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Ex Parte DiCaprio et al

13701431 (P.T.A.B. Mar. 22, 2019)
Ex Parte DiCaprio et al

9 Cited authorities

  1. 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

  2. Atlas Powder Co. v. E.I. du Pont De Nemours & Co.

    750 F.2d 1569 (Fed. Cir. 1984)   Cited 243 times   6 Legal Analyses
    Finding of enablement is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive

  3. Lindemann Maschinenfabrik v. Am. Hoist

    730 F.2d 1452 (Fed. Cir. 1984)   Cited 199 times   4 Legal Analyses
    Holding that claims are not to be treated as "mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning"

  4. Carnegie Mellon v. Hoffmann-La

    541 F.3d 1115 (Fed. Cir. 2008)   Cited 92 times   4 Legal Analyses
    Holding that the narrow description of the E. coli polA gene did not adequately support a broad claim to the gene from any bacterial source

  5. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 91 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  6. In re Buchner

    929 F.2d 660 (Fed. Cir. 1991)   Cited 16 times
    Ruling that "an expert's opinion on the ultimate legal issue [of enablement] must be supported by something more than a conclusory statement."

  7. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,374 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

  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