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