(dissenting).
The majority opinion reads into the single count in issue a requirement I do not find there, namely, that the invention “was for pigmented electrical wire insulation purposes.” Since it is fundamental that the count controls the scope of the proceeding, such a requirement must be found in the count. The count, contrary to the assumption of the majority, is directed to a particular “stabilized polyethylene composition”. The stated objects of the invention are “to produce ethylene polymer compositions having a substantial odor, color and electrical stability” and to provide such a polymer which is “capable of being heat-formed into fibers, film, sheeting, wire coatings and molded articles,” the polymer in such uses being said to be “characterized by substantial resistance to color change, odor development and electrical degradation.”
The majority bases its decision chiefly on our decision in Elmore v. Schmitt, 278 F.2d 510, 47 CCPA 958, and affirms the Board of Patent Interferences. In so applying Elmore v. Schmitt, the majority has not considered what I consider to be a determinative difference between the situation here and that before the court in Elmore v. Schmitt. In Elmore v. Schmitt the count called for “a binary counter”. We held that the tests relied upon to establish a reduction to practice did not establish that the device tested was reduced to practice as a binary counter. Thus, in Elmore v. Schmitt, proof of the results of the “bench tests” without proof as to the relationship between such tests and the invention called for by the count, i. e., “a binary counter,” was rejected as insufficient to establish a reduction to practice.
Here, however, a different situation prevails. The present count is directed to a particular polyethylene composition and is not limited to any use. The count simply defines the invention in issue as a “stabilized polyethylene composition”. Its claimed characteristics are that it consists of (1) “a normally solid polymer of ethylene”, and (2) “a stabilizing amount below 0.5 percent of 4,4/thiobis (6 feri-butyl-meta-cresol).” The record here clearly establishes that the junior party, Harding, was the first to produce such a composition. The tests which were run tested that composition to determine whether it was “stabilized” as to color, odor and electrical stability.
The results of these tests were recorded in laboratory notebooks concerning which both Harding and a corroborating witness Griesser testified. From this testimony, I think it is clear that Harding was the first to produce a polyethylene composition in which 0.1 and 0.2 percent of 4,4,thiobis (6 tertbutyl-meta-cresol) had been incorporated and which was shown to be stabilized.
Whether Harding had established a reduction to practice here comes down simply to determining whether on the present record it was established that the polyethylene composition had been stabilized by the addition of “below 0.5 percent of 4,4/thiobis (6 feri-butyl-metacresol).” The tests run to check the stability of this composition were established by the testimony of appellant and Hyer, as well as Griesser. This testimony shows they employed hot milling of plaques of the stabilized polyethylene compositions in order to accelerate oxidative degradation of the resin, and determined the efficiency of the antioxidant as well as its effect on the color of the resin. The electrical properties of the resultant hot milled compositions were evaluated by a standard test (WC-64C) to determine power factor and dielectric constant. Resistance to discoloring was evaluated by means of visual observation and by means of a standard test (WC-98A) to measure the percent reflectance. As a result of these tests and other tests, both Griesser and Smith, who was Group Leader in charge of Electrical Insulating Materials, testified that in the spring of 1953 they were convinced of the efficacy of Santowhite Crystals as an antioxidant in polyethylene com*757positions and that such a composition containing Santowhite Crystals had good electrical properties with good color stability.
Thus, it seems to me the evidence here clearly establishes that compositions of the count were made and successfully tested by appellant prior to the earliest date upon which appellees rely. I think, therefore, that a proper decision here requires a reversal of the appealed decision.