§

Ex Parte Grayzel et al

13022503 (P.T.A.B. Dec. 30, 2015)
Ex Parte Grayzel et al

18 Cited authorities

  1. Cias, Inc. v. Alliance Gaming Corp.

    504 F.3d 1356 (Fed. Cir. 2007)   Cited 101 times
    Holding that argument to PTO on reexamination constituted disavowal of claim scope even though “no amendments were made”

  2. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 88 times   1 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  3. In re Klein

    647 F.3d 1343 (Fed. Cir. 2011)   Cited 19 times   1 Legal Analyses

    No. 2010-1411. June 6, 2011. Louis W. Tompros, Wilmer, Cutler, Pickering, Hale and Dorr, LLP, of Boston, MA, argued for appellant. With him on the brief were Larissa B. Park and Katherine B. Dirks. Christina J. Hieber, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for appellee. With her on the brief were Raymond T. Chen, Solicitor, and Robert J. McManus, Associate Solicitor. Before, NEWMAN, SCHALL, and LINN, Circuit Judges. SCHALL, Circuit Judge. Arnold

  4. Application of Brandstadter

    484 F.2d 1395 (C.C.P.A. 1973)   Cited 12 times

    Patent Appeal No. 8892. September 20, 1973. Roy C. Lipton, Kenneth B. Hamlin, Bell Telephone Labs. Inc., Murray Hill, N.J., for appellants. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Jere W. Sears, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1, 3-9, and

  5. In re Gray

    53 F.2d 520 (C.C.P.A. 1931)   Cited 22 times   1 Legal Analyses
    Noting that a closed transition term excludes elements not specified in the claim

  6. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,366 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

  7. 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."

  8. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,998 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  9. Section 132 - Notice of rejection; reexamination

    35 U.S.C. § 132   Cited 309 times   47 Legal Analyses
    Prohibiting addition of "new matter"

  10. 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"

  11. 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

  12. Section 1.181 - Petition to the Director

    37 C.F.R. § 1.181   Cited 52 times   17 Legal Analyses
    Allowing for petitions invoking the Director's supervisory authority

  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 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  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)

  16. Section 41.39 - Examiner's answer

    37 C.F.R. § 41.39   Cited 9 times   2 Legal Analyses

    (a)Content of examiner's answer. The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief. (1) An examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision), unless the examiner's answer expressly indicates that a ground of rejection has been withdrawn. (2) An examiner's answer

  17. Section 41.41 - Reply brief

    37 C.F.R. § 41.41   Cited 8 times   25 Legal Analyses

    (a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence

  18. Section 41.31 - Appeal to Board

    37 C.F.R. § 41.31   Cited 6 times   24 Legal Analyses

    (a)Who may appeal and how to file an appeal. An appeal is taken to the Board by filing a notice of appeal. (1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply. (2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November 29, 1999, any