A party moving to attack the benefit accorded an opponent bears the burden of proof to
demonstrate, as to the count, why the opponent should not be accorded the benefit of the filing
date of the earlier application. 37 CFR § 1.637(a) and 37 CFR § 1.637(g). In order to be
accorded benefit, Lee's priority applications need only describe an enabling embodiment within
the scope of the count. Weil v. Fritz, 572 F.2d 856, 865-66 n.16, 196 USPQ 600, 608 n.16
(CCPA 1978); Hunt v. Treppschuh, 523 F.2d 1386,1389,187 USPQ 426,429 (CCPA 1975).
Benefit for the purpose of priority is something different than benefit under 35 U.S.C. §
119 or 35 U.S.C. § 120. See Cromlish v, D. Y., 57 USPQ2d 1318 (BPAI 2000 - precedential
Trial Section opinion). Note, that in order to be accorded benefit for purposes of priority, the
'558 application need only describe an enabling embodiment within the scope of the count.
Thus, it is not necessary that the '558 application provide written description support for Lee's
claims 1-8'. Accordingly, we address van Engelen's arguments only with respect to van Engelen
claim 2, which is an alternative of the count.
There is yet another flaw in the arguments advanced by van Engelen. Although van
Engelen takes the position that the '558 application fails to provide support for Lee claim 2, with
or without incorporating by reference the '375 application, van Engelen fails to discuss the '558
application with particularity. Van Engelen fails to set forth in its motion what the '558
application describes and why it alone fails to describe an enabling embodiment within the scope
of the count. Van Engelen discusses the '375 application in detail. However, the inquiry should
begin with what the '5 5 8 application describes. That is the application for which Lee was
' The di fferences between pri ority benefit and benefit under § § 119 and 12 0 were
explained to counsel for the respective parties early in the proceeding, during the conference call
for setting times for the preliminary motions phase of the interference (Paper 30).
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