Appeal 2007-2127
Reexamination Control No. 90/006,621
Limitations in amended and new claims are not examined if they would raise
§ 112 issues with the original patent claims. See MPEP § 2258:
II. COMPLIANCE WITH 35 U.S.C. 112
Where new claims are presented or where any part of the
disclosure is amended, the claims of the reexamination proceeding,
are to be examined for compliance with 35 U.S.C. 112.
Consideration of 35 U.S.C. 112 issues should, however, be limited to
the amendatory (e.g., new language) matter. For example, a claim
which is amended or a new claim which is presented containing a
limitation not found in the original patent claim should be
considered for compliance under 35 U.S.C. 112 only with respect to
that limitation. To go further would be inconsistent with the statute
to the extent that 35 U.S.C. 112 issues would be raised as to matter
in the original patent claim. Thus, a term in a patent claim which the
examiner might deem to be too broad cannot be considered as too
broad in a new or amended claim unless the amendatory matter in the
new or amended claim creates the issue. [Emphasis in bold added.]
Because the issued '604 patent claims all contain the term
"multithreading," no § 112 rejections are raised as to the new and amended
claims which contain multithreading.
6. Patent Owner's arguments are not persuasive
Patent Owner's arguments have been considered, but are not
persuasive on the issue of priority.
a. Common "Detailed Description" does not prove
there is written description support
Patent Owner argues (Br. 20-21): "Both the 1982 application and the
1990 application contain virtually the same 'Detailed Description' of the
illustrative embodiment as that of the '604 patent. This Detailed Description
fully supports all of the '604 reexamination multithreading claims."
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