SNITZER v. ETZEL

LANE, Judge.

This is an appeal from the decision of the Board of Patent Interferences awarding priority of invention as to the two counts in issue to the junior party Etzel et al. from whose patent, U.S. Patent No. 3,028,009, issued September 25, 1965, on an application filed April 30, 1962, the counts were copied. Appellant is involved on his application1 filed January 16, 1962, as a continuation-in-part of an application2 filed October 27, 1961. Neither party took testimony, and the award of priority rested, therefore, on the sufficiency of senior party appellant's disclosure to support the counts. The board held that appellant "has no right to make the counts here involved." We reverse and remand for the reasons explained below.

The counts are directed to the activation of a glass laser with trivalent ytterbium ions. It appears that lasers operate by exciting the electrons of suitable ions to a higher than normal energy level. Excitation is induced by bombarding the ions with light energy, and the essential characteristic of lasers is that the ions spontaneously fluoresce in their excited state. A laser device depends upon a laser-active ion or atom and a laser-active host medium. Appellant states that the earliest laser-active host was gaseous. The experience of workers in the art with gas lasers suggested the need for a solid laser. A ruby laser was the first reported solid laser, and experience with it demonstrated disadvantages attendant the use of a crystalline solid. What followed was the development of lasers using a noncrystalline host medium—glass. Both of the counts at issue in this case are drawn to a laser wherein the host medium is glass and the laser-active ion is trivalent ytterbium.

Count 1 is representative of the counts and reads as follows:

Count 2 differs only to the extent that the host medium is defined as "clear silicate glass." Count 2 presents no separate issue to the court, and the counts therefore stand or fall with count 1.

We think the issues on appeal can best be introduced by reproducing the board's findings and conclusions in pertinent part as follows:

In view of the complexity and unpredictability of the involved art, the fact that some of the ions disclosed by Snitzer have not been made to operate successfully, and the fact that trivalent ytterbium is mentioned but not stressed in the Snitzer specification, the board apparently concluded that one of ordinary skill in the art would not be led to select trivalent ytterbium and appellant may therefore not claim it. Although the board's opinion refers to no statutory basis for denying appellant the right to claim the subject matter of the counts, the parties agree that the description requirement of the first paragraph of 35 U.S.C. § 112 is the relevant statutory ground. However, the board's opinion speaks of the difficulty of "build[ing] an operative laser," and the how-to-make and how-to-use requirements of 35 U.S.C. § 112 are repeatedly alluded to by both appellant and appellees. It is difficult to ascertain which of these several requirements the board focused on and which appellees focus on. We suppose it may be fairly said that appellant is of the view that the first paragraph of § 112 is fully satisfied.

OPINION

The thrust of appellees' argument and the board's rationale is that Snitzer's specification disclosure is highly speculative in all respects and misleading to the extent that it reports the suitability of several ions subsequently admitted not to have yet been used successfully. Appellant takes the position that whatever else may be said of the specification, it unequivocally discloses the use of trivalent ytterbium. Since it is uncontested that trivalent ytterbium lases in a glass medium, that disclosure is sufficient, appellant urges, where the counts are limited to that species.

We agree with appellant that the use of trivalent ytterbium is clearly described in his specification. Under the reasoning of the recent description requirement cases of this court, there would seem to be little doubt that the literal description of a species provides the requisite legal foundation for claiming that species. See In re Smith, 458 F.2d 1389, 1394, 59 CCPA (1972), and cases there cited. We think that at least on the facts of this case there is no basis for holding the description of the use of trivalent ytterbium legally insufficient.

Appellees insist that a specification as speculative as Snitzer's fails to provide support for the trivalent ytterbium species. Our principal difficulty with the argument is that we fail to see the relevance of the listing of several inoperative species when the species claimed is operative and performs as "speculated." Whether it is labeled "discovery" or "speculation," appellant's conception of trivalent ytterbium as a laser-active material is no less his own, no less original, no less important technologically, and, on this record, earlier than appellees'. His constructive reduction to practice by filing a patent application disclosing the conception and setting in motion the steps by which the public will be apprised of the discovery is in no way diminished if the conception is characterized as "speculation" or if other related conceptions turn out to be practically or technically unsound.

Appellees assert that the list of ions provided in Snitzer's specification is enormous since the specification states that the fourteen expressly named ions may be used "separately or in various combinations." By computing all the possible combinations of ions, the appellees arrive at a figure in excess of 87 billion for the number of laser-active ions set forth in the Snitzer specification. We think appellees have hopelessly exaggerated the fact of the matter, and we agree with appellant that to approach this case realistically, the specification must be viewed as emphasizing the fourteen named ions. It may be that were boundless speculation evident, a different result would be reached. We find no such situation here, and under these circumstances, we see no reason to hold that which is plainly described not to be described.

Our conclusions with respect to the description of the use of trivalent ytterbium does not dispose of all of the possible issues in this case. It is not clear to us whether the board regarded the specification enabling as to how to make and use a glass laser using trivalent ytterbium assuming that the description is, as we hold, sufficient. Moreover, appellees raise an additional description requirement question which the board's opinion fails to answer. Appellees contend that the terminal portion of the counts is not disclosed in appellant's specification, and indeed, it appears that it is not. The count language referred to reads:

Appellant argues that this is not an issue on appeal since the board did not hold that appellant's specification could not support these limitations. The board, in fact, did not respond expressly to appellees' assertion although it was apparently made to the board. However, the board's silence does not remove the issue. Appellees press it upon this court, and having argued it before the board, they may do so without filing a cross-appeal. Myers v. Feigelman, 455 F.2d 596, 604, 59 CCPA 834, ___ (1972); Kratz v. Calvert, 129 F.2d 542, 546, 29 CCPA 1097, 1103 (1942).

We do not wish to resolve the issues mentioned above without the benefit of the board's views thereon, and we accordingly remand the case to the board for a fully focused inquiry. Myers v. Feigelman, 455 F.2d at 604, 59 CCPA at ___; In re Clark, 457 F.2d 1004, 1008, 59 CCPA (1972). On remand the board should consider the sufficiency of appellant's specification with respect to the terminal portion of the counts in light of the recent description requirement cases of this court. The board should also consider the sufficiency of appellant's specification as an enabling disclosure of how to make and use the invention of the counts starting with the premise that the use of trivalent ytterbium as a laser-active ion with a glass host is described as such in appellant's specification. In this connection, see Martin v. Johnson, 454 F.2d 746, 59 CCPA 769 (1972), wherein the description and enablement requirements are distinguished. The board here has so intermingled the several requirements that we are unable to determine the extent to which our holding would affect the board's conclusion of law.

Because we hold the board erred in concluding that appellant's specification fails to describe the use of trivalent ytterbium in a glass laser, and because it appears that that conclusion was at the heart of the board's decision, we reverse the decision of the board. However, we remand the case to the board for its consideration of the issues set forth above and for action not inconsistent with this court's judgment.

Reversed and remanded.