Appeal 2007-2127
Reexamination Control No. 90/006,621
time of the invention, i.e., as of the effective filing date of the patent
application"). The relevant filing date is the filing date of the 1990
application in which the term "multithreading" was introduced since Patent
Owner has not shown that the term had a recognized meaning in the art at
the time of the 1982 and 1985 applications.
By referring to extrinsic sources for definitions, Patent Owner brought
extrinsic evidence of the meanings within the realm of prosecution history
intrinsic evidence. See Reiffin v. Microsoft, 64 USPQ2d at 1116
("Dictionaries and technical treatises are generally considered sources of
extrinsic evidence. Plaintiff, however, repeatedly quoted dictionary and
treatise definitions of thread to the patent office in an attempt to distinguish
his invention from prior art, bringing these definitions within the realm of
intrinsic evidence." (Citation omitted.)). "Multithreading" is defined in the
1994 application "in its ordinary generally understood sense" ('604 patent,
col. 1, lines 27-28). Thus, it is proper to refer to dictionaries and treatises for
conventional definitions of "threads" and "multithreading."
If Patent Owner is mistaken in his understanding that his invention
can be claimed as "multithreading," as that term is defined in the art, he
should not be permitted to redefine the term to limit it to a disclosed
embodiment by giving it a definition inconsistent with the accepted meaning
in the art. It is true that for an issued patent, "[a] patent claim should be
construed to encompass at least one disclosed embodiment in the written
description portion of the patent specification." Johns Hopkins Univ. v.
CellPro, Inc., 152 F.3d 1342, 1355, 47 USPQ2d 1705, 1714 (Fed. Cir.
1998). However, "[d]uring patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow. When the applicant
26
Page: Previous 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 Next
Last modified: September 9, 2013