Appeal 2007-2127
Reexamination Control No. 90/006,621
Analysis
The rejection does not analyze how the scope of the reexamination
claims includes subject matter that is not covered by the original patent
claims under the legal test for broadening. Nor does the rejection explain
how adding limitations can logically cause the claims to be broadened.
It appears that the Examiner confuses broadening of the claim scope
with lack of written description.6 For example, the Examiner concludes the
claims in group 1 are broadened because they add the word "processing" in
front of the word "thread" or "task." Patent Owner argues that "processing"
is an operation performed on data after it is stored in memory and before it is
output. Although we do not agree that "processing" in a computer is this
limited, it is certainly not a broadening term. Thus, a "processing thread" is
narrower than a "thread." Accordingly, the rejection of claims 1, 4, 6, 7, 14,
18, 24, 26, 27, 31, and 33 in group 1 is reversed.
Similarly, the Examiner concludes that the claims in groups 2-6,
which recite "words" and "sentences" of a "natural language," and recite
spelling checking and grammar checking of words and sentences of a natural
language, are broadened because the '604 patent only discloses checking
"variables and statements" of a "programming language" (Final
Rejection 57-58 ¶¶ II.6(B)-(D)). If the original patent claims (as opposed to
6 The Examiner's reasoning generally parallels the written description
rejection: group 1 of the broadening rejection corresponds to group 14 of the
written description rejection; groups 2-5 correspond to and overlap
groups 6-11 and 13-18; groups 6-14 correspond to groups 26-34,
respectively; and groups 15 and 16 of the broadening rejection correspond to
groups 36 and 37, respectively, of the written description rejection.
153
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