DISSENTING OPINION
Leneoot, Judge:I regret that I feel compelled to dissent from the conclusion of the majority herein, and the reasoning upon which such conclusion is based.
*1330In my .opinion, the phrase “A collapsible top for vehicles of the cabriolet or convertible coupe type ” should be regarded as a positive limitation in the count in issue, appellants’ application does not disclose such a top, and therefore they cannot make the claim corresponding to said count.
That appellee relied upon, said phrase to lend patentability to’ the claim, copied from his application by appellants, is abundantly established in the record. Nowhere in the record does it appear that, the Primary Examiner, in allowing the claim to appellee, did not consider the phrase above quoted as one of the elements making the claim allowable over the prior art. The most that appears in the record tending to show that the phrase was not necessary to patenta-bility of the claims is the statement of the Examiner of Interferences-that the allowance of the claim by the Primary Examiner was not predicated solely on the said phrase. Therefore, if the allowance of the claim was due in part to said phrase, it would seem that the Primary Examiner considered it as a positive element in the claim.
The case of Braren, v. Horner, 18 C. C. P. A. (Patents) 971, 47 F. (2d) 358, discussed in the majority opinion, is readily distinguishable from the case at bar. In that case no question was involved as to the right of the appellant there to make the claims corresponding to the counts there involved. The question there in issue was whether appellant could rely for priority on his earlier German application. The counts in that interference contained the phrase “ In an engraving machine and the like ”, and the question was whether such phrase should be construed as introductory merely, or should be construed as a limitation not disclosed by the German application. The device disclosed in the German application could be used in “ an engraving machine and the like ” without modification, although said German application made no reference to “ an engraving machine and the like.” We there held that the appellant Braren was entitled to any use of the device disclosed upon the face of his German application. We there said:
Braren’s said German application No. D-4285-1 plainly disclosed a device which will perform all the functions which are disclosed by the interference counts 1, 2, 3., 5, and 8. * * *
In the case at bar, appellants do not disclose a device which, without modification, is adapted for use on a vehicle of the cabriolet or convertible coupé type, as hereinafter set forth.
In my opinion, the case of In re Buttolph, 22 C. C. P. A. (Parents) 802, 73 F. (2d) 936, is directly in point upon the question of whether the phrase here under consideration should be considered as merely introductory or as a limitation in the claim. In that case the question involved was whether the introductory phrase “A *1331discharge tube for positive column light ” should be regarded as a limitation in the claims there in issue. The claims were copied by the appellant there from a patent to one Hertz for the purpose of interference, but appellant’s application did not disclose a “ positive column light.” Both tribunals of the Patent Office held that the phrase was a limitation in the claims, not disclosed in appellant’s application as filed, and we affirmed such holding. In our opinion we said:
In the instant case, it seems not to be disputed that the novelty relied upon. by appellant and by Hertz is in the use of said gases in a positive column light. * * * (First italics mine.)
We further said:
„ « * if the teachings of Hertz-are followed, a positive column light must result. We do not think this is true in the teachings of appellant. As was suggested in Braren v. Horner, supra, we think the phrase “ for positive column li^ht ” is “ an essential element in the novelty of the device.”
In the case at bar, if the teachings of appellee are followed, a collapsible top for a vehicle of the cabriolet or convertible coupe type must result. I do not think this is true in the teachings of appellants.
However, in said BvMolfh case, we further said:
Whether the phrase “ for positive column light ” may he relied upon to lend patentability to the claims of the Herte patent is not a matter for our consideration here. It is a limitation in the claim, is obviously relied- u/pon for novelty, and we think that the Patent Office tribunals were correct in holding that appellant could make the claims involved only by showing that he disclosed this limitation in his application, and were correct in rejecting such claims when presented in appellant’s application. (Italics mine.)
The Examiner of Interferences and the board concurred in finding that the type of car defined in the count is a two-passenger car, and that appellants’ application does not disclose a top applied to such a car. The Board of Appeals in its decision stated that appellants’ top “ is not adapted for use on vehicle bodies of the cabriolet or convertible coupe type.”
Whether appellants’ application does in fact disclose a top adapted for use on vehicle bodies of the cabriolet or convertible coupe type will be hereinafter discussed. Assuming for the moment that the Patent Office tribunals were correct in holding that appellants’ application does not disclose a top as aforesaid, it seems clear to me that they, appellants, would not be entitled to a patent for a claim corresponding to the count in issue because of lack of such disclosure.
