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Ex Parte Muhlhoff et al

10566009 (P.T.A.B. Jun. 28, 2018)
Ex Parte Muhlhoff et al

10 Cited authorities

  1. Pall Corp. v. Micron Separations, Inc.

    66 F.3d 1211 (Fed. Cir. 1995)   Cited 306 times   2 Legal Analyses
    Finding that a position taken to establish patentability in view of prior art is a "substantive position on the technology for which a patent is sought, and will generally generate an estoppel," while arguments made in order to more particularly point out the applicant's invention are "not presumed to raise an estoppel"

  2. 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."

  3. Cohesive Tech. v. Waters Corp.

    543 F.3d 1351 (Fed. Cir. 2008)   Cited 156 times   4 Legal Analyses
    Holding anticipation and obviousness are distinct inquiries

  4. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 91 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  5. Accentra, Inc. v. Staples, Inc.

    500 F. App'x 922 (Fed. Cir. 2013)   Cited 13 times

    2012-1237 2012-1264 01-04-2013 ACCENTRA, INC., AND WORKTOOLS, INC., Plaintiffs-Cross Appellants, v. STAPLES, INC., AND STAPLES THE OFFICE SUPERSTORE, LLC, Defendants-Appellants. JOSEPH F. POSILLICO, Fox Rothschild, LLP, of Philadelphia, Pennsylvania, argued for plaintiffs-cross appellants. With him on the brief was FRANK T. CARROLL. BARBARA L. MOORE, Cooley Manion Jones LLP, of Boston, Massachusetts, argued for defendants-appellants. Of counsel on the brief were DAVID COTTA, ANDREW T. O'CONNOR and

  6. 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

  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 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"

  10. 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