Appeal 2007-2127
Reexamination Control No. 90/006,621
While it is true that the 1982, 1985, 1990, and 1994 applications have
the same Detailed Description and the same Figures 1-6,2 this does not prove
that the Detailed Description expressly or inherently disclose "threads" or
"multithreading." The fact that the 1994 application describes
"multithreading" does not "carry back" to the earlier applications. The fact
that an examiner allowed Patent Owner to add multithreading to the 1990
application, which became the '603 patent, does not prove that the original
1990 application inherently provides written description support for
multithreading since there is no proof that the examiner was correct. The
priority determination is based on a factual inquiry into the 1982 application,
not on inferences. Basically, Patent Owner is mistaken in his understanding
that the disclosed invention can be described as "multithreading," as that
term is defined in the art and in the '604 patent.
b. Reiffin v. Microsoft is not stare decisis
Patent Owner argues that "[t]he Federal Circuit had it right in Reiffin
v. Microsoft Corp. when it correctly ruled that 'the district court erred in
holding the '603 and '604 claims invalid for failure to comply with the
written description requirement' of 35 U.S.C. § 112, ¶ 1" (Br. 4). It is argued
(Br. 21-24) that the Examiner's claim construction and written description
rulings underlying the priority date finding are precluded by the law of stare
2 Figures 1A, 2A, and 3A were added by amendment, but Patent
Owner does not rely on these figures or references thereto (Br. 20 n.2).
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