Appeal 2007-2127
Reexamination Control No. 90/006,621
was in possession of the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Thus, "[t]he
possession test requires assessment from the viewpoint of one of skill in the
art." Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1320,
66 USPQ2d 1429, 1439 (Fed. Cir. 2003). "Although the exact terms need
not be used in haec verba, . . . the specification must contain an equivalent
description of the claimed subject matter." Lockwood v. American Airlines
Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
Newly coined terms which are supported by the orginal specification
do not present a new matter problem. See Brookhill-Wilk 1, LLC v. Intuitive
Surgical, Inc., 334 F.3d 1294, 1303, 67 USPQ2d 1132, 1140 (Fed. Cir.
2003), discussing Schering Corp. v. Amgen, 222 F.3d 1347,
55 USPQ2d 1650 (Fed. Cir. 2000) (During the pendency of the patent, the
scientific community coined the phrase "IFN-alpha", to refer to a class of
compounds encompassing both patentee's disclosed "leukocyte interferon,"
designated as by those skilled in the art as "IFN-alpha-1," and other
compounds. The Federal Circuit construed the scope of claim coverage to
be consistent with the scope of the term originally used.)
Analysis
1. "Multithreading" is not expressly disclosed
None of the 1982, 1985, and 1990 applications, as filed, expressly
mentions the terms "thread" or "multithreading." The 1990 application was
amended after the filing date to disclose and claim "multithreading,"
However, these amendments are not part of the original disclosure of the
1990 application. See MPEP § 714.01(e) ("Any amendment filed after the
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