concurring in part and dissenting in part:
I join those parts of the court’s opinion which reject the intervenor’s two separate contentions. I also concur with the court that Section 102 (e) is inapplicable if the plaintiff’s “invention” was made before the application for the 2,497,667 patent (February 4, 1947), and that there is a substantial issue of fact as to when the invention was actually made. For these reasons, and those about to be stated, I agree that both the Government’s and the intervenor’s motions for summary judgment should be denied and the case returned to the Trial Commissioner for further proceedings.
My dissent is from the holding that the plaintiff’s invention “was described”, within the meaning of Section 102(e), in the application for the 2,497,667 patent. I would not decide that difficult question at this stage, but would await the potential help of a fuller inquiry into the surrounding facts. My main uncertainties, at the present time, are these:
(a) The reference in the 2,497,667 patent was to “An alloy as proposed by the applicants and Marcus Alan Wheeler in our patent application filed November 20, 1946, Ser. No. 711,204” — without mention of molybdenum (which was only an optional metal) or of the “balance factor.”1 Plaintiff *378claims that this reference was partial and made for special purposes — to inform the public of an alloy on which the process invention could be used, and to comply with a Patent Office requirement — and that these limited goals prevented the reference from fully incorporating, and therefore “describing” (under Section 102(e)), the plaintiff’s invention (later patented in No. 2,712,498) which rests so largely on the “balance factor” and the presence of molybdenum in specified quantities. I am uncertain whether the purpose and scope of a reference 'have any bearing on its use to void the patent under Section 102(e). The court’s brief discussion does not satisfy me.
(b) In any event, I am gravely in doubt whether the “reference” doctrine2 should be used, under Section 102(e), to invalidate an entire patent, like 2,712,498, simply because one alloy within the range claimed in the new invention happened by chance to have been made and described previously by inventors who were unaware of the cardinal factors (the “balance factor” and the use of molybdenum) which are said to give novelty to, and be the essence of, the new invention. Section 102 (e) restates the rule of Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926), and that decision related to an earlier application which “gave a complete and adequate description of the thing patented to Whitford [the patentee], but it did not claim it” (270 TJ.S. at 399). Is that true here? Is an invention “completely and adequately described” by an earlier writing which omits almost everything which is said to be novel in that invention? That is exactly plaintiff’s contention— supported by affidavits.
Since the case is to be remanded to the Commissioner, it is unnecessary to dispose of this “reference” issue, under Section 102(e), at this point of the litigation. I would leave the question open and allow plaintiff, among other things, to prove the date of its invention (as embodied in the patent *379in suit), whether the 'date be before or after February 4, 1947 (the time of the application for the 2,497,667 patent).
Laramore, Judge, joins in the foregoing opinion concurring in part and dissenting in part.
The full text of the reference 'was as follows :
“An alloy as proposed by the applicants and Marcus Alan Wheeler in our patent application filed November 20, 1946, Ser. No. 711,204, containing aluminum 1.0 to 9.0 per cent, chromium 13 to 23 per cent, cobalt exceeding 10 but not exceeding 35 per cent, titanium O.Oil to 5.0 per cent, remainder and at least 30 per cent nickel under a stress of 15 tons at 800° C. gave a creep life to fracture of 50 hours after the heat treatment proposed in the provisional specification namely soaking 1020-1100° C. for from 8 to 30 hours, quenching and ageing at 650° to 850° C. from 8 to 30 hours. When given first preliminary heat treatment according to this invention followed by the said proposed heat treatment it gave under the same test conditions a life of 72 hours.”
When applied together with the doctrine that a generic claim is invalidated by an earlier specific composition falling within the range later claimed generically. See, e.g., Chesterfield v. United States, 141 Ct. Cl. 838, 842, 159 F. Supp. 371 (1958); Helene Curtis Industries, Inc. v. Sales Affiliates, Inc., 233 F. 2d 148, 159 (C.A. 2, 1956), cert. denied, 352 U.S. 879 (1956).