(concurring).
Because I do not regard the contractor-developed invention before us as falling under § 152 of the statute, I concur in the result1 reached by the majority. Vesting in the AEC of title 2 to the patent in this case, in my view, is not mandated by the statute.
Because we are presented with a contractor-developed invention and a statutory provision, § 152, concerned with the right of the AEC to take title to patents on certain of such inventions, I would begin with at least the premise that the AEC may have such right in this case. The case is here because the invention before us has a use not totally oblivious to the existence of nuclear material or atomic energy. The burden of persuasion that the board erred rests upon appellant, the decision below being entitled as always to great weight. Nonetheless, the appeal is from a summary judgment and the sole question before us, i. e. whether this invention is within or without the statute, is one of law. That question turns on the relationship of the invention to the “production or utilization * * * atomic energy.” Each invention, and its use, must be independently analyzed, requiring that each case involving that phrase in § 152, of which this is the first, be determined on its own facts. The establishment of guidelines, or pigeon-holes into which future inventions may fall, must await delineation in future cases.
In the present case, I am convinced that the board erred in interpreting the statutory phrase “useful in” as though it read “useful in proximate relation to.”
*1399The board’s sole duty in this case, and ours, is to determine a single issue, i. e. to decide whether the statutory phrase “useful in the production or utilization of special nuclear material or atomic energy” is of sufficient breadth to encompass the particular chemical compounds before us. In accomplishing that duty, it would appear unnecessary, and unwise, to substitute a new phrase for that employed in the statute by the Congress. Mindful of the dangers attending the exercise of such judicial powers, I find in the present case no requirement therefor. Neither the fact that we approach our duty in a precedential void, nor the fact that we are presented by the parties with conflicting interpretations, would justify the approach undertaken by the board in this case.3
Moreover, I regard the new language substituted by the board as productive of less certainty, not more, in the future application of § 152. Future cases, as indicated above, will involve different inventions, the nature of which is necessarily unpredictable. It would be at least as difficult, if not more difficult, to apply to such future inventions the phrase “useful in proximate relation to” as it is to apply “useful in” to the invention now before us. In such future cases we would then be interpreting our own word, “proximate,” rather than the statute itself. Hence, I would limit our decision to the facts before us.
In all events, I believe a consideration of the facts of the case provides sufficient basis for our decision. The primary fact is the invention itself. The surrounding facts are those related to the environment in which the invention is used.
The Invention
The invention relates only to chemical compounds. The claims are totally devoid of any reference whatever to any use. .No relationship appears in any claim to the “production or utilization of special nuclear material or atomic energy.” No claim refers in any manner to “radiation.”
Of course the chemical compound must have utility. Though tested only on mice, we must assume, for the purposes of this case, that the compound is useful in protecting humans against the effects of radiation.
Although the parties employ the handy label “antiradiation drug,” the invention does not prevent the occurrence of radiation. It neither produces nor uses radiation. It has nothing whatever to do with radiation per se. The invention necessarily works only on the effects of radiation, which effects can occur only in or upon a living organism. The invention necessarily works the same, regardless of the source of radiation, the “production or utilization of special nuclear material or atomic energy” being only one such source.
Environment of Use
Thus, as above indicated, the use of the invention occurs at a special place. The invention is useful “in” the bodies of mice or men. It is useful “in” nothing else.
The use of the invention also occurs at a different time. Clearly, the invention before us, by its very definition, has no use at all until after special nuclear material or atomic energy has been produced and utilized. Regardless of when they may be injected or ingested, and regardless of how they work, internally or externally of the body, the compounds of the invention cannot perform their intended protective function until after radiation occurs and reaches or approaches the body to be protected. Then, and only then, can the compounds act to blunt or assumedly defeat, the ef*1400fects of radiation in or upon the body. That the body may be bombarded by a continuing series of gamma rays does not conflict with the fact that the invention can act against the effects of each ray only after that ray is generated. Until there is radiation there is nothing to be protected against. If the compounds did not require the presence of radiation (from some source) for their utility, the case would not have arisen. In sum, use of the compounds requires the presence of radiation, not the other way round.
The use of this particular invention, against the effects (on humans) of radiation is simply too remote, in my view, to bring the invention within the purview of § 152.
“Production and Utilization”
The statute speaks of “production or utilization.” The actual production and utilization of special nuclear material or atomic energy are totally unaffected by the invention. As agreed at oral argument, special nuclear material and atomic energy are producible and utilizible in exactly the same way, for the same purposes, and with the same devices, as they have been for years, whether the invention is present or not.
“Production” and “utilization” are action words.4 The present invention takes no part whatever in the act of producing or in the act of utilizing special nuclear material or atomic energy. The invention is totally passive in relation to such production or utilization. It never “gets into the act.” It is just there, in the bodies of mice or men. A contractor-developed invention which has no effect whatever on “production or utilization or special nuclear material or atomic energy” cannot be said to be useful in such production or utilization, so as to require the AEC to take title to the patent thereon under § 152.
The only things anyone can do with atomic energy are to produce it and use it. It is clear that the Congress was and remains concerned with the producing of atomic energy and the using of it. Hence its language “useful in the production or utilization * * *.” The chemical compounds before us neither produce nor utilize special nuclear material or atomic energy. Title to a patent thereon may therefore be safely left in the hands of appellant in full compliance with the overall intent of Congress to encourage private industry. For the AEC to take title to this particular invention is contrary to that intent. At the same time, such taking would do nothing to further Congress’ concern for control over production and use of atomic energy.
