(dissenting in part and concurring in part).
I dissent on claim 1. The error of the majority in affirming the rejection stems from a misstatement of the issue. It is not necessary when antedating a reference under 35 U.S.C. § 102(a) or (e) to establish a prior reduction to practice, constructive or actual, of all the subject matter falling within the claims. It is necessary only to establish a reduction to practice of sufficient subject matter to render the claimed invention obvious to one of ordinary skill in the art. In re Spiller, 500 F.2d 1170, 182 USPQ 614 (Oust. & Pat.App.1974). The *274majority errs, therefore, in seeking a description in appellants’ parent and foreign priority applications to support the entire claimed subject matter as though these were the applications in which the claims appear. See In re Ziegler, 347 F.2d 642, 52 CCPA 1473, 146 USPQ 76 (1965). Appellants have clearly shown possession of enough of the invention to antedate Pfluger 1966 by establishing a prior constructive reduction to practice in their parent and foreign applications of specific embodiments disclosing concentrating to 50% and 36% total solids and by a broader disclosure of “25 to 60%.”
Although the rejection of claim 1 arises in the context of an attempt to initiate an interference”, the rejection is clearly under 35 U.S.C. § 102(a) or (e) and not under Rule 204(c), 37 CFR 1.204(c). Even if the rejection were under that rule, the substance of the rule’s requirement for evidence sufficient to establish a prima facie case for a judgment of priority against Pfluger 1966 would be satisfied by the prior constructive reduction to practice of embodiments within claim 1 in appellants’ parent and foreign applications. Hunt v. Treppschuh, 523 F.2d 1386, 187 USPQ 426 (Oust. & Pat.App.1975); Fontijn v. Okamoto, 518 F.2d 610, 186 USPQ 97 (Oust. & Pat.App.1975).
The majority cites In re Gemassmer, 319 F.2d 539, 51 CCPA 726, 138 USPQ 229 (1963), to support its decision on claim 1. It suffices to note that Gemassmer was decided more than a decade before In re Spiller, Hunt v. Treppschuh, and Fontijn v. Okamoto, supra.
I concur in the decision on claim 4 since appellants’ parent and foreign applications are silent regarding final product temperature and a secondary heating step and, therefore, fail even as a constructive reduction to practice of the invention of claim 4.
I concur also in the decision on claims 19 and 20, but I do not find it necessary to hold, as the majority implicitly does, that “about 0.6” gm/cc excludes 0.5 gm/cc disclosed in the reference as the upper limit of merely a preferred range. Moreover, it is obvious from the reference that the process would work at a higher density than 0.5, although inferior results might be expected. My concurrence rests on the requirement of claims 19 and 20 of a specific sequence of steps not suggested by the prior art, namely: providing a high density of about 0.6 to about 0.8 gm/cc, grinding to a fine particle size prior to freeze drying, freeze drying, and finally agglomerating the fine particles into larger particles. This achieves a “highly coloured product of regular particle size.” There is no suggestion in the prior art of deliberately grinding to a fine size and then agglomerating to a larger size.
I dissent on claims 17,18, and 29, because there is at least a prima facie relationship between product and foam densities. The board noted this by stating that “the freeze dried density of the coffee would be inherent in view of the same range of foam overrun density disclosed by Pfluger.” Since the foam densities and other conditions disclosed by Pfluger for the process claimed are approximately the same, appellants should be required either to show that the reference does not achieve the same product densities or to establish criticality. Since they have not done so, I would affirm the rejection of claims 17, 18, and 29.