Appeal 2007-2127
Reexamination Control No. 90/006,621
filing date of the application is not part of the original disclosure of the
application"). In any case, the priority determination is based on the content
of the 1982 application, as filed. There is no express written description
support for "multithreading" in any of the ancestor applications.
2. "Continuation" designation is not controlling
The '604 patent is designated a continuation of the '603 patent and the
1982 application. Patent Owner argues that "a continuation application does
not contain new matter, and all claims issuing from it are entitled to the
filing date of the parent" (Br. 27). Patent Owner further argues that the '604
patent is entitled to claim priority of the 1982 filing date because "both the
'603 and '604 patents specifically recite that the applications are 'entitled to
an effective filing date of Sept. 28, 1982'" (Br. 28) and the U.S. Patent and
Trademark Office (USPTO) would not have permitted this if there was no
support in the 1982 application (Br. 28).
The "continuation" label does not prove that the '603 or '604 patents
have written description support for "multithreading" in the 1982 application
because, of course, the label may be wrong and the examiner may have erred
in allowing the patents to issue with those labels. The question of whether
the '604 patent is properly labeled a "continuation" of the '603 patent and
1982 application is a collateral issue to the real issue of whether there is
written description support for the term "multithreading" in the 1982
application. That is, in order to decide whether the '603 and '604 patents are
continuations of the 1982 application, it first has to be determined whether
claims to multithreading in the patents are inherently supported by the 1982
application, which is the very issue to be decided under priority.
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