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Ex parte RAIKHEL et al.

07888367 (B.P.A.I. Jul. 16, 1998)
Ex parte RAIKHEL et al.

17 Cited authorities

  1. In re O'Farrell

    853 F.2d 894 (Fed. Cir. 1988)   Cited 168 times   9 Legal Analyses
    Finding patent obvious where the prior art provided a "reasonable expectation of success"

  2. In re Deuel

    51 F.3d 1552 (Fed. Cir. 1995)   Cited 52 times   5 Legal Analyses
    Commenting that scholars have been critical of Deuel, which "overly favored patent applicants in biotech by adopting an overly lax nonobviousness standard." ( citing Anita Varma David Abraham, DNA Is Different: Legal Obviousness and the Balance Between Biotech Inventors and the Market, 9 Harv. J.L. Tech. 53 (1996))

  3. In re Dow Chemical Co.

    837 F.2d 469 (Fed. Cir. 1988)   Cited 57 times   2 Legal Analyses
    Stating that the "five to six years of research that preceded the claimed invention" was entitled to fair evidentiary weight in a determination of nonobviousness

  4. In re Bell

    991 F.2d 781 (Fed. Cir. 1993)   Cited 32 times   1 Legal Analyses

    No. 92-1375. April 20, 1993. Robert P. Blackburn, Chiron Corp., Emeryville, CA, argued for appellant. With him on the brief were Debra A. Shetka and Thomas E. Ciotti, Morrison Foerster, Palo Alto, CA, and Donald S. Chisum, Morrison Foerster, Seattle, WA. Teddy S. Gron, Associate Sol., Office of the Sol., Arlington, VA, argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Of counsel were John W. Dewhirst, Lee E. Barrett, Richard E. Schafer and Albin F. Drost. Appeal from the Patent

  5. In re Katz

    687 F.2d 450 (C.C.P.A. 1982)   Cited 32 times   1 Legal Analyses
    Finding that patentee made a sufficient showing based on inventor's declaration that he was the sole inventor and explanation regarding the co-authors' contribution to the publication

  6. Application of Moore

    439 F.2d 1232 (C.C.P.A. 1971)   Cited 46 times
    Noting that the question is whether the scope of enablement conveyed by the disclosure to a person of ordinary skill in the art is commensurate with the scope of protection taught by the claims

  7. In re Eli Lilly & Co.

    902 F.2d 943 (Fed. Cir. 1990)   Cited 15 times
    Holding that an unexpected result in increasing the efficiency of feed utilization in ruminant animals was not sufficient when it was expected that the combination would increase weight gain in animals, as the prior art had invited experimentation in this area

  8. In re Ochiai

    71 F.3d 1565 (Fed. Cir. 1995)   Cited 8 times   2 Legal Analyses

    No. 92-1446. December 11, 1995. Harold C. Wegner, Foley Lardner, of Washington, D.C., argued for appellant. With him on the brief were Herbert I. Cantor and Douglas P. Mueller. Of counsel was Don J. Pelto. Fred E. McKelvey, Solicitor, Office of the Solicitor, of Arlington, Virginia, argued for appellee. Nancy J. Linck, Solicitor, of Arlington, Virginia, Lee E. Barrett, Associate Solicitor, John W. Dewhirst, Associate Solicitor, Albin F. Drost, Deputy Solicitor and Richard E. Schafer, Associate Solicitor

  9. In re Hoch

    428 F.2d 1341 (C.C.P.A. 1970)   Cited 20 times

    Patent Appeal No. 8323. July 30, 1970. Raymond F. Kramer, Buffalo, N.Y., Donald C. Studley, William J. Schramm, Niagara Falls, N.Y., attorneys of record, for appellant. Joseph Schimmel, Washington, D.C., for the Commissioner of Patents. Jack E. Armore, Washington, D.C., of counsel. Before RICH, ALMOND, BALDWIN and LANE, Judges, and FISHER, Chief Judge, Eastern District of Texas, sitting by designation. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the

  10. Application of Geerdes

    491 F.2d 1260 (C.C.P.A. 1974)   Cited 11 times

    Patent Appeal No. 9118. February 21, 1974. Boris Haskell, Washington, D.C., attorney of record, for appellant. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Fred E. McKelvey, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. MILLER, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 2-4, 7, 8, 19, and 20 of application

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,362 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 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,129 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."

  13. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,995 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. 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

  15. 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

  16. 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)