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Ex Parte Yoshida et al

12996275 (P.T.A.B. Sep. 20, 2018)
Ex Parte Yoshida et al

17 Cited authorities

  1. Shinseki v. Sanders

    556 U.S. 396 (2009)   Cited 4,669 times
    Holding that a "notice error" was harmless because the respondent "ha[d] not explained to the Veterans Court, to the Federal Circuit, or to us how the notice error to which he points could have made any difference"

  2. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 232 times   3 Legal Analyses
    Holding an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning

  3. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 88 times   1 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  4. In re Montgomery

    677 F.3d 1375 (Fed. Cir. 2012)   Cited 37 times   5 Legal Analyses
    Holding that "[c]laim construction is a question of law"

  5. In re Oetiker

    977 F.2d 1443 (Fed. Cir. 1992)   Cited 66 times   9 Legal Analyses
    Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

  6. In re Jung

    637 F.3d 1356 (Fed. Cir. 2011)   Cited 24 times   4 Legal Analyses
    Holding the prima facie case during patent examination “is merely a procedural device that enables an appropriate shift of the burden of production” from the PTO to the patent applicant

  7. In re Stepan Co.

    660 F.3d 1341 (Fed. Cir. 2011)   Cited 14 times

    No. 2010–1261.Reexamination Nos. 90/006,824 90/007,619. 2011-10-5 In re STEPAN COMPANY. Thomas J. Wimbiscus, McAndrews, Held & Malloy, Ltd. of Chicago, Illinois, argued for appellant. With him on the brief were George Wheeler, and Dennis H. Jaskoviak, Jr. Mary L. Kelly, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With her on the brief were, Raymond T. Chen, Solicitor, and Janet A. Gongola, Associate Solicitor. PROST Thomas J. Wimbiscus

  8. In re Chu

    66 F.3d 292 (Fed. Cir. 1995)   Cited 31 times   2 Legal Analyses
    Holding that a reference was properly considered prior art because the earlier filed application did not support the patent's claims, thereby precluding reliance on its earlier priority date

  9. In re Chapman

    595 F.3d 1330 (Fed. Cir. 2010)   Cited 12 times
    Remanding after correcting error in obviousness analysis

  10. Application of Samour

    571 F.2d 559 (C.C.P.A. 1978)   Cited 26 times
    Noting the rule in the § 103 context and declining to extend that rule to § 102(b) rejections

  11. 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."

  12. 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"

  13. 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

  14. 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)