Ex Parte 5694604 et al - Page 89


                Appeal 2007-2127                                                                                  
                Reexamination Control No. 90/006,621                                                              
                processing and modification of the same body of data by at least two                              
                concurrently executing instruction threads constituting a single program"                         
                (Exhibit 52, Appeal Brief, page 34) (Br. 30).                                                     
                       (6)  A Board decision on appeal in the 1994 application characterized                      
                the claims as "a method and apparatus for preeemptive multithreaded                               
                execution of a plurality of instruction threads located within the same                           
                multithreaded software program in a general-purpose computer system"                              
                (Exhibit 53, page 2) and reversed the prior art rejection (Br. 30).  "Thus, the                   
                Patent Office, including the Board of Patent Appeals and Interferences on                         
                two separate occasions, has specifically considered and rejected the                              
                fundamental priority date issue raised by the Examiner." (Br. 30.)   It is                        
                argued that the USPTO is bound by collateral estoppel from raising the                            
                priority issue by the Supreme Court's decision in Commissioner of Internal                        
                Revenue v. Sunnen, 333 U.S. 591, 77 USPQ 29 (1948) (Br. 24).                                      
                       Decisions of an examiner have no judicial effect and cannot constitute                     
                collateral estoppel.  Thus, the facts that an examiner gave the '604 patent the                   
                benefit of the 1982 filing date, allowed the Patent Owner to state that the                       
                '603 and '604 patents were continuations of the 1982 application, and                             
                allowed claims having the terms "multithreading" in the '603 and '604                             
                patents are not binding in this appeal.                                                           
                       The statements that the '603 and '604 patents have an effective filing                     
                date of 1982 means only that they are entitled to that date as to commonly                        
                disclosed subject matter, not for everything.  See Transco v. Performance                         
                Contracting, 38 F.3d at 556, 32 USPQ2d at 1080 ("[T]he bottom line is that,                       
                no matter what term is used to describe a continuing application, that                            


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