Interference No. 104,436 Paper98
Shyamala v. Hillman Page 24
Hillman's earliest constructive reduction to practice is the filing of the application that
issued as Hillman's involved patent. The disclosures of both Hillman's involved application and
patent are substantially the same. The count includes two of Hillman's claims. Consequently, if
Hillman had support for the Hillman claims comprising the count, it is unlikely that ShyamaIa
could have successfully attacked Hillman's accorded benefit." Note that Hillman did not file a
preliminary motion attacking Hillman's support for the claims comprising the count.
Shyamala now contends that it has not had an opportunity to attack Hillman's accorded
benefit. That contention is simply untrue. Shyamala contends that it is unprecedented for
Shyamala to be deprived of a chance to "reply" to Hillman's priority case. The converse is true.
It would be unprecedented for Shyamala to reply to a notice from Hillman stating that it is not
putting on a priority case. Hillman has alleged nothing to which Shyamala could reasonably
expect to reply.
Shyamala alleges a procedural irregularity and points to 37 C.F.R. § 1.633(a), which
forbids an attack on priority in the form of a preliminary motion. This argument overlooks the
express authorization to attack accorded benefit in 37 C.F.R. § 1.633(g). The point of the
preliminary motions period is to establish the count and the accorded benefit to simplify the
proofs of priority required in the priority phase of the interference. If a party could put on a full
priority case in the preliminary motions, it would frustrate the purpose of preliminary motions in
most cases. The exception, however, is accorded benefit, which is simply another name for the
earliest constructive reduction to practice in the form of a patent filing with a chain of continuity
is Hillman only needs a single described and enabled embodiment within the scope of the count. Weil v. Fri
572 F.2d 856, 866 n.17,196 USPQ 600,608 n.17 (CCPA 1978).
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