Interference 102,760
drawn, it is only necessary that applicant’s specification
enable one skilled in the art to make and use an embodiment of
the count in the manner provided by the first paragraph of 35
U.S.C. § 112. As a result,
the interference count may read on subject matter which is not
patentable to either party to the interference, e.g., a
phantom count. In Hunt v. Treppschuh, 523 F.2d 1386, 1389,
187 USPQ 426, 429 (CCPA 1975), the court stated:
Another distinction is that Hunt’s parent
application
is relied upon as a prior constructive reduction to
practice; whereas in Smith v. Horne[, 450 F.2d 1401,
171 USPQ 755 (CCPA 1971)] the disclosure was relied upon
for a right to make the count. In the latter situation
the requirements of the first paragraph of 35 U.S.C. 112
must be satisfied for the full scope of the count. In
the
former, however, the § 112, first paragraph requirements
need only be met for an embodiment within the count. The
difference lies in the fact that a count is a vehicle for
contesting priority and may not necessarily be allowable
to a winning party or be proper under § 112 (e.g. a
phantom
count). Hedgewick v. Akers, 497 F.2d 905, 909 n.6, 182
USPQ
167, 169 n.6 (CCPA 1974).
Accord Squires v. Corbett, 560 F.2d 424, 433, 194 USPQ 513,
519 (CCPA 1977):
The “count” . . . is merely the vehicle for contesting
priority which . . . effectively circumscribes the
interfering subject matter, thereby determining what
evidence will be regarded as relevant on the issue of
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