Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 16
interference priority benefit. Tsui addresses the problem by pointing to Bigham v. Godtfredsen,
857 F.2d 1415, 1417, 8 USPQ2d 1266, 1268 (Fed. Cir. 1988), and Hyatt v. Boone, 146 F.3d
1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998), for the proposition that the benefit
application "must meet the requirements of 35 U.S.C. § 120 and 35 U.S.C. § 112, ¶1 for the
subject matter of the count." Hyatt, 146 F.3d at 1352, 47 USPQ2d at 1130 (footnotes omitted).
In Hyatt, best mode was not an issue before the court and, indeed, the cited paragraph finishes by
discussing compliance with § 112[1] solely in terms of written description and enablement, in a
case where only the written description issue was decided by the board. Similarly, Bigham is
concerned with written description. Although a best-mode issue was raised in Bigham, the court
insisted on treating the question as one of compliance with the written-description requirement.
857 F.2d at 1418, 8 USPQ2d at 1269. In short, the question before us--is there a best-mode
requirement for a constructive reduction to practice--was not before the court in either case.
Moreover, if we take the language of the cases literally--that a putative constructive reduction to
practice must meet the all of the requirements of § 112[1], then those cases would be in conflict
with other appellate precedent. Fontjin v. Okamoto, 518 F.2d 610, 620, 186 USPQ 97, 105
(CCPA 1975) (explaining that an application need only provide a single embodiment within the
scope of the count, not support for the entire count); Tofe v. Winchell, 645 F.2d 58, 61,
209 USPQ 379, 382-83 (CCPA 1981) (best mode is not a priority consideration). Rather than
find a conflict in appellate precedent, the wiser course is to recall that a judicial precedent cannot
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007