Interference 103,685
more applications and one or more patents. At the
time the interference is initially declared, a count
should be broad enough to encompass all the claims
that are patentable over the prior art and designated
to correspond to the count. When there is more than
one count, each count shall define a separate patentable
invention. Any claim of an application or patent that
is designated to correspond to a count and is identical
to the count is said to correspond exactly to the count.
A claim of a patent or application that is designated
to correspond to the count but is not identical to the
count is said to correspond substantially to the count.
When a count is broader in scope than all claims which
correspond to the count, the count is a phantom count.
To establish a reduction to practice, Riggins may prove
that it made a single embodiment of a product, or performed one
process, which meets all the limitations of any one of the claims
of Holsten’s involved application or Holsten’s patent which
corresponds to the Count 2. Breuer v. DeMarinis, 558 F.2d 22,
24 n.5, 194 USPQ 308, 309 n.5 (CCPA 1977), teaches:
The reduction to practice of a single species
within the scope of the count constitutes a reduction
to practice of the invention defined by the count for
purposes of priority in an interference proceeding.
Mikus v. Wachtel, 504 F.2d 1150, 183 USPQ 752 (CCPA
1974); Den Beste v. Martin, . . . 252 F,2d 302,
116 USPQ 584 ([CCPA] 1958).
“[I]t is axiomatic that an actual reduction to practice of a
single species within the scope of a count constitutes a
reduction to practice of the invention defined by the count for
purposes of priority.” Nashef v. Pollock, 4 USPQ2d 1631, 1637
(Bd. Pat. App. & Int. 1987). That an actual reduction to
practice of any single embodiment or one process encompassed by
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