When Does Outside The Count Count? ¹

By Charles L. Gholz and Daniel J. Pereira ^{2, 3}

Introduction

One often hears the bromide that, “Unless it’s within the scope of the count, it doesn’t count”--the antecedent of “it” being evidence offered to prove a conception,⁴ classical diligence,⁵ Peeler diligence,⁶ an actual reduction to practice,⁷ or a constructive reduction to practice.⁸  However, while this bromide is, perhaps, a useful rule of thumb (and certainly focuses the attention on the importance of obtaining a count that favors one and disfavors one’s opponent to the maximum extent possible), it has never been literally true.⁹

Establishing the Scope of the Invention By Ascertaining What Doesn’t Work

Many counts include one or more numerical ranges--e.g., 100°C. to 200°C.  Such ranges are supposed to define the boundaries of what works--or, at least, works well enough to be patentable either in terms of utility or in terms of giving sufficiently surprising (i.e., improved) re...