The “Absence of the Invention” Argument
All of appellee’s arguments resolve into a single hypothetical. Fairly summarized, the argument runs, “In the absence of the invention, there may be some situations in which special nuclear material or atomic energy could not be pi'oduced or utilized by unprotected workers.” No evidence of any such situation is of record. From that sole hypothetical, counsel urges the conclusion that the invention must be “useful in” such production or utilization.5
The difficulty with employing a hypothetical absence of the invention (rather than what it is and what it does to what) as the sole decision making device lies in its breadth of application. It is difficult, if not impossible, to conceive of an invention which might escape the designation of “useful in the production or utilization of special nuclear material or atomic energy” if one need only imagine circumstances under which such production or utilization would- be impeded by the absence of the invention from those circumstances.
*1401The most that can be said for appel-lee’s hypothesis is that use of these chemical compounds might, under some circumstances, be ancillary to the production or utilization of special nuclear material or atomic energy. The difficulty is that that is not what the statute says.
Similarly, certain items within the hypothesis are clearly exempt. Appellee’s counsel admitted, with admirable candor at oral argument, that a tranquilizer invention in the bodies of nervous workers, though it enabled use of atomic ene-gy where it couldn’t otherwise be used, would not be “useful in” such production or utilization under the statute.
It is clear, nonetheless, that appellee’s hypothesis formed the fundamental basis for the board’s decision, which was that the “efficacy of the drugs is so proximately related to the actual production or utilization of special nuclear material or atomic energy as a protective agent for those involved in such activity” as to bring the invention under § 152. But that holding redrafts the statute to add “proximate relation to” after “useful in.” As indicated above, I find no warrant for such redrafting.
Contrary to the board’s statement, the “efficacy” of the compounds is necessarily upon or within the person whose body contains them, not on the “actual production” of atomic energy. As ap-pellee admits, the compounds themselves have no efficacy whatever vis-a-vis the actual production or utilization of special nuclear material or atomic energy. Only the imagined circumstances of ap-pellee’s argument, hypothesizing some production or utilization circumstances occurring in the absence of the invention, could have led the board to the view that the compounds somehow had an efficacy related, even proximately, to “actual production” of atomic energy.
The board supplies no compelling reason for interpreting “useful in the production or utilization of special nuclear material or atomic energy” as encompassing inventions only “proximately” related to such production or utilization. For the reasons stated, I regard the invention as “related” only to the effects of radiation on the bodies of mice or men, which effects occur after such production or utilization. But even if the board’s “proximately related” characterization, based on counsel’s hypothetical, be given full credence, I find erroneous the notion that the present chemical compounds, the use of which is only “proximately” related to production or utilization of atomic energy, are also used sufficiently “in” such production or utilization as to bring them within the statute.
The future may well disclose a class of inventions which are not directly employed in the actual production or utilization of special nuclear material or atomic energy but which are so closely related to, or so directly affect, such production or utilization as to fall within the provisions of § 152. In my view, the chemical compounds before us are not of that class.
Hence I would find that chemical compounds which are used only in the bodies of persons exposed to radiation, and only to counteract or preclude the effects of such radiation, are not so “useful in the production or utilization of special nuclear material or atomic energy” as to bring such' compounds within the purview of § 152. Accordingly, and on that basis, I would reverse the decision of the board.
. I disagree witli major portions of the approaches to statutory interpretation in the majority and dissenting opinions. The result reached by the majority accords with Congress’ overall liberalizing intent. I find no compelling evidence that Congress had an opposite intent when it came to § 152. Congress could hardly make “more strict” what had not previously existed. Contrast, the liberal provision, in § 152 as originally enacted, for waiver of title by the AEC to patents on inventions unquestionably within § 152. The 1961 amendment of § 152 totally deleted all inventions made by those engaged in “other relationships” with the AEC. H. R.Res.8599, 87th Cong., 1st Sess., 107 Cong.Res. 16953 (1961).
We should not interpret a new provision, enacted with and as part of a new, liberalizing Act, in such manner as to achieve the intent of the old Act. Certainly we should not do so without strong guidance in that direction from the Congress.
Moreover, I find no valid distinction, in this context, between the opportunity to “get” patents and the opportunity to “get title” to patents, or between government employees and government contractors.
. Only title is at issue. The AEC’s existing royalty-free license to make, have made, and use the invention for all governmental purposes is not material to the question before us. Whether the AEC should or should not control the use of the invention for non-governmental purposes, in private hospitals, clinics, X-ray laboratories, and power plants, is equally irrelevant.
. For example, having rejected the addition of a certain modifier (“directly”) on the “ground” that Congress could have inserted that modifier if it had wanted to, a view applicable to any interpretation, the board then proceeded to insert its own modifier (“proximate relation to”) after “useful in” in the statute. Obviously Congress could have inserted “proximate relation to” if it had “wanted to.” It didn’t.
. Webster’s Seventh New Collegiate Dictionary, 1971 Edition.
. Counsel for appellee admitted at oral argument, however, that these very compounds, in the bodies of mice, would not be useful in such production or utilization.