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M.P.E.P. Section 2309.01, Formulation of Counts

This document contains one section of the Manual of Patent Examining Procedure (the "MPEP"), Seventh Edition (July 1998). This page was last updated in April 2000. All of the sections of the MPEP are found in the section index.

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2309.01 Formulation of Counts

Before preparing the "Interference Initial Memorandum" (Form PTO-850), the examiner must determine precisely what the count or counts of the interference will be.

In formulating the count or counts, the examiner must decide two interrelated questions: (1) how many counts will there be; and (2) what will the scope of each count be. The following principles should be kept in mind:

(A) Each count must be drawn to a separate patentable invention, that is to say, the invention defined in each count must not be the same as, or obvious over, the invention defined in any other count. However, a count may properly be included if it is unobvious over another count, even though the reverse might not be true. For example, a count to a species and a count to a genus might properly both be included in the interference if the species is patentable over the genus, even though the genus might not be patentable, given the species.

It should be emphasized that most interferences will involve only one count or a very small number of counts, in view of the requirement of separate patentability.

(B) A count should normally be sufficiently broad as to encompass the broadest corresponding patentable claim of each of the parties. However, a situation may arise where the examiner considers that an applicant's corresponding claim includes not only the common invention, but also another invention; in that case, the count should be limited to the common invention, and may be narrower than the corresponding claim which recites the additional invention. Note that 37 CFR 1.606 provides that a count may not initially be narrower in scope than any patent claim which corresponds to it; this does not preclude later substitution of a count which is narrower than the patent claim, as a result of a preliminary motion under 37 CFR 1.633(c).

(C) A count may not be so broad as to be unpatentable over the prior art. If a count cannot be made sufficiently broad in scope as to embrace the broadest corresponding patentable claims of the parties without being unpatentable, that would indicate either that the parties' corresponding claims are unpatentable or perhaps, if the parties' claims do not overlap, that they are drawn to two separately patentable inventions and there is no interference in fact between them.

The following examples illustrate how counts should be formulated. An administrative patent judge should be consulted in unusual situations which do not fit any of the examples.

Example 1:

Application A contains patentable claim 1 (engine). Application B contains patentable claim 8 (engine). If an interference is declared, there will be one count (engine). Claim 1 of application A and claim 8 of application B would be designated to correspond to the count.

Example 2:

Application C contains patentable claims 1 (engine) and 2 (6-cylinder engine). Application D contains patentable claim 8 (engine). An engine and a 6-cylinder engine define the same patentable invention. If an interference is declared, there will be one count (engine). Claims 1 and 2 of application C and claim 8 of application D would be designated to correspond to the count.

Example 3:

Application E contains patentable claims 1 (engine), 2 (6-cylinder engine) and 3 (engine with a platinum piston). Application F contains patentable claims 11 (engine) and 12 (8-cylinder engine). Claims 1 and 2 of application E and claims 11 and 12 of application F define the same patentable invention. Claim 3 of application E defines a separate patentable invention from claims 1 and 2 of application E and claims 11 and 12 of application F. If an interference is declared, there will be one count (engine). Claims 1 and 2 of application E and claims 11 and 12 of application F would be designated to correspond to the count. Claim 3 of application E would not be designated to correspond to the count.

Example 4:

Application G contains patentable claims 1 (engine), 2 (6-cylinder engine) and 3 (engine with a platinum piston). Application H contains patentable claims 11 (engine) and 15 (engine with a platinum piston). Claims 1 and 2 of application G and claim 11 of application H define the same patentable invention. Claim 3 of application G and claim 15 of application H define a separate patentable invention from claims 1 and 2 of application G and claim 11 of application H. If an interference is declared, there will be two counts: Count 1 (engine) and count 2 (engine with a platinum piston). Claims 1 and 2 of application G and claim 11 of application H would be designated to correspond to the Count 1. Claim 3 of application G and claim 15 of application H would be designated to correspond to Count 2.

Example 5:

Application J contains patentable claims 1 (engine), 2 (combination of an engine and a carburetor) and 3 (combination of an engine, a carburetor, and a catalytic converter). Application K contains patentable claims 31 (engine), 32 (combination of an engine and a carburetor), and 33 (combination of an engine, a carburetor, and an air filter). The engine, combination of an engine and carburetor, and combination of an engine, carburetor, and air filter define the same patentable invention. The combination of an engine, carburetor, and catalytic convertor define a separate patentable invention from the engine. If an interference is declared, there will be one count (engine). Claims 1 and 2 of application J and claims 31, 32 and 33 of application K would be designated to correspond to the Count. Claim 3 of application J would not be designated as corresponding to the count.

