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Ex Parte Merchav et al

12230566 (P.T.A.B. Aug. 2, 2016)
Ex Parte Merchav et al

13 Cited authorities

  1. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 613 times   78 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  2. Amgen Inc. v. Hoechst Marion Roussel, Inc.

    314 F.3d 1313 (Fed. Cir. 2003)   Cited 506 times   14 Legal Analyses
    Holding that “non-naturally occurring” and “not isolated” were structural elements defining the source of the claimed material, rather than steps for obtaining it

  3. Lizardtech, Inc. v. Earth Resource Mapping

    424 F.3d 1336 (Fed. Cir. 2005)   Cited 155 times   3 Legal Analyses
    Holding that "[a]fter reading the patent, a person of skill in the art would not understand" the patentee to have invented a generic method where the patent only disclosed one embodiment of it

  4. In re Gurley

    27 F.3d 551 (Fed. Cir. 1994)   Cited 102 times   3 Legal Analyses
    Upholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."

  5. In re Fine

    837 F.2d 1071 (Fed. Cir. 1988)   Cited 68 times   1 Legal Analyses
    Reversing the Board's determination that dependent claims were invalid because "[d]ependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious."

  6. In re Kaslow

    707 F.2d 1366 (Fed. Cir. 1983)   Cited 75 times
    Holding that prior demonstration of computerized supermarket UPC code system was prior use under meaning of Section 102(b)

  7. Application of Swinehart

    439 F.2d 210 (C.C.P.A. 1971)   Cited 42 times   2 Legal Analyses
    Holding that the term "transparent" was definite because the disclosure, which showed that a substantial amount of infrared radiation was always transmitted even though the precise degree of transparency varied depending on certain factors, was sufficiently clear

  8. In re Hallman

    655 F.2d 212 (C.C.P.A. 1981)   Cited 1 times

    Appeal No. 81-524. July 16, 1981. Harry V. Strampel, Wallenstein, Spangenberg, Hattis Strampel, Sidney W. Russell, Arlington, Va., for appellant. Joseph F. Nakamura, Fred W. Sherling, Washington, D.C., for Board of Appeals. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges. MARKEY, Chief Judge. Appeal from the decision of the Patent and Trademark Office Board of Appeals ("board") sustaining the Examiner's rejection

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,394 times   1049 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

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

    35 U.S.C. § 103   Cited 6,148 times   482 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."

  11. 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"

  12. 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

  13. 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)