Interference No. 103,197
species, each moved under § 1.633(c)(1) to replace Count 111
with one or more other proposed counts. Specifically,
Buschmann proposed to either (i) add O-I and I-I species12
Counts 2 and 3 and replace Count 1 with a different I-O
species Count 4, or (ii) replace Count 1 with a generic Count
5. The Administrative Patent Judge (APJ), unpersuaded by the
motion that the three species are separately patentable, as is
necessary to justify plural counts, denied it with respect to13
substituting proposed Counts 2-4 but granted it with respect
to substituting proposed Count 5. For the same reasons, the14
APJ denied Mannheimer’s motions to replace Count 1 with15
species Counts MAN-1, MAN-2, and MAN-3. Accordingly, the APJ16
redeclared the interference with Mannheimer’s proposed generic
As explained in § 1.601(f), "At the time the11
interference is initially declared, a count should be broad
enough to encompass all of the claims that are patentable over
the prior art and designated to correspond to the count."
Buschmann Motion II, paper No. 13.12
Section 1.601(f) provides that "[w]hen there is more13
than one count, each count shall define a separate patentable
invention."
Dec. on Motions at 17-18.14
Mannheimer Motions Nos. 6, 9, and 12.15
Dec. on Motions at 19-20.16
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