The opinion
Rich, Acting Chief Judge,
dissenting,
with whom Rosenstein, Judge, joins.
I agree with the conclusion reached in part III of the majority opinion, but I disagree with the conclusions reached in parts I and II. I would, therefore, remand this case to the Board of Patent Interferences to permit consideration of Frilette’s proof concerning activities asserted to constitute reductions to practice of subject matter within the counts prior to Parker’s filing date but subsequent to the dates which the majority accords them.
I. Frilette’s Asserted Reduction to Practice of Subject Matter Within Counts 6-8
The question here, to my way of thinking, is not whether the calcium ions in the Linde 5A zeolites are “added catalysts” in some abstract, universal sense, but whether they are “added catalysts” within the meaning of the coumts as applied to Frilette. In other words, the question is whether Frilette (not Parker) can rely on work employing Linde 5A zeolites as an actual reduction to practice of subject matter within counts 6-8. I think the majority permits Frilette to rely for reduction to practice upon work which, under well settled principles of law, would not be held to be within the scope of these counts if Frilette were to attempt to assert them as claims in an infringement action. I think that this is an anomaly which we should not permit.
The phrase “an added catalyst” is deceptively simple. On first reading, it seems that the counts read unambiguously on the use of calcium-containing zeolites. However, not all ambiguities are apparent on first readings, or even when reference is made only to the count or claim, as the case may be. McCutchen v. Oliver, 54 CCPA 756, 759, 367 F.2d 609, 611 , 151 USPQ 387 , 389 (1966). As we said last year in In re Cohn, 58 CCPA 996, 1001, 438 F.2d 989, 993 , 169 USPQ 95 , 98 (1971), “No claim may be read apart from and independent of the *1321 supporting disclosure on which it is based.” See also, among many other examples, Ellipse Corp. v. Ford Motor, 452 F.2d 163, 167 , 171 USPQ 513 , 515 (7th Cir. 1971); cert. den., 406 U.S. 948 , 173 USPQ 705 (1972); Autogiro Co. v. United States, 384 F.2d 391, 397 , 155 USPQ 697, 702 (Ct. Cls. 1967); Graham v. John Deere Co., 383 U.S. 1, 33 , 148 USPQ 459, 473 (1966) (so for the file wrapper and contents, from which this principle follows a fortiori) ; and Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510 (1917). The principle is as vital as last week’s advance sheets: Cleeton v. Hewlett-Packard Co ., 343 F. Supp. 1215 , 173 USPQ 534, 544 (D. Md. 1972) (“The claims of a patent should always be interpreted in the light of the specifications.”). The majority ignores this principle on the ground that the counts are, in their view, unambiguous. But what did Frilette mean by the phrase “an added catalyst” ? To answer this question, we must, I think, turn to the Frilette specification, which says:
Molecular sieve [s] of the “A” series are ordinarily prepared initially in the sodium form of the crystal. The sodium ions in such form may, as desired, he exchanged for other cations. * * *
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* * * These replacing ions include other monovalent or divalent cations such as lithium and magnesium, metal ions of the first group of the Periodic Table such as potassium and silver, metal ions of the second group such as caloium,, and strontium, metal ions such as nickel, cobalt, iron, zinc, mercury, cadmium, gold, scandium, titanium, vanadium, chromium, manganese, tungsten, yttrium, zirconium, nobium, molybdenum, halfnium [sic], tantalum, and other ions such as ammonium which, with the sodium zeolite of the “A” series, react as metal in that they replace sodium ions without occasioning any appreciable change in the fundamental structure of the crystalline zeolite. * * * [Emphasis ours.]
Sodium zeolite of the “A” series exchanged with calcium or magnesium possesses larger pores than the unexehanged material.
Obviously, Frilette contemplated replacement of the sodium ions in the zeolite, as originally prepared, with calcium ions in order to vary the size of the pores. However, the specification does not indicate that Frilette was aware, even as late as the filing of the Frilette application, that the calcium ions also functioned as an added catalyst. This is apparent from the following language, with which the specification introduces the subject of added catalysts:
An important feature of the method of this invention is the provision of suitable catalytic activity within the intracrystalline structure in conjunction with the catalytic reaction system desired. This may be accomplished by various methods:
Catalytically active materials may be introduced into the crystal lattice by suitably contacting the zeolitic solids with solutions containing catalytically active components such as zinc, cobalt, nickel, silver, and others. In this manner, a *1322 catalytically active element can be introduced by deposition of tbe' incoming metal on tbe zeolitie solid after drying tbe solution from tbe crystalline carrier. Often, establishment of catalytic centers can be effectively achieved by exchanging a portion of tbe metal (Me in the general formula noted hereinabove) ion of the zeolite with an ion exhibiting catalytic activity for the desired conversion. Thus, for example, a portion of the sodium or calcium ions normally contained in the molecular sieve structure may he eeolitieally replaced with a number of various other ions such as silver, copper, aluminum, hydrogen, zinc, strontium, cobalt, gold, potassium, nickel, ammonium, cadmium, mercury, lithium, and magnesium. Replacement is suitably accomplished by contacting the molecular sieve with a solution of an ionizable compound of the ion which is to be zeolit-ically introduced into the molecular sieve structure for a sufficient time - to bring about the extent of desired introduction of such ion. After such treatment, the molecular sieve is water-washed and calcined and thereafter is ready for use.
