Patent Interference No. 103,812
VI.
For the reasons set forth above, junior party Rosenquist has failed to establish, by a
preponderance of the evidence, an actual reduction to practice of an invention within the scope
of Count 2 prior to senior party Scholl's effective filing date.
Junior party Rosenquist's motion to substitute Count 2 with proposed Count A
During the preliminary motions period, Rosenquist filed a motion to substitute proposed
Count A for Count 1. The motion was denied in an Order mailed February 18, 1998. See Paper
No. 31, pp. 3-4. In that same Order, the interference was redeclared to substitute Count 2 for
Count 1. See Paper No. 31, pp. 4-5. At final hearing, Rosenquist argues that the motion to
substitute proposed Count A for Count 1, now Count 2, should be granted if Rosenquist's proofs
are insufficient to establish an actual reduction to practice of Count 2. See RB, pp. 15-16.
Rosenquist's motion was denied for the following reasons (Paper No. 31, pp. 3-4):
Count 2 (which is substituted for Count 1 of the interference as declared)
consists of subject matter, recited in the alternative, of all the claims of both
parties which have been designated as being involved in the interference, i.e.,
which correspond to the "count." In the priority phase of the interference, proof
of priority by Rosenquist of a species within the scope of any claim designated as
corresponding to the "count" should be sufficient for Rosenquist to prevail on the
issue of priority. No need is seen for a phantom count including any subject
matter not embraced by a claim designated as corresponding to the count. The
statute (35 U.S.C. § 135(a)) does not mention a count. Rather, the statute refers to
the claims "involved" in the interference. The count mentioned in the rules has
been, and will continue to be, an alternative recitation of the subject matter of all
claims involved (to use the words of the statute) in the interference (i.e., those
designated to correspond to the count (to use the words of the rules)). [Emphasis
added.]
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