Appeal 2007-2127
Reexamination Control No. 90/006,621
in the art, Patent Owner admitted that he did not intend to be his own
lexicographer by giving the terms a different meaning than was known in the
art. Fourth, the issue for priority is whether the 1982 application provides
written description support for "multithreading" as defined in the '604 patent,
not as defined by amendments to the 1990 application.
c. USPTO actions are not collateral estoppel
Patent Owner argues that the USPTO is barred by collateral estoppel
from finding that the 1994 application is not entitled to the priority date of
the 1982 application because "numerous previous decisions and actions
taken by the Patent Office during the prosecution that led to the issuance of
the '603 and '604 patents establish that the claims on reexamination are
entitled to the 1982 priority date" (Br. 26). In particular, it is argued:
(1) An examiner allowed Patent Owner to amend the status of the
1990 application from a "continuation-in-part" to a "continuation" of the
1982 application, and the '604 patent issued as a continuation of both the
1990 and 1982 application. "[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.)
(2) The USPTO allowed the claims of the '603 and '604 patents,
which recite "multithreading" or "multithreaded" in 72 out of 77 claims
(Br. 28). "During prosecution [of the 1990 and 1994 applications], Patent
Owner specifically submitted numerous post-1982 references describing
multithreading (they were submitted, inter alia, as evidence of the meaning
of 'multithreading' and other terms), and none of these references were cited
87
Page: Previous 80 81 82 83 84 85 86 87 88 89 90 91 92 93 94 Next
Last modified: September 9, 2013