(dissenting).
It seem to me that the majority, in construing the present counts, has committed the same error the court found the board to have committed in Henderson v. Grable, 339 F.2d 465, 52 CCPA 920, where the court stated (bracketed material added to correspond to the present factual situation):
We think the board, without determining that the terms * * * [reference surfaces] were ambiguous, erred in construing those terms only with reference to the specific * * * [McCutchen] embodiment rather than examining them to see whether a reasonable interpretation, but one not so broad as to do violence to the language or the concept of the invention, would include the * * * [Oliver] structure.
It is, of course, well settled that the counts of an interference should be given the broadest interpretation which they will reasonably support. Only when the count is ambiguous should resort be had to the patent or application where the counts originated for purposes of interpretation. Apparently, the majority does find the counts ambiguous, stating:
The statutory requirement of section 112 is that the claims shall particularly point out and distinctly claim “the subject matter which the applicant regards as his invention.” Here the claims of the McCutchen patent which were copied by Oliver to become, the counts of the present interference are so worded that reference to the specifications of the respective parties becomes necessary to ascertain the meaning of certain language therein. One cannot arrive at an understanding of the present counts as they relate to the subject matter of the interference without something more than the counts themselves.
*621******
* * * While an “unambiguous” count may be interpreted without resort to the specification, the counts here are not of this type. Considering the wording of the counts, particularly the term “reference” surfaces, and the arguments of the parties, it is clear that different meanings are ascribed to that term by the parties when interpreting the count. When resort is had to the specifications, the latent ambiguity in the counts becomes apparent.
I find no further explanation of why it is thought any given expression in the counts, such as the term “reference surfaces,” is ambiguous, or why it is necessary to advert to McCutchen’s specification and file wrapper to interpret that expression and to justify the finding that “the McCutchen co-planar reference surfaces are exposed.” Indeed, following the rationale proposed by the majority, any broad expression capable of covering two different structures becomes ambiguous, simply because it can be interpreted to read on two different structures.
Both the examiner, in denying Mc-Cutchen’s motion to dissolve, and the board considered the inner ground surfaces 28 on the frame member of Oliver which has its back surface 29 ground to a fixed dimension parallel thereto to meet the requirements of the counts with respect to “reference surfaces.” The examiner stated:
The wording “reference surfaces” means just that; the wording is not ambiguous and it will be given its broadest interpretation in relation to its import. It is noted that surface 28 * * * [the inner ground surface of the frame member which has its back surface ground to a fixed dimension with respect thereto] of the Oliver application is used as a reference surface for back surface 29 * * *, which positions the head structure with reference to its holder * * *. In view of the above, it would be natural and logical to identify the surfaces 28, of Oliver, as “reference surfaces.”
5. To exhibit or offer to view or notice; as, to present a fine appearance; to bring to anyone’s attention or cognizance; as to present a subject; to show; display; set forth; describe.
The board agreed, stating:
We agree with the Primary Examiner that the counts are supported by the Oliver application disclosure. The counts are very broad. They do not include a mounting element and do not require that the “broad reference surfaces” of the bracket be exposed when the device claimed is assembled. It is noted that the latter requirement appears in McCutchen and Eskilson’s patent claims 7 and 9, for example. The limitations that McCutchen et al. seek to have read into the counts for the purpose of avoiding Oliver are of the nature that have been, in certain language, included in other of his patent claims.
I find no error in that position. It seems to me that the term “reference surfaces” is not ambiguous and that it is plainly applicable to the Oliver structure for the reasons given by the Patent Office. The term “reference surfaces” refers to the surfaces lapped coplanar with the pole tips, whether that term be applied to the McCutchen or Oliver construction. The question of how far that reference surface extends, i. e. whether it extends far enough to be exposed, is not placed in issue by the broad language of the counts.
McCutchen argues that the gist of the invention of the patent lies in the reference surfaces being exposed, pointing out that the counts define the head as “presenting” the reference surfaces, and cites a definition of “presenting”1 regarded as demonstrating that the term requires that the surfaces be exposed. However, I am not convinced that there is any sound basis for limiting the counts to a construction where the sur*622faces coplanar with the pole tips, defined as “reference surfaces,” are exposed when the device is assembled. In that connection, it must be noted that the counts also define the head as “presenting confronting lapped pole tips” on opposing sides of the gap and that those lapped pole tips are not exposed in the assembled head of McCutchen. Also, as Oliver has pointed out in oral argument, claim 6 of the McCutchen patent, which defines a complete head unit, refers to “each” of the frame members as “presenting” the lapped surfaces even though the entire surface (surface 30a' and 30b') on one of the members is obscured. The majority opinion offers no explanation as to why it, in effect, gives the word “presenting” two different interpretations — one requiring exposure of the presented surfaces and the other not so requiring — in the same claim.
