Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 15
solution. To serve as a constructive reduction to practice, however, the disclosure had to be
enabling as of its filing date. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901
(Fed. Cir. 1998).
At the time it was filed, Tsui's 609 application did not enable an embodiment within the
scope of the 933 vector count.
C. Tsui has not established that Gregory is not entitled to the
benefit of the 295 and 307 applications for the vector (933) count
Tsui's motion attacking Gregory's benefit proceeds on the theory that Gregory's 295 and
307 applications violate the best-mode requirement of 35 U.S.C. 112[1]. The problem with the
attack is that it focuses on limitations of Gregory's claims. A motion attacking benefit accorded
for the purpose of interference priority must provide its explanation in terms of the count.
37 C.F.R. § 1.637(g). The Court of Appeals for the Federal Circuit has repeatedly admonished
against confusing claims and counts. E.g., In re Roemer, 258 F.3d 1303, 1307, 59 USPQ2d
1527, 1529 (Fed. Cir. 2001); In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1058-59
(Fed. Cir. 1993) (even when the count is identical to a claim). Yet in the present interferences,
perhaps because both parties were limited to attacking benefit, both17 have tended to treat claims
and counts as interchangeable.
In Cromlish v. D.Y., 57 USPQ2d 1318, 1319 (BPAI 2000), an Interference Trial Section
panel noted, without resolving, the problem of relying on an alleged best-mode defect to attack
17 At the final hearing, in response to questions about the disconnect between the scope of the nucleic acid
(882) count and the scope (cDNA) of Gregory's attack on Tsui's benefit, Gregory's counsel invited the panel to look at
Tsui claims directed to cDNA. Fortunately in these interferences, both Gregory and Tsui have applications, so any actual
§ 112[1] problems that remain in the surviving claims of these applications can be examined in subsequent proceedings
before the examiner.
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