Application of Janis Robins’s Empirical Analysis

Citation profile

2 federal appellate ·

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 24 citing decisions cite the case generally; a passage count includes only decisions quoting that exact language verbatim.

1. “must be reversed inasmuch as the specification contains a statement of appellant’s invention which.., is as broad as appellant’s broadest claims, and inasmuch as the sufficiency of the specification to satisfy the “best mode” requirement of § 112 and to enable one skilled in the art to practice appellant’s process as broadly as it is claimed has not been questioned.”

   2 later decisions quote this exact passage
   e.g. In re DiLeone · Application of Roland Ralph Dileone and Howard Robert Lucas

2. “The only relevant concern of the Patent Office under these circumstances should be over the truth of any such assertion. The first paragraph of § 112 requires nothing more than objective enablement. How such a teaching is set forth, either by the use of illustrative examples or by broad terminology, is of no importance. As a matter of Patent Office practice, then, a specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support. Assuming that sufficient reason for such doubt does exist, a rejection for failure to teach how to make and/or use will be proper on that basis; such a rejection can be overcome by suitable proofs indicating that the teaching contained in the specification is truly enabling. it is incumbent upon the Patent Office, whenever a rejection on this basis is made, to explain why it doubts the truth or accuracy of any statement in a supporting disclosure and to back up assertions of its own with acceptable evidence or reasoning which is inconsistent with the contested statement. Otherwise, there would be no need for the applicant to go to the trouble and expense of supporting”

   1 later decision quote this exact passage
   e.g. In re Armbruster

3. “Mention of representative compounds encompassed by generic claim language clearly is not required by § 112 or any other provision of the statute. But, where no explicit description of a generic invention is to be found in the specification ... mention of representative compounds may provide an implicit description upon which to base generic claim language.”

   1 later decision quote this exact passage
   e.g. Regents of the University of California v. Lilly & Co.