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Ex Parte Grumann et al

09848713 (B.P.A.I. May. 29, 2012)
Ex Parte Grumann et al

17 Cited authorities

  1. Bilski v. Kappos

    561 U.S. 593 (2010)   Cited 830 times   160 Legal Analyses
    Holding claims directed to hedging risk ineligible

  2. Diamond v. Diehr

    450 U.S. 175 (1981)   Cited 542 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 505 times   59 Legal Analyses
    Holding claim involving mathematical formula invalid under § 101 that did not preempt a mathematical formula

  4. Parker v. Flook

    437 U.S. 584 (1978)   Cited 371 times   63 Legal Analyses
    Holding narrow mathematical formula unpatentable

  5. WMS Gaming Inc. v. International Game Technology

    184 F.3d 1339 (Fed. Cir. 1999)   Cited 538 times   7 Legal Analyses
    Holding that district court correctly determined structure was "an algorithm executed by a computer," but "erred by failing to limit the claim to the algorithm disclosed in the specification"

  6. Medical Instr. and Diagnostics v. Elekta

    344 F.3d 1205 (Fed. Cir. 2003)   Cited 328 times   1 Legal Analyses
    Holding that district court erred in finding that defendant failed to demonstrate the existence of an issue of material fact on obvious; noting, inter alia , that "[defendant's] expert's declaration quotes from several prior art articles that expressly discuss the combination of stereotaxy with computer imaging technologies"

  7. Lighting World v. Birchwood Lighting

    382 F.3d 1354 (Fed. Cir. 2004)   Cited 268 times   10 Legal Analyses
    Holding that "[t]he district judge is in a far better position to assess [litigation misconduct] than we are"

  8. Biomedino v. Waters

    490 F.3d 946 (Fed. Cir. 2007)   Cited 200 times   2 Legal Analyses
    Holding that "a bare statement that known techniques or methods can be used does not disclose structure"

  9. Harris Corp. v. Ericsson Inc.

    417 F.3d 1241 (Fed. Cir. 2005)   Cited 172 times   5 Legal Analyses
    Holding that while "[w]aiver is a procedural issue," the question of whether there has been "waiver of a claim construction argument . . . [is] indisputably unique to patent law"

  10. Welker Bearing Co. v. PHD, Inc.

    550 F.3d 1090 (Fed. Cir. 2008)   Cited 101 times
    Holding that means plus function claims are interpreted with reference to, and as limited by, the related structure disclosed in the patent for performing the function recited in the claim, or the equivalents thereof

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,406 times   1058 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 6,157 times   488 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 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,529 times   2290 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."

  14. 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"

  15. 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

  16. 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

  17. 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