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Ex Parte Wakisaka et al

13915811 (P.T.A.B. Dec. 21, 2018)
Ex Parte Wakisaka et al

16 Cited authorities

  1. Catalina Market. Intern. v. Coolsavings.com

    289 F.3d 801 (Fed. Cir. 2002)   Cited 660 times   5 Legal Analyses
    Holding that "the claims, specification, and prosecution history of the041 patent demonstrate that the preamble phrase `located at predesignated sites such as consumer stores' is not a limitation of Claim 1," for "the applicant did not rely on this phrase to define its invention nor is the phrase essential to understand limitations or terms in the claim body"

  2. Spectrum Intl., Inc. v. Sterilite Corp.

    164 F.3d 1372 (Fed. Cir. 1998)   Cited 300 times   1 Legal Analyses
    Noting that "explicit arguments made [by the applicant] during prosecution" are significant and that "by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover"

  3. Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.

    773 F.3d 1186 (Fed. Cir. 2014)   Cited 145 times   25 Legal Analyses
    Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"

  4. Dippin' Dots, Inc. v. Mosey

    476 F.3d 1337 (Fed. Cir. 2007)   Cited 149 times   3 Legal Analyses
    Holding that a Walker Process claimant must meet "higher threshold showings of both materiality and intent than are required to show inequitable conduct."

  5. Takeda Pharm. Co. v. Zydus Pharms. USA, Inc.

    743 F.3d 1359 (Fed. Cir. 2014)   Cited 95 times   3 Legal Analyses
    Finding no indefiniteness where "the variation arises from the difficulty in measuring the average diameter of particles that are not perfect spheres."

  6. In re Schreiber

    128 F.3d 1473 (Fed. Cir. 1997)   Cited 150 times   2 Legal Analyses
    Holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency

  7. Kustom Signals, Inc. v. Applied Concepts

    264 F.3d 1326 (Fed. Cir. 2001)   Cited 106 times   2 Legal Analyses
    Finding that "an additional function" precluded literal infringement where the claim language required exclusion of that function

  8. In re Clay

    966 F.2d 656 (Fed. Cir. 1992)   Cited 88 times   10 Legal Analyses
    Concluding that a reference was not reasonably pertinent where a PHOSITA "would not reasonably have expected to solve the [relevant] problem ... by considering" that reference

  9. In re Nordt Dev. Co.

    881 F.3d 1371 (Fed. Cir. 2018)   Cited 6 times   3 Legal Analyses

    2017-1445 02-08-2018 IN RE: NORDT DEVELOPMENT CO., LLC, Appellant Jeremy Cooper Doerre, Tillman Wright PLLC, Charlotte, NC, argued for appellant. Joseph Gerard Piccolo, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Joseph Matal. Also represented by Nathan K. Kelley, Alexandria, VA, Thomas W. Krause, William LaMarca, Alexandria, VA. Stoll, Circuit Judge. Jeremy Cooper Doerre, Tillman Wright PLLC, Charlotte, NC, argued for appellant. Joseph

  10. Application of Brown

    459 F.2d 531 (C.C.P.A. 1972)   Cited 18 times

    Patent Appeal No. 8621. May 18, 1972. William C. Long, David Dick, New York City, attorneys of record, for appellants. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Fred W. Sherling, Washington, D.C., of counsel. Appeal from the Patent Office Board of Appeals. Before RICH, ALMOND, BALDWIN and LANE, Judges, and RAO, Judge, United States Customs Court, sitting by designation. BALDWIN, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's

  11. 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

  12. 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."

  13. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,016 times   1014 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. 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"

  15. 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)