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Ex Parte Marquez et al

12860867 (P.T.A.B. Mar. 27, 2017)
Ex Parte Marquez et al

15 Cited authorities

  1. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 341 times   43 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  2. Invitrogen Corp. v. Clontech Laboratories

    429 F.3d 1052 (Fed. Cir. 2005)   Cited 206 times   8 Legal Analyses
    Holding that a witness's conclusory assertion that the evidence demonstrated "conception, diligence and reduction to practice" did not carry a party's burden on summary judgment

  3. Brenner v. Manson

    383 U.S. 519 (1966)   Cited 112 times   7 Legal Analyses
    Holding that "a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion"

  4. In re Goodman

    11 F.3d 1046 (Fed. Cir. 1993)   Cited 71 times   2 Legal Analyses
    Holding that PTO actions did not dictate the rate of prosecution when Goodman accepted early issuance of species claims and filed a continuation application to prosecute genus claims

  5. In re Brana

    51 F.3d 1560 (Fed. Cir. 1995)   Cited 43 times   6 Legal Analyses
    Holding that patent applicants had established the utility of claimed therapeutic compounds by presenting in vitro test results and evidence of structural similarity to therapeutically useful compounds

  6. In re Fisher

    421 F.3d 1365 (Fed. Cir. 2005)   Cited 20 times   2 Legal Analyses
    Requiring that a claimed invention have "specific and substantial utility to satisfy § 101," and rejecting a claim to a gene sequence where the sequence has only been shown to have "biological activity"

  7. Application of Angstadt

    537 F.2d 498 (C.C.P.A. 1976)   Cited 33 times   7 Legal Analyses
    Holding that patent applicants are not required to enable every species encompassed by their claims

  8. In re Reuter

    670 F.2d 1015 (C.C.P.A. 1981)   Cited 25 times   1 Legal Analyses

    Appeal No. 80-604. June 18, 1981. Joseph F. Nakamura, Sol., Thomas E. Lynch, Associate Sol., Washington, D.C., for Patent and Trademark Office. Frederick A. Zoda, Trenton, N.J., atty., for appellants. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges. MILLER, Judge. This appeal is from a decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board") which affirmed the examiner's rejections of claims

  9. Application of Glass

    492 F.2d 1228 (C.C.P.A. 1974)   Cited 33 times   1 Legal Analyses
    Noting that enablement, or utility, is determined as of the application filing date

  10. In re Strahilevitz

    668 F.2d 1229 (C.C.P.A. 1982)   Cited 9 times

    Appeal No. 81-563. January 15, 1982. J. Philip Polster, St. Louis, Mo., for appellant. Joseph F. Nakamura, Sol., and Fred W. Sherling, Washington, D.C., for Patent and Trademark Office. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges. MILLER, Judge. The decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board") sustaining the rejection of claims 36-48 as unsupported by an adequate disclosure required

  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 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"

  13. 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

  14. Section 1.132 - Affidavits or declarations traversing rejections or objections

    37 C.F.R. § 1.132   Cited 104 times   14 Legal Analyses

    When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. 37 C.F.R. §1.132 65 FR 57057 , Sept. 20, 2000 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the

  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)