Appeal 2007-2127
Reexamination Control No. 90/006,621
Issue
Many claims stand rejected as anticipated by the Krantz reference,
which is dated 1988, before the filing date of the 1990 application. Patent
Owner does not contest the anticipation rejection, but argues that Krantz is
not prior art because the '604 patent is entitled to the benefit of the filing
date of the 1982 application. Thus, it is necessary to determine whether the
reexamination claims are entitled to the priority of the filing dates of the
1985 and 1982 applications. Since Patent Owner relies on the 1982
application, and since the 1985 application is identical to the 1982
specification except for a reference to the 1982 application and a computer
program which is not at issue, we refer only to the 1982 application.
The issue is whether the reexamination claims are entitled to the
benefit of the filing date of the 1982 application under 35 U.S.C. § 120 and,
in particular, whether there is written description support under § 112, first
paragraph, in the 1982 application for the term "multithreading" which
appears in all of the reexamination claims.
Principles of law
"In order to gain the benefit of the filing date of an earlier application
under 35 U.S.C. § 120, each application in the chain leading back to the
earlier application must comply with the written description requirement."
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572,
41 USPQ2d 1961, 1968 (Fed. Cir. 1997) (citing In re Hogan, 559 F.2d 595,
609, 194 USPQ 527, 540 (CCPA 1977)). In order to satisfy the written
description requirement, "the applicant must . . . convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
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