(concurring).
I concur in the result. The principles I believe to be applicable here are stated in In re Stempel, 241 F.2d 755, 44 CCPA 820. The principles to which I refer are set forth, point by point, in-the last six paragraphs of the opinion.
I also wish to express full agreement with Judge SMITH’S concurring opinion.
SMITH, Judge(concurring).
While I am in full agreement with the result reached by the majority, its opinion does not set forth certain fundamental considerations which have influenced my views.
The facts of the present case lead me to the same conclusion as that reached by the majority, i. e., since the Stephens et al. reference discloses the claimed compound and its identification but does not allege nor show a use, then all appellants need to show in their affidavit under Rule 131 to overcome the effect of the Stephens et al. publication is that they made and identified the claimed compound before the effective date of the publication.
*675As summarized in the solicitor’s brief:
“# * * [Although] the statutes nowhere expressly provide that the bar of a novelty negativing reference may be overcome or removed, Rule 131, like its predecessor Rule 75, provides the means and manner in which an applicant may overcome the apparent lack of novelty because óf an earlier publication, and, therefore, an apparent bar, under 35 U.S. C. 102(a). * * *" [Emphasis added.]
No doubt the solicitor meant that the statutes provide no procedure for overcoming a reference which only prima facie negatives novelty. This is not unusual. But the statutes do give a right for which some procedural remedy is necessary.
The solicitor’s brief summarizes what has been said in many of the decisions in which former Rule 75 and present Rule 131 have been considered as follows:
“ * * * The language of the rule and its interpretation through almost a century all combine to show that, while paragraph (b) of present Rule 131 is new, it merely incorporates the practice and construction which was considered implicit in the old rule. Hence, to apply correctly and properly the requirements of the rule it is essential to know what the terms 'completion of the invention’, and 'reduction to practice’ mean in interference law and practice.”
The solicitor then argues that the present issue should be determined by analogy to an interference proceeding. While there is no issue here of priority between rival inventors in the sense oi an interference proceeding arising under 35 U.S.C. § 102(g), it seems to me that if the solicitor's argument is to be pursued, it is necessary to first assume that the reference publication stands in the position of a prior filed application1 In this situation Rule 202 presumably would be addressed to appellants who, in this analogy, stand in the junior party position. The statement showing prior conception of the invention contained in appellants’ affidavit under Rule 131 would in my opinion be sufficient under Rule 202 “to establish conception of the invention under consideration for the purpose of establishing priority of invention”, [Emphasis added.]
If we are to pursue the interference analogy suggested by the solicitor to this point, it then seems to me the analogy should be pursued to its logical end. On this basis, the reference publication, when viewed in the light of an inter partes interference proceeding, would not constitute a constructive reduction to practice of the invention. It would have no “effective date” as a reduction to practice under the applicable principles of patent interference law. On this basis, therefore, appellants should prevail on their application since they are entitled to its filing date as a constructive reduction to practice, which on the present record is the earliest date established for any reduction to practice.
Thus, I would agree with the position taken in appellants’ brief that :
“If this were an interference, appellants would only have to show that they were first to conceive the compound of Claim 15. This would entitle them to priority because:
“(a) The Stephens et al. publication is evidence of conception only; not of reduction to practice. In re Schlittler et al. [234 F.2d 882], 43 C.C.P.A. 986; 110 U.S.P.Q. 304.
“(b) Appellants are the first to reduce their claimed invention to practice. They did this on February 14, 1955 (Rl) by filing the application on appeal. Rivise and Caesar, ‘Interference Law and Practice’, Vol. 1, § 154, pages 493-4.
*676“(c) Priority of invention belongs to the. party who was the first to reduce to practice when, he was also the first to conceive; no showing of diligence is necessary. Ibid. § 173, page 538.”
To avoid this resolution of the issue, the solicitor and the board have relied upon statements found in ex parte cases which deal with the effect of disclosures in a reference which is a statutory bar under 35 U.S.C. § 102(b). It seems to me that these cases only confuse the issue here. I am unwilling to extrapolate a rule of construction from such ex parte cases where the issue under 35 U.S.C. § 102(b) relates to the extent of the statutory bar created by prior publication and to apply this rule of construction to a proceeding such as the present in which a Rule 131 affidavit is relied upon to establish novelty over a reference publication. As I see it, there are entirely different public policy considerations which are involved in these two situations.
The extent to which a publication is effective as a statutory bar under 35 U.S.C. § 102(b) must be determined on the basis of the public policy consideration which does not permit the patenting of an invention which the publication has disclosed to the public more than one year before applicant’s filing date. In this instance, the legitimate inquiry is, what did the publication donate or abandon to the public? Cf. In re Shackell, 194 F.2d 720, 39 CCPA 847.
Congress has seen fit to provide that an invention disclosed in a publication is not donated or abandoned to the public until one year after the date of publication. Thus, the grant of a patent on an application filed, as here, less than one year from the date of publication, is not barred by the statute. The applicant who thus files his application is entitled under 35 U.S.C. § 102(a) to establish dates which permit a determination of the question of novelty of his invention over the publication.
It is for these reasons I agree the board decision should be reversed. On this record, appellants have established by their affidavit that they conceived the invention prior to the date of the reference publication and the reference fails to establish any reduction to practice. Under these circumstances, it seems to me, this showing should constitute an adequate compliance with Rule 131, even if one accepts the solicitor’s theory that interference case law should apply.
Since the question is not “priority” in the interference sense, however, but only novelty under section 102(a), there is no question but that the novelty-negativing effect of the reference has been completely overcome.
. This assumption is not valid on its face since the publication here does not comply with 35 U.S.C. § 112 and it would not be assigned a filing date. However, for purposes of pursuing the solicitor’s analo • gy, it is necessary to make this assumption.