Example 6:

The PTO will continue to follow Waldeck v. Lewis, 120 USPQ 88 (Comm'r Pat. 1955). Application L contains patentable claims 1 (Markush group of benzene or toluene), 2 (benzene), and 3 (toluene). Application M contains patentable claim 11 (benzene). Benzene and toluene define the same patentable invention. If an interference is declared, there will be one count (Markush group of benzene or toluene). Claims 1, 2 and 3 of application L and claim 11 of application M would be designated to correspond to the count.

Example 7:

Application N contains patentable claim 1 (benzene). Application P contains patentable claim 11 (xylene). Benzene and xylene define the same patentable invention. If an interference is declared, there will be one count (benzene or xylene). Claim 1 of application N and claim 11 of application P would be designated to correspond to the count.

Example 8:

Application Q contains patentable claims 1 (Markush group of benzene or chloroform), 2 (benzene), and 3 (chloroform). Application R contains patentable claim 33 (benzene). If benzene and chloroform define the same patentable invention and an interference is declared, there will be one count (Markush group of benzene or chloroform). Claims 1, 2 and 3 of application Q and claim 33 of application R would be designated to correspond to the count. If chloroform defines a separate patentable invention from benzene and an interference is declared, there will be one count (benzene). Claims 1 and 2 of application Q and claim 33 of application R would be designated to correspond to the count. Claim 3 of application Q would not be designated to correspond to the count.

Example 9:

Application S contains patentable claims 1 (Markush group of benzene or chloroform), 2 (benzene), and 3 (chloroform). Application T contains patentable claims 11 (Markush group of benzene or chloroform), 12 (benzene), and 13 (chloroform). If benzene and chloroform define the same patentable invention and an interference is declared, there will be one count (Markush group of benzene or chloroform). Claims 1, 2 and 3 of application S and claims 11, 12 and 13 of application T would be designated to correspond to the count. The PTO will continue to adhere to Becker v. Patrick, 47 USPQ 314 (Comm'r Pat. 1939). An interference can have two counts only if one count defines a separate patentable invention from another count. If chloroform defines a separate patentable invention from benzene and an interference is declared, there will be two counts: Count 1 (benzene) and Count 2 (chloroform). Claims 1 and 2 of application S and claims 11 and 12 of application T would be designated to correspond to Count 1. Claims 1 and 3 of application S and claims 11 and 13 of application T would be designated to correspond to Count 2.

Example 10:

Patent A contains claim 1 (engine). Application U contains patentable claim 11 (engine). If an interference is declared, there will be one count (engine). Claim 1 of patent A and claim 11 of application U would be designated to correspond to the count.

Example 11:

Patent B contains claims 1 (engine) and 2 (6-cylinder engine). Application V contains patentable claim 8 (engine). An engine and a 6-cylinder engine define the same patentable invention. If an interference is declared, there will be one count (engine). Claims 1 and 2 of patent B and claim 8 of application V would be designated to correspond to the count.

Example 12:

Patent C contains claims 1 (engine), 2 (6-cylinder engine), and 3 (engine with a platinum piston). Application W contains patentable claims 11 (engine) and 12 (8-cylinder engine). Claims 1 and 2 of patent C and claims 11 and 12 of application W define the same patentable invention. Claim 3 of patent C defines a separate patentable invention from claims 1 and 2 of patent C and claims 11 and 12 of application W. If an interference is declared, there will be one count (engine). Claims 1 and 2 of patent C and claims 11 and 12 of application W would be designated to correspond to the count. Claim 3 of patent C would not be designated to correspond to the count.

Example 13:

Patent D contains claims 1 (engine), 2 (6-cylinder engine), and 3 (engine with a platinum piston). Application X contains patentable claims 11 (engine) and 15 (engine with a platinum piston ). Claims 1 and 2 of patent D and claim 11 of application X define the same patentable invention. Claim 3 of patent D and claim 15 of application X define a separate patentable invention from claims 1 and 2 of patent D and claims 11 and 12 of application X. If an interference is declared, there will be two counts. Count 1 (engine) and Count 2 (engine with a platinum piston). Claims 1 and 2 of patent D and claim 11 of application X would be designated to correspond to Count 1. Claim 3 of patent D and claim 15 of application X would be designated to correspond to Count 2.

Example 14:

Patent E contains claim 1 (Markush group of benzene or toluene), 2 (benzene), and 3 (toluene). Application Y contains patentable claim 11 (benzene). Benzene and toluene define the same patentable invention. If an interference is declared, there will be one count (Markush group of benzene or toluene). Claims 1, 2 and 3 of patent E and claim 11 of application Y would be designated to correspond to the count.

Example 15:

In this example, the claims of patent E and application Y of example 14 are reversed. Patent E contains claim 1 (benzene). Application Y contains patentable claim 11 (Markush group of benzene or toluene), 12 (benzene), and 13 (toluene). If an interference is declared, the count will be the same as the count in Example 14 - (Markush group of benzene or toluene). Claim 1 of patent E and claims 11, 12 and 13 of application Y would be designated to correspond to the count.

