Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.

    831 F.3d 1350 (Fed. Cir. 2016)   Cited 75 times   10 Legal Analyses
    Holding that a patent specification's listing of components not listed in a Markush group was insufficient to overcome the presumption created by "consisting of" claim language

  6. Blue Calypso, LLC v. Groupon, Inc.

    815 F.3d 1331 (Fed. Cir. 2016)   Cited 73 times   12 Legal Analyses
    Holding that petitioner failed to carry its burden of proving public accessibility of the allegedly invalidating reference

  7. Regeneron Pharms., Inc. v. Merus N.V.

    864 F.3d 1343 (Fed. Cir. 2017)   Cited 53 times   7 Legal Analyses
    In Regeneron, the court sanctioned the patentee, and pointed to nine instances of litigation misconduct, drawing an adverse inference as to specific intent to deceive the PTO.

  8. Application of Wertheim

    541 F.2d 257 (C.C.P.A. 1976)   Cited 81 times   7 Legal Analyses
    Holding that "[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others"

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,409 times   1062 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

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

    35 U.S.C. § 103   Cited 6,160 times   492 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."

  11. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 188 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"

  12. 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

  13. 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

  14. Section 1.136 - [Effective until 1/19/2025] 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)