Interference 103,685
A first party to an interference may establish that it
reduced to practice subject matter encompassed by a count which
the second party exclusively claims even though the subject
matter the second party claims is not patentable to the first
party. It is well settled 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).” Hunt v. Treppschuh, 523 F.2d 1386, 1389, 187 USPQ
426, 429 (CCPA 1975). Squires v. Corbett, 560 F.2d 424, 433, 194
USPQ 513, 519 (CCPA 1977), adds (emphasis added):
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
priority. The “count,” as distinguished from a party’s
“claim,” need not be patentable to either party . . . .
If it is not required that the subject matter defined by a count
be patentable to either party, there most certainly is no
requirement that the subject matter Riggins reduced to practice,
i.e., subject matter seemingly encompassed by the claims of
Holsten’s involved application corresponding to the count, be
patentable to Riggins.
(2) Holsten’s priority dates
Riggins does not dispute “most, if not all,” the facts
alleged by Holsten in its Opening Brief (ROB, p. 1, first para.):
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