Example 16:

The PTO follows cases such as Case v. CPC International Inc., 730 F.2d 745, 221 USPQ 196 (Fed. Cir. 1984), cert. denied, 105 S. Ct. 233, 224 USPQ 736 (1984); Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977); and Nitz v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976), and will declare interferences where interfering patent and application claims are mutually exclusive provided the claims define the same patentable invention. Patent F contains claim 1 (benzene). Application Z contains patentable claim 11 (xylene). Benzene and xylene define the same patentable invention. If an interference is declared, there will be one count (benzene or xylene). Claim 1 of patent F and claim 11 of application Z would be designated to correspond to the count.

Example 17:

It will be the practice of the PTO under 37 CFR 1.606 to initially declare interferences with counts which are identical to or broader than patent claims which correspond to the counts. A single patent claim will be presumed, subject to a motion under 37 CFR 1.633(c), not to define separate patentable inventions. Patent G contains claims 1 (Markush group of benzene and chloroform), 2 (benzene), and 3 (chloroform). Application AA contains patentable claim 33 (benzene). If an interference is declared, initially it will be presumed by the PTO, subject to a later motion under 37 CFR 1.633(c), that benzene and chloroform define the same patentable invention.

There will be one count (Markush group of benzene or chloroform). Claims 1, 2 and 3 of patent G and claim 33 of application AA would be designated to correspond to the count. If a party believes benzene and chloroform define separate patentable inventions, that party could file a motion under 37 CFR 1.633(c) to redefine the count and the claims corresponding to the counts.

Example 18:

Patent H contains claims 1 (Markush group of benzene and chloroform), 2 (benzene), and 3 (chloroform). Application AB contains patentable claims 11 (Markush group of benzene and chloroform), 12 (benzene) and 13 (chloroform). Benzene and chloroform initially would be presumed, subject to a motion under 37 CFR 1.633(c), to define the same patentable invention, because they were recited as a Markush group in a single patent claim. If an interference is declared, there will be one count (Markush group of benzene or chloroform). Claims 1, 2 and 3 of patent H and claims 11, 12 and 13 of application AB would be designated to correspond to the count. If a party believes benzene and chloroform define separate patentable inventions, the party could move under 37 CFR 1.633(c) to substitute a count (benzene) for (Markush group of benzene or chloroform) and to add a count (chloroform).

Example 19:

Under 37 CFR 1.606, the PTO follows the practice announced in Ex parte Card, 1904 C.D. 383 (Comm'r Pat.). Patent J contains claim 1 (method of mixing, grinding, and heating).

Application AC contains patentable claim 8 (method of mixing and heating) and does not disclose or claim a grinding step. In the context of the inventions disclosed in patent J and application AC, a method of mixing, grinding, and heating is the same patentable invention as a method of mixing and heating. Under current practice, it would be said that "grinding" is an "immaterial" limitation in claim 1 of patent J. Under 37 CFR 1.606, the fact application AC does not disclose grinding would not preclude an interference. If an interference is declared, there will be one count (method of mixing and heating). Claim 1 of patent J and claim 8 of application AC would be designated to correspond to the count.

Example 20:

The facts in this example are the same as Example 18. Assume that applicant AB believes that benzene and chloroform define separate patentable inventions. Applicant AB would file a motion under 37 CFR 1.633(c)(1) to substitute Count 2 (benzene) for Count 1 (Markush group of benzene or chloroform) and add Count 3 (chloroform). If the administrative patent judge grants the motion, the interference would be redeclared by deleting Count 1 and substituting in its place Counts 2 and 3. Claims 1 and 2 of the patent H and claims 11 and 12 of application AB will be designated to correspond to Count 2. Claims 1 and 3 of patent H and claims 11 and 13 of application AB will be designated to correspond to Count 3. If one party proves priority with respect to both benzene and chloroform, that party would be entitled to all claims in its application or patent corresponding to Counts 2 and 3. The other party would not be entitled to a patent containing any claim corresponding to Counts 2 and 3. If patentee H proves priority with respect to benzene and applicant AB proves priority with respect to chloroform (assuming there was no issue raised at final hearing with respect to the patentable distinctness of benzene and chloroform), the judgment will provide that patentee H is not entitled to a patent with claims 1 and 3, but is entitled to a patent with claim 2 and that applicant AB is not entitled to a patent with claims 11 and 12, but is entitled to a patent with claim 13. If an issue is properly raised at final hearing as to whether benzene and chloroform are the same patentable invention and the Board holds that they are the same patentable invention, the party proving the earliest priority as to either benzene or chloroform would prevail as to all claims. Thus, if patentee H invented benzene before applicant AB invented benzene or chloroform, patentee H would be entitled to a patent containing claims 1 through 3 even if applicant AB invented chloroform before patentee H invented chloroform. Applicant AB would not be entitled to a patent with claims 11 through 13.

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