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INTERNATIONAL BUSINESS MACHINES CORPORATION

15068891 - (D) (P.T.A.B. Feb. 28, 2020)
INTERNATIONAL BUSINESS MACHINES CORPORATION

10 Cited authorities

  1. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 395 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  2. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 342 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. Falko-Gunter Falkner v. Inglis

    448 F.3d 1357 (Fed. Cir. 2006)   Cited 89 times   16 Legal Analyses
    Holding that where “accessible literature sources clearly provided” a description of the teachings at issue, the written description requirement does not require their incorporation by reference

  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. In re Wright

    866 F.2d 422 (Fed. Cir. 1989)   Cited 31 times   3 Legal Analyses
    Recognizing that fact that exact words in question are not in specification is "not important"

  6. Application of Miller

    441 F.2d 689 (C.C.P.A. 1971)   Cited 11 times

    Patent Appeal No. 8444. May 13, 1971. Jay P. Friedenson, Morristown, N.J., attorney of record, for appellant. S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Joseph F. Nakamura, Washington, D.C., of counsel. Before RICH, ALMOND, BALDWIN and LANE, Judges, and FORD, Judge, United States Customs Court, sitting by designation. RICH, Judge. This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 1, 2, and 4-18 in appellant's

  7. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,383 times   1047 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

  8. 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"

  9. 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

  10. 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)