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Ex Parte McWhinney et al

13462999 (P.T.A.B. Dec. 21, 2018)
Ex Parte McWhinney et al

20 Cited authorities

  1. Mayo Collaborative Servs. v. Prometheus Labs., Inc.

    566 U.S. 66 (2012)   Cited 815 times   153 Legal Analyses
    Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

  2. Ass'n for Molecular Pathology v. Myriad Genetics, Inc.

    569 U.S. 576 (2013)   Cited 461 times   148 Legal Analyses
    Holding that "a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated"

  3. Electric Power Group, LLC v. Alstom S.A.

    830 F.3d 1350 (Fed. Cir. 2016)   Cited 549 times   39 Legal Analyses
    Holding that claims directed to "a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions" are directed to an abstract idea

  4. Ultramercial, Inc. v. Hulu, LLC

    772 F.3d 709 (Fed. Cir. 2014)   Cited 500 times   47 Legal Analyses
    Holding that displaying an advertisement in exchange for access to copyrighted material is an abstract idea

  5. SAP Am., Inc. v. Investpic, LLC

    898 F.3d 1161 (Fed. Cir. 2018)   Cited 263 times   7 Legal Analyses
    Holding that an advance in financial mathematical techniques does not constitute an inventive concept

  6. Buysafe, Inc. v. Google, Inc.

    765 F.3d 1350 (Fed. Cir. 2014)   Cited 270 times   24 Legal Analyses
    Holding that claims "squarely about creating a contractual relationship" drew on idea of "ancient lineage," even where dependent claims "narrow[ed] to particular types of such relationships"

  7. In re Katz Interactive Call Proc. Patent

    639 F.3d 1303 (Fed. Cir. 2011)   Cited 289 times   16 Legal Analyses
    Holding that it is "not necessary to disclose more structure than the general purpose processor that performs those functions" because such functions are "coextensive with the structure disclosed."

  8. Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC

    874 F.3d 1329 (Fed. Cir. 2017)   Cited 221 times   10 Legal Analyses
    Holding that "[t]he claim uses a conventional ordering of steps—first processing the data, then routing it, controlling it, and monitoring its reception—with conventional technology to achieve its desired result."

  9. Intellectual Ventures I LLC v. Symantec Corp.

    838 F.3d 1307 (Fed. Cir. 2016)   Cited 215 times   7 Legal Analyses
    Holding claims ineligible where "the asserted claims do not contain any limitations that address" problems the specification purported to solve

  10. Synopsys, Inc. v. Mentor Graphics Corp.

    839 F.3d 1138 (Fed. Cir. 2016)   Cited 180 times   4 Legal Analyses
    Holding that an argument about the absence of complete preemption "misses the mark"

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

    35 U.S.C. § 103   Cited 6,143 times   481 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."

  12. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,012 times   1009 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,511 times   2284 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 1 - Establishment

    35 U.S.C. § 1   Cited 516 times   15 Legal Analyses
    Noting that Congress did not intend to change these "narrowing interpretations"

  15. 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"

  16. 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

  17. Section 1.136 - [Effective until 1/19/2025] 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)