MPEP 2304.02(b)
Counts and Corresponding Claims

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2304.02(b)    Counts and Corresponding Claims [R-08.2017]

37 C.F.R. 41.202 Suggesting an interference.

  • (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
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    • (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
    • (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),

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The applicant must identify at least one patentable claim from every application or patent that interferes for each count. A count is just a description of the interfering subject matter, which the Board uses to determine what evidence may be used to prove priority under pre-AIA 35 U.S.C. 102(g)(1).

The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.