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Ex Parte EDELSTEIN et al

15151260 (P.T.A.B. Feb. 28, 2019)
Ex Parte EDELSTEIN et al

16 Cited authorities

  1. Williamson v. Citrix Online, LLC

    792 F.3d 1339 (Fed. Cir. 2015)   Cited 631 times   28 Legal Analyses
    Holding that a means-plus-function term is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim"

  2. Datamize, LLC v. Plumtree Software, Inc.

    417 F.3d 1342 (Fed. Cir. 2005)   Cited 588 times   13 Legal Analyses
    Holding claim term “aesthetically pleasing” indefinite because, even though the preferred embodiment provided “examples of aesthetic features of screen displays that can be controlled by the authoring system,” the specification did not indicate “what selection of these features would be ‘aesthetically pleasing’ ”

  3. Interval Licensing LLC v. AOL, Inc.

    766 F.3d 1364 (Fed. Cir. 2014)   Cited 429 times   10 Legal Analyses
    Holding terms of degree are not inherently indefinite as long as claim language provides enough certainty to one of skill in art when read in context of invention

  4. Noah Sys., Inc. v. Intuit Inc.

    675 F.3d 1302 (Fed. Cir. 2012)   Cited 220 times   4 Legal Analyses
    Holding that because Noah had made the same indefiniteness arguments during claim construction before the district court, waiver did not apply

  5. In re Skvorecz

    580 F.3d 1262 (Fed. Cir. 2009)   Cited 50 times
    Finding that the phrase "at the separation" "d[id] not require further antecedent basis" because "a person skilled in the field of the invention would understand the claim when viewed in the context of the specification"

  6. In re Packard

    751 F.3d 1307 (Fed. Cir. 2014)   Cited 36 times   11 Legal Analyses
    Addressing the issues separately

  7. In re Aoyama

    656 F.3d 1293 (Fed. Cir. 2011)   Cited 39 times   2 Legal Analyses
    Holding patent application invalid as indefinite because patent application failed to disclose an algorithm despite patent specification's explanation that each component of the invention could be implemented in hardware or software that included ASICs and FPGAs as examples of such hardware

  8. In re Watkinson

    900 F.2d 230 (Fed. Cir. 1990)   Cited 5 times   1 Legal Analyses

    No. 89-1537. March 30, 1990. Steven B. Kelber, Oblon, Spivak, McClelland, Maier Neustadt, P.C., Arlington, Va., argued for appellant. John W. Dewhirst, Associate Sol., Office of Sol., Arlington, Va., argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Appeal from the Board of Patent Appeals and Interferences. Before ARCHER and MICHEL, Circuit Judges, and BALDWIN, Senior Circuit Judge. BALDWIN, Senior Circuit Judge. Sarah C. Watkinson (Watkinson) appeals the decision of the Board

  9. Application of Searles

    422 F.2d 431 (C.C.P.A. 1970)   Cited 7 times

    Patent Appeal No. 8211. March 5, 1970. Dos T. Hatfield, Washington, D.C., attorney of record, for appellant, Thomas W. Underhill, Boston, of counsel. Joseph Schimmel, Washington, D.C., for Commissioner of Patents, S. Wm. Cochran, Washington, D.C., of counsel. Before RICH, Acting Chief Judge, ALMOND, BALDWIN, LANE, Judges, and MATTHEWS, Senior Judge, United States District Court for the District of Columbia, sitting by designation. BALDWIN, Judge. This appeal is from the decision of the Patent Office

  10. Application of Wilson

    424 F.2d 1382 (C.C.P.A. 1970)   Cited 3 times
    Noting that the court cannot ignore the specific language in a claim

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,363 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

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

    35 U.S.C. § 103   Cited 6,130 times   479 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."

  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)