Appeal 2007-2127
Reexamination Control No. 90/006,621
not explain how this advances the rejection. Therefore, these reasons are not
persuasive and are not relied upon.
5. "Multithreading" in '604 patent is not examined
for compliance with § 112 requirements
Since we find that there is no written description support for
preemptive "multithreading" in the 1982, 1985, or 1990 applications, and
since the "Detailed Description" is the same in these applications and the
'604 patent, a logical question is whether there is a problem with claiming
"multithreading" in the '604 patent. Although the original 1994 application,
which became the '604 patent, describes and claims "multithreading," it can
be argued that the disclosed embodiment does not demonstrate possession
of multithreading as that term is defined in the art for the reasons discussed
supra. See In re Reiffin, 199 Fed. Appx. 965 (Federal Circuit affirmed the
Board's finding that there was no written description support for
"multithreading" in a 1991 continuation-in-part application of the 1990
application even though the term appeared in the application as filed). It is
possible that other rejections may be appropriate, such as lack of enablement
under 35 U.S.C. § 112, first paragraph, for making a "multithreaded" system
as that term is understood in the art, and/or a rejection under § 112, second
paragraph, because "multithreading" is misdescriptive of the disclosed
embodiment. However, these issues are not raised under USPTO guidelines.
It is proper to note the existence of the issues. See 37 C.F.R. § 1.552(c).
Proposed amended and new claims in a reexamination proceeding are
examined on the basis of the requirements of 35 U.S.C. § 112. See
37 C.F.R. § 1.552(a). Original patent claims are not examined under § 112.
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