B. The counts
The count of an interference is meant to circumscribe the interfering subject matter and
thus indicate what evidence is relevant to priority. Squires v. Corbett, 560 F.2d 424, 433,
194 USPQ 513, 519 (CCPA 1977). In its preliminary motions, Belleau requested the addition of
either count 2 or count 3 on the basis that each of count 2 and count 3 defines an invention that is
patentably distinct from the invention defined by count 1.
We noted the following in our decision on preliminary motions (Paper 65 at 10-11):
The subject matter of Belleau proposed count 2 and proposed count 3 is
narrower than that of count 1. The compounds used in the method of count I
include compounds of the count having any possible ratio of (-) to (+)
enantiomer. The compounds used in the method of Belleau proposed count 2
and proposed count 3 are a subset of the compounds defined by the count where
the compounds are either substantially free of the corresponding (+)-enantiomer
(Belleau proposed count 2 and proposed count 3) or contain more of said (-)
enantiomer than the corresponding (+)-enantiomer (Belleau proposed count 2).
In our decision on preliminary motions, we provisiona granted Belleau's preliminary
motion to add count 2 and Belleau's preliminary motion to add count 3, stating the following
(Paper 65 at 12-13):
For reasons that follow, at this time we decline to decide whether Belleau
has shown that proposed count 2 or proposed count 3 would not have been
obvious over count 1.
The subject matter of Belleau proposed count 2 and proposed count 3
anticipates the subject matter of count 1. If a party proves priority based on
subject matter falling within the scope of Belleau proposed count 2 or proposed
count 3, then that party also may prevail as to the subject matter of count 1.
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