I am therefore led to the conclusion that the words “ vehicle bodies of the cabriolet or convertible coupe type ” should be construed as a limitation in the count. It was clearly intended as such by appel-*1332lee, for the record shows that, in his opinion, the claim corresponding to the count would not be patentable unless so limited.
In the case of Field v. Stow, 18 C. C. P. A. (Patents) 1502, 49 F. (2d) 1072, the count in issue' recited a floor supported on sill flanges. This element was disclosed by the appellant’s patent in that case; appellee’s application recited a floor supported by, but not on, sill flanges. Wo there held that, by reason of the limitation in the count, appellee could not make the claim corresponding to the count. We there said :
Appellant had the right to expressly limit his patent claim, as he did, to a floor supported on sill flanges.
' So here, I think, it is clear that appellee used the phrase “ of the cabriolet or convertible coupe type ” as a limitation in his claim to insure the patentability thereof, and I think that we should so regard it.
It, is so elementary that expressly defined limitations in a claim may not be disregarded that the citation of authority to that effect is unnecessary.
I would observe that if appellee had intended to use an introductory phrase only, not importing a limitation, there was no necessity for using the words “ cabriolet or convertible coupe type,” for the words “ vehicle bodies ” would have been sufficient as an introductory phrase.
It seems to me that the case of In re Buttolph, supra, should control our decision here. There we held that the parties relied upon the introductory phrase as a limitation in the claim. In the case at bar appellee, from whose application the claim corresponding to the count in issue was copied by appellants, relies upon the introductory phrase as a limitation in the claim. In the Buttolph case we expressly declined to pass upon the question of whether the patentee from whose patent the claims were copied might rely upon the introductory phrase to lend patentability to the claims copied by the appellant there. In the case at bar, appellee relied upon the introductory phrase in the count before us to lend patentability to the claim, and, under the authority of said last cited case, whether the phrase may ultimately be relied upon for that purpose “ is not a matter for our consideration here.”
The next question is whether appellants’ application discloses a collapsible top adapted for use on vehicle bodies of the cabriolet or convertible coupe type. They insist that the term “ cabriolet ” includes a certain form of two-seated vehicle, as well as a one-seated vehicle. Appellants’ application does not disclose a one-seated vehicle, and all the drawings of their application disclose two-seated vehicles, the *1333driver occupying the forward seat, while appellee’s application plainly refers only to a one-seated vehicle.
Both tribunals of the Patent Office concurred in holding that the terms “ cabriolet ” and “ convertible coupe ” used in the count refer to a single-seated vehicle; this holding, I believe, is in accord with the ordinary meaning of these terms as applied to automobiles.
Since, as hereinbefore stated, appellants’ application does not disclose a one-seated vehicle, I hold that appellants’ application does not disclose a vehicle body “ of the cabriolet or convertible coupe type,” and I agree with the Board of Appeals that the collapsible top dis-' closed by appellants is not adapted for use on vehicle bodies of the cabriolet or convertible coupe type.
Appellants insist that their drawings 7 and 8 disclose a collapsible top adapted for use on a cabriolet, but I agree with appellee that these drawings merely show a two-seated vehicle with the top in different positions of adjustment.
The Board of Appeals observed that whether there is a patentable invention common to the two cases is immaterial. I agree with this statement in view of the phrase which I construe to be a limitation in the count.
I would observe in this connection that if there is a patentable invention common to both applications, appellants could readily have made a claim not limited to vehicle bodies of the cabriolet or convertible coupe type; such claim, if allowable, could then have been suggested to appellee and an interference declared. For some reason appellants did not take this course. As hereinbefore noted, appellee insists that such a claim would not be patentable in view of the prior art.
The Board of Appeals in its decision stated:
If a party without supporting disclosure were held in an interference proceeding to have the right to make a claim, the Office would then be confronted with the proposition of either granting him the claim in a ¿latent the disclosure of which does not support the claim or refusing to permit him to have the claim in the patent on the ground that he cannot make it after awarding priority of invention to him on the basis that he can make it. So an applicant cannot even for the purposes of interference have claims allowed to him which do not read upon his disclosure. In re Fischer 58 Fed. (2d) 1058.
Unquestionably the statement last above quoted is true, but, under tbe majority opinion in the case at bar, we will have the anomalous situation of a patent being ultimately granted to appellants for “ a collapsible top for vehicle bodies of the cabriolet or convertible coupe type ” when no such type of vehicle body top is disclosed in their application.
For the reasons given herein, it is my opinion that the decision of the Board of Appeals should be affirmed.