Interference No. 104,241
added, for the first time, when the Cupps et al. involved
patent, a continuation-in-part of Cupps et al. benefit
application, was filed on December 8, 1994. Thus, Jeon et al.
urge that because Cupps et al.'s benefit application does not
disclose "cyano" substituents and because "cyano" substituents
are required by the
count, Cupps et al. should not have been accorded benefit of
their earlier filed application. We disagree.
Jeon et al.'s position evidences a fundamental
misunderstanding of the law and confuses benefit accorded with
respect to a count with the question of benefit under 35
U.S.C. §§ 119 and 120. Benefit of prior applications for
priority purposes is accorded with respect to counts not
claims. Daniels v. Daum, 214 USPQ 911, 917 (Bd. Pat. Int.
1982). All that is necessary for a party to be entitled to
benefit of an earlier filed application for priority purposes
is compliance with 35 U.S.C. § 112 with respect to at least
one embodiment within the scope of the count. Hunt v.
Treppschuh, 532 F.2d 1386, 1389, 187 USPQ 426, 429 (CCPA
1975); Den Beste v. Martin, 252 F.2d 302, 304, 305, 116 USPQ
584, 586 (CCPA 1958); Mori v. Costain, 214 USPQ 295, 297 (BPAI
1982); MPEP § 2309.02.
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