As the internal catalytically active species it may, [sic] be desired[,] in certain cases, to use an intrinsic catalytic activity possessed by the zeolite itself. In a copending application Serial No. 763,433 filed September 26, 1958, there are described some types of chemical activities which have been discovered to be possessed by some of tbe zeolite materials. Accordingly, by the use of this invention we can effect size selective catalytic reactions by the proper choice of the type and geometric crystal lattice dimensions of the -zeolite, in combination with certain processing conditions. ['Emphasis ours.]
Moreover, in describing an exemplary reactant-selective catalytic conversion process which employed a Linde 5A, calcium-containing zeo-lite, Frilette stated that:
In this example, use has been made of the intrinsic catalytic activity for hydrocarbon cracking of the zeolite itself. [Emphasis ours.]
The majority places considerable reliance on the proposition that “An inventor need not understand precisely why his invention works in order to achieve an actual reduction to practice.” Stated in the abstract, I agree with the proposition. However, the facts in this case are that zeolitie material may be effective in promoting selective organic chemical reactions either with or without the presence therein of an added catalyst, and Frilette’s specification clearly classes the calcium-containing zeolite in the without-added-catalyst group, not in the' with-added-catalyst category.
Moreover, while a party to an interference need not have understood why his invention worked, either at the time relied, on for an actual reduction to practice or later,' Frilette has not shown that they recognized at any time prior to Parker’s filing date that the presence of calcium in the molecular sieve had any catalytic effect, added or otherwise. For that reason, too, Frilette’s evidence with respect to Linde 5A sieves is inadequate to establish , an actual reduction to practice. Heard v. Burton, 51 CCPA 1502, 333 F.2d 239 , 142 USPQ 97 (1964); and Clauss v. Foulkie, 54 CCPA 1514, 379 F.2d 586 , 154 USPQ 85 *1323 (1967). See also McMillan v. Moffett, 58 CCPA 792, 432 F.2d 1237 , 167 USPQ 550 (1970).
In the light of Frilette’s disclosure, I am persuaded that, even if calcium is in fact a catalyst which may be substituted for the sodium in crystalline, aluminosilicate zeolites subsequent to the formation thereof, Frilette may not rely on the use thereof as an actual reduction to practice of subject matter of counts 6-8. Whether or not Parker could do so is not a question before us. It has long been recognized that under certain circumstances the same claim may be interpreted differently in different specifications. Blackmore v. Hall, 1905 C.D. 561, 563. For present purposes, I think we should interpret counts 6-8 as if they were claims appearing in Frilette’s patent. So doing, I would find that they do not read on the use of a calcium-containing zeolite, and I would therefore hold that the use of Frilette’s behalf of such a zeolite cannot be regarded as the reduction to practice of subject matter falling within the counts.
II. Frilette'1 s Asserted, Reduction to Practice of Subject Matter Within Counts 9 and 10
The ground of my disagreement with the majority as to this aspect of the case can be stated much more briefly: burden of proof. As the majority states, I would place the burden on Frilette to show that the process by which they produced what they assert to have been a molecular sieve, used in the experiment on which they rely for a reduction to practice of subject matter within counts 9 and 10, did not destroy the crystallinity and uniform interstitial dimensions of the starting material. Frilette has offered absolutely no proof of this crucial fact, and what the majority is really doing is taking judicial notice that the process to which Mower subjected the Linde 5A molecular sieve could not have destroyed its crystallinity and uniform interstitial dimensions. There are, I think, only two theories on which the court would be justified in doing so. The first would be that it was in fact “so certainly known as to make it indisputable among reasonable men.” This theory is discussed in § 324, “Matters of Common Knowledge: Jury Knowledge,” in McCormick, Handbook of the Law of Evidence (1954). The second would be that it is a fact capable of certain verification, a theory which is discussed in the next succeeding section of McCormick’s treatise. I do not believe that it can seriously be argued that the present situation qualifies for the first category, and I do not believe that Frilette has laid the proper foundation for use to hold that it qualifies for the second.
*1324 The board held that “it [has not] been adequately shown by Parker that the conditions to which * * * [the Linde 5A sieve] was subjected in the Frilette et al. experiments would destroy these characteristics.” I believe that the board put the shoe on the wrong foot. Frilette relied on Experiment No. 59 asan actual reduction to practice of subject matter within the counts, and Frilette therefore had the burden of proving that it responded to all the limitations of the counts. While Parker’s case for the proposition that the crystallinity and uniformity of interstitial dimensions were destroyed during the preparation of the zeolitic material used in Experiment No. 59 is not overwhelming, it certainly is sufficient to place the question squarely in issue. I think that this is all that could be expected of Parker, for, as pointed out in his brief, the board’s allocation of the burden of proof in this respect “places an impossible task upon Parker since Frilette et al. did not produce any sample or analysis of the 5A material allegedly used in Experiment