September 2011
PTO May Consider § 112 Issues During Reexamination When Determining Entitlement to a Priority Claim
[Appealed from Board]
A Claim Error Obvious and Correctable from the Perspective of a Person of Ordinary Skill in the Art Held Not Invalid
[Appealed from N.D. Ga., Judge Thrash, Jr.]
Assignment of “Inventions and Discoveries” Disclosed in an Application Also Assigned Unrelated Application Covered by the Disclosure
[Appealed from E.D. Tex., Judge Ward]
Methods That Could Be Entirely Executed Mentally Found Unpatentable Under 35 U.S.C. § 101
[Appealed from N.D. Cal., Judge Patel]
§ 102(b) On-Sale Bar Does Not Require an Invention to Be Ready for Patenting When Offered for Sale
[Appealed from D. Minn., Chief Judge Davis]
Expiration of Patent Does Not Divest a Court of Jurisdiction in a § 291 Interference Proceeding
[Appealed from D. Del., Judge Robinson]
United States Waived Sovereign Immunity with Respect to DJ Patent Suits
[Appealed from E.D. Cal., Senior Judge Wanger]
Functional and Pharmaceutical Properties of a Lead Compound Can Be More Relevant Than Chemical Structure When Judging the Obviousness of a Patented Formulation Designed to Mimic an FDA-Approved Formulation
[Appealed from S.D.N.Y., Judge Patterson, Jr.]
Speculative and Tentative Disclosures in the Prior Art May Not Sufficiently Direct or Instruct a Skilled Artisan
[Appealed from D. Md., Senior Judge Garbis]
Means-Plus-Function Claim Lacking Corresponding Structure Rejected as Indefinite
[Appealed from Board]
No Reissue Recapture Where Reissue Claims Not Deemed Broader and Applicant Is Own Lexicographer
[Appealed from M.D. Tenn., Judge Haynes, Jr.]
Majority Holds § 101 Does Not Exclude Claims Directed to a Specific, Tangible Application; Judge Moore Finds Majority’s Analysis Incomplete
[Appealed from D. Md., Judge Quarles, Jr.]
| Abbreviations | |
| ALJ | Administrative Law Judge |
| ANDA | Abbreviated New Drug Application |
| APA | Administrative Procedures Act |
| APJ | Administrative Patent Judge |
| Board | Board of Patent Appeals and Interferences |
| Commissioner | Commissioner of Patents and Trademarks |
| CIP | Continuation-in-Part |
| DJ | Declaratory Judgment |
| DOE | Doctrine of Equivalents |
| FDA | Food and Drug Administration |
| IDS | Information Disclosure Statement |
| ITC | International Trade Commission |
| JMOL | Judgment as a Matter of Law |
| MPEP | Manual of Patent Examining Procedure |
| NDA | New Drug Application |
| PCT | Patent Cooperation Treaty |
| PTO | United States Patent and Trademark Office |
| SJ | Summary Judgment |
| TTAB | Trademark Trial and Appeal Board |