McCutchen states that Oliver has tried to read the “reference surfaces” of the counts on his disclosure in two other ways in addition to the way that the examiner and board have held it to apply. They advance that contention as a basis for regarding the counts as ambiguous and going to their own disclosure for interpretation. It is true that alternative applications of the term to other elements of the Oliver application were discussed. However, I do not see that as necessarily indicating ambiguity in the term as applied to the surfaces which are coplanar with the pole tips in the frame member of Oliver which has a back surface parallel thereto. Rather, it seems merely to demonstrate that the language is so very broad as to have elicited a contention it applies to Oliver in more than one way.
The words of the court in Wirkler v. Perkins, 245 F.2d 502, 44 CCPA 1005, would seem particularly appropriate here:
We see nothing ambiguous in the term “reference signal computer” nor, it would appear from the record, did anyone in the Patent Office who has dealt with the involved applications. Indeed, it would seem that the only person who is confused is the party Wirkler.2 The law is well settled that once an applicant has selected language which is somewhat broad in its scope, he runs the risk that others with specifically different structures may be able to meet the language selected, and he will not be allowed to urge later that the language which he has selected should only be read in the light of his disclosure merely because it originated with him. * * * (Emphasis supplied).
The majority states that the issue “must be decided at the down to earth level of what the parties disclosed as ‘the gist’ of their respective inventions,” apparently relying on Henderson v. Grable in support of that position. From that sentence, representative of others like it in the opinion, it seems clear that the majority is intent on conducting an interference on the basis of the disclosure of the parties, ignoring the words of the count. It may well be true that Oliver does not disclose the exact form of the invention disclosed in McCutchen’s specification. It would be a rare occasion indeed in the mechanical arts that a device of one interference party corresponded to the last detail of the device of the other. In deciding the issue, however, the majority appears to ignore an important requisite of the “test” set forth in Henderson and quoted by the majority as the key to determining whether a disclosure supports a claim for interference purposes, viz., does the disclosure [of Oliver here] teach the gist *623of the invention defined by the claims in interference?
I take a different view from the majority as to what is the gist of the invention defined by the claims. The majority view apparently is that the invention defined by the claims requires that the reference surfaces mentioned therein must be exposed. The present counts do not contain such a limitation. It is well settled that limitations not included in interference counts cannot be subsequently read into them. Jepson v. Egly, 231 F.2d 947, 43 CCPA 853: Rivise and Caesar, Interference Law and Practice, § 60. Thus it seems quite immaterial that, in the words of the majority:
* * * McCutchen in his specification discloses no less than eleven times that his reference surfaces are exposed, that they serve as aligning means, and that they abut against the machine.
The “gist” of the invention defined by the present counts, as I see it, is simply the provision of surfaces at either end of the recording head which are accurately ground, or lapped, coplanar with the pole tips of one of the pole pieces of the head. That invention is common to both parties. The present counts define that invention clearly. 35 U.S.C. § 112. In my opinion, the majority is not justified in turning to the McCutchen specification and file wrapper to find a different interpretation of what the invention is.
Even if the McCutchen specification and file wrapper are referred to, they do not support the majority’s position. The majority relies heavily on certain arguments advanced by McCutchen during prosecution of his application. After quoting those arguments, the majority states:
The Patent Office removed the rejection based on prior art references and the claims, in view of McCutchen’s arguments, were allowed. Such arguments relied on by the applicant and accepted by the Patent Office to avoid prior art references should be considered in interpreting the claims. * * ■»
Applicants cannot find a single reference surface in the Hettinger head which is co-planar with the plane of the gaps of the head. If there is such a surface will the Examiner please refer to it by reference number if possible, or by some other description. Independent examination of Rettinger, which is in the present record, appears to bear out that contention.
In the first place, it does not seem to me that this court is in any better position to say why certain claims were allowed to McCutchen than are the examiner and board who denied McCutchen’s motion to dissolve and who presumably had the prior art of record in the patent file before them (see Rule 258) in construing the issue. Second, the very arguments quoted by the majority provide ample reason to say that narrower claims in the McCutchen patent, requiring exposed reference surfaces, were allowed because no prior art disclosed exposed reference surfaces; it is equally possible to say that the present claims, making no reference to exposed reference surfaces, were allowed because no prior art disclosed reference surfaces3 lapped coplanar with the pole tips.
In short, it seems to me that the present counts are broad enough to reasonably encompass the different approaches of McCutchen and Oliver to the common problem confronting the art.
I further find no error in the board’s determination that Oliver was first to conceive and reduce to practice. I would affirm the decision below in its entirety.
. Webster’s New International Dictionary, Second Edition, is as follows:
. It is of more than passing interest to observe that, insofar as the record shows, • McCutchen did not contend below that the counts are ambiguous, the examiner stating:
It is first noted that there is no ambiguity claimed by either party as to the Counts in issue, and it is the Examiner’s conclusion that since the Counts are clear and definite, they should and will be given the broadest interpretation which they reasonably will support.
. As noted by the majority, McCutchen argued :