(concurring).
While I agree that to prevail appellant must present evidence to “persuade one of ordinary skill'in the art to a reasonable certainty that the applicant possessed so much of the invention as to encompass the reference disclosure,” and while I agree that appellant has failed to meet *994that test, I cannot agree with the maimer in which the majority applies that test to reach this result.
My basic disagreement with the majority stems from what I believe to be its preoccupation with statements which serve to dilute or misconceive the above test. An example of this is the statement just preceding the above quoted test which reads:
It follows from the above views [referring to a discussion of Stempel and Shokal] that antedating affidavits must contain facts showing a completion of “the invention” commensurate with the extent the invention is shown in the reference, whether or not it be a showing of the identical disclosure of the reference.
This should not be taken to mean that a “commensurate” showing is all that is required to overcome the disclosure in a prior art reference, else the facts of this case would require reversal of the board’s decision. Appellant’s .affidavit shows: (1) preparation of the methyl species; (2) testing of the latter compound and determining its diuretic activity; (3) preparation of the ethylene bridge species ; (4) testing of the latter compound and determining its antiviral activity; and (5) preparation of the phenyl species.
By contrast, Stetter shows, as far as the issue here is concerned: (1) preparation of the isopropyl species.
Manifestly, appellant’s showing is at least commensurate with the reference disclosure.
I consider it also to be of more than passing significance that Stetter is completely silent as to a utility (property) for any of the compounds therein disclosed, a fact not mentioned by the majority. While the majority indicates complete approval of the Stempel principle and its extension in this case, this is not borne out by its treatment on the merits. In Stempel, and in In re Wilkinson, 304 F.2d 673, 50 CCPA 701, this court laid down the rule that a reference disclosure may be antedated by a Rule 131 affidavit which shows only as much of the claimed invention as is disclosed by the reference. In the latter case, we held that an applicant need not establish utility in a Rule 131 affidavit if the reference does not disclose a utility. Yet the majority clearly requires a showing of utility. This is so, in my view, not because the reference discloses a utility but because such a showing would serve to link together the compounds which were prepared prior to the date of the reference, thereby evidencing “possession” by appellant of the compounds closely related in structure to the tested compounds. It is this linking function which a showing of common utility (property) serves that makes it important in a case involving indirect antedating of a reference disclosure.1
I also wish it made clear that I would not limit the evidence necessary to establish the independence of R to groups within the genus claim. As a matter of establishing this scientific fact, which is all that is involved, the best evidence as to the effect of R on the properties exhibited by a chemical compound may well come from a consideration of compounds outside the genus, so long as the remainder of the molecule remains the same.
The area of the law dealt with in this appeal is important. At the minimum, I think the bar and the Patent Office should be aware of all the pertinent facts of record and our thinking with regard to those facts — hence this concurring opinion. I perceive definite harm in propounding a test governing the issue presented by this appeal, and then resorting to other statements not in keeping with that test.
. I do not mean to intimate, however, as I feel the majority has, that a showing of common utility is the only means by which indirect antedating can be accomplished. For example, the mere preparation of sufficient representative compounds would be enough, it seems to me, where as here, the reference is silent as to utility. The spirit of Stempel and Wilkinson would appear to permit such.