(dissenting).
At the time of the inventions involved in this interference polyethylene was old, stabilizing polyethylene was old, the uses of stabilized polyethylene were well known, and the invention relates to nothing more than the new stabilizer named in the count, which reads:
“2. Stabilized polyethylene composition comprising a normally solid polymer of ethylene and a stabilizing amount below 0.5 percent of 4,4' thiobis (6 ieri-butyl-meta-cresol).”
I will refer to the stabilizer by its trademark “Santowhite Crystals.”
It is to be noted that the count specifies no use whatever for the stabilized polyethylene composition, which is nothing but polyethylene with a small amount of stabilizer in it. The sole issue before us is appellant’s actual reduction to practice of the composition before appellees’ filing date. The applicable law is correctly stated by the majority opinion to be:
“ * * * where an interference count does not specify any particular use, evidence proving substantial utility for any purpose is sufficient to establish reduction to practice.” [My emphasis.]. [Citing Blicke v. Treves, 241 F.2d 718, 44 CCPA 753.]
The majority fails, however, to apply that law to the facts here.
The fault I find in the majority opinion is that it confuses and confounds the kind of utility which must be shown here, under the law, with utility for a specific, narrow, commercial use of the compound, as pigmented electrical wire insulation, on which appellant’s employer happened to be conducting an investigation at the time when appellant made the claimed invention.
What we are here concerned with is not the success of a project or program, as it was called, in the development of cable insulation being conducted by the employer, Bakelite Company, but the simple stabilizing of polyethylene by Santowhite Crystals for any use within the contemplation of appellant’s patent application, no use whatever being stated in the count.
Let me reemphasize the uses contemplated by appellant as stated in his application, recognized but thereafter totally ignored by the majority. The specification states (my emphasis):
“It is an object of this invention to produce ethylene polymer compositions having substantial odor, color, and electrical stability. A further object is to provide ethylene-polymer compositions capable of being heat-formed into fibers, film, sheeting, wire coatings and molded articles characterized by substantial resistance to color, change, odor development and electrical degradation ”
The specification points out that unstabilized polyethylene has the disadvantage of degrading under processing temperatures of the order of 100°-300°C. It says:
“The rancid-like odor developed in heat-degraded polyethylene makes it unacceptable for use in packaging foods, cosmetics and other products demanding an odor-free packaging material.” [My emphasis.]
The specification explains further that stabilizers (also known as “antioxidants”) had been used but, while they reduced degradation, “it has been found that these antioxidants cause objectionable darkening of the polyethylene particularly on heating.” Referring to a specific prior stabilizer, it is stated that “its presence in polyethylene is attended by poor color which darkens further on exposure to light and heat.”
The advantages of using Santowhite Crystals as the stabilizer are stated in *754the specification to include “preventing or inhibiting the usual rancid odor development and loss of dielectric [insulating] values on heating,” “the absence of any color change in the polyethylene either initially or on exposure to heat or light,” that it does not bloom, and that it can be colored and colored compositions do not go off shade on exposure to heat.
This does not sound to me like an invention which has utility only as pigmented electrical wire insulation, as indeed it is not. On review of the record, the majority concludes that that was “the intended purpose.” That was the purpose of the program or project being worked on at Bakelite, but it is not the purpose of the invention which grew out of that program, as stated in the patent application which we have before us. When we look for any utility of the compositions defined by the count, it seems to me we must look to the utilities contemplated by the application, not just to the objectives of some workers at Bakelite on a cable insulation project. The scope of the invention described in the application is much greater. It just so happens that in going back into history to find evidence of a date of reduction to practice of the invention of the application and of the count we are led into the project, but we are not interested in the success of the project. We are interested only in when polyethylene was successfully made into a composition containing “a stabilizing amount below 0.5 percent of” Santowhite Crystals, to quote the count. We are concerned only with successful stabilization, for any use whatever, not as the majority says, only “as pigmented electrical wire insulation.” The uses of polyethylene were already known. Stabilization is what had to be shown. Polyethylene is now such a common material the word is in Webster’s Seventh New Collegiate Dictionary, defined as “one of various partially crystalline lightweight thermoplastics (-CH2 CH2-) resistant to chemicals and moisture and with good insulating properties that are used esp. in packaging and insulation.” The count, it is again noted, says nothing of pigment, electrical use, wire, or insulation. It is the invention of the count, not some other invention, that must be reduced to practice.
It will be observed that the testimony selected by the majority for quotation to support its views all relates to the success of the program or the project at Bakelite, not to the successful stabilization of polyethylene with Santowhite Crystals. This is indeed a small bit to select from over 100 printed pages of testimony which, when read as a whole, leaves not a shadow of doubt in my mind that the invention of the count was successfully reduced to practice in the form of molded products (test plaques, or “placs”) of stabilized polyethylene composition and that the workers on the project, contrary to the opinion of the board and of the majority, were convinced of the success of that invention, though they may not yet have been satisfied with the commercial success of their cable insulating program.
A reduction to practice of the composition of the count can be established without proving any electrical properties of the polyethylene composition. Electrical properties are not of much importance in a squeeze bottle, an ice-cream container, or a sheet to cover a pile of cement bags or for the use as a painter’s drop cloth, all common uses of films, sheeting, or molded articles of this material. The tests for dielectric constant, power factor, and light refleetancy, by some deemed to be of such complexity as to require the presence, as witnesses to be cross-examined, of the operators who made them, are not needed to decide this case. Resistance to discoloration and development of odor or the lack of it can be, and were, determined by witnesses who did testify, by visual and olfactory inspection. The corroborating witness Griesser, for example, said, “it was obvious from the milling test that there was no change in color * *
Four months before appellee’s filing date, Harding, the inventor was suffi*755ciently satisfied with the stabilizing effects of Santowhite Crystals to request that the patent application at bar be filed. Six months before that he was satisfied that Santowhite Crystals were better for the purpose than previously used antioxidants.
The corroborating witness Griesser was more than satisfied. He said:
“We thought in any good antioxidant, really good, effective [in] stabilizing polyethylene, had to discolor by virtue of either breakdown of the antioxidant forming parts, subdivisions of the molecule or something like that. We thought it was a foreseen necessity and we found that Santowhite Crystals did not do that. That is why it was so unusual and why we wrote a patent application on this.
“I mean there are loads of antioxidants on the market available. They either provide an initial bad color in polyethylene or else if they have a good color they are not compatible or else they have poor electrical properties or else they develop color on exposure to heat, or in oxidation.
“So, that it was the furtherest from our mind that we could have both good color and highly effective stabilizing effect in one antioxidant. Well, we did find it.”
The witness who was head of the Electrical Insulating Materials group at Bakelite, Smith, testified:
“Q28. At the time of April 27, 1953, what was your conclusion as to whether or not Santowhite Crystals were an effective antioxidant for polyethylene for the electrical purposes that you had in mind when the project was instituted?
A. Well, we were satisfied that we had demonstrated satisfactory technical performance here of this material as an antioxidant. Thus, we were convinced that it was worth the additional expenditure of money and technical effort to commercialize material containing this antioxidant as an electrical material. [My emphasis.]
“Q29. Did you subsequently effect commercialization of this antioxidant? A. Yes, we did.
# if # * *
“XQ50. Would the tests referred to a moment ago, namely power factor and dielectric constant on milling, color on milling, be sufficient to establish the usefulness of a polyethylene composition for other uses than the ones you have referred to, that is, other than this particular electrical use ? A. Sure.”
The record as a whole, merely sampled above to counteract the extracts of others, simply does not bear out the impression of dissatisfaction of the witnesses with the results of their tests, prior to the critical date of October 27, 1953, which one gathers from the board and the majority opinions. Those opinions fail to reflect what is in the record. The fact that work continued on the project of pigmented wire insulation and commercialization of polyethylene compositions in other ways is only natural in a going business and of no significance in detracting from the proof of reduction to practice.
I fully agree with appellant’s statement in his brief:
“In considering the evidence here, it is necessary to discriminate between such demonstration of effectiveness to achieve the intended functions as will support a reduction to practice and the extensive, tedious and extremely specialized work involved in commercialization, where a new product is a substitute for a prior product then in commercial use (see Schnick v. Fenn, supra [47 CCPA 1174, 277 F.2d 935, 125 USPQ 567]).” [My emphasis.]
Total failure so to discriminate has, in my judgment, led both the majority and the board to the wrong conclusion.
I am in agreement with what Judge Smith says in his dissenting opinion. Particularly, I see little relevance of *756the case of Elmore v. Schmitt, which involved an electronic computer.