Application of Harry Tanczyn’s Empirical Analysis

Citation profile

1 district ·

Most-quoted passages

The sentences later courts lift from this opinion, ranked by how many decisions quote each — the parts of the opinion doing the work. These counts are smaller than the citation total above because most of the 6 citing decisions cite the case generally; a passage count includes only decisions quoting that exact language verbatim.

1. “Those statements [regarding the scope of the invention that must be shown] were entirely valid ... as applied to the facts in Stempel where the reference showed a species of the generic invention being claimed.... We never intended by the language used in Stempel to authorize the overcoming of references by affidavits showing that the applicant had invented, prior to the reference date, a part, some parts, or even a combination of parts, used to create an embodiment of his claimed invention, where the part or parts are not within the scope of the claims being sought.... The primary consideration is whether, in addition to showing what the reference shows, the affidavit also establishes possession of either the whole invention claimed or something falling within the claim, in the sense that'the claim as a whole reads on it.”

   1 later decision quote this exact passage
   e.g. 279 F. Supp. 2d 489 - ISCO International, Inc. v. Conductos, Inc.

2. “The primary consideration is whether, in addition to showing what the reference shows, the affidavit also establishes possession of either the whole invention claimed or something falling within the claim, in the sense that the claim as a whole reads on it. It is not sufficient to show in a Rule 131 affidavit that an invention wholly outside of that being claimed was made prior to the reference date. Such fact is irrelevant.”

   1 later decision quote this exact passage
   e.g. Application of Thomas F. Facius

3. “[U]nder the law all the applicant can be required to show is priority with respect to so much of the claimed invention as the reference happens to show.”). Later caselaw has refined this holding, however. For example, in In re Tanczyn, the court wrote that it was”

   1 later decision quote this exact passage
   e.g. 279 F. Supp. 2d 489 - ISCO International, Inc. v. Conductos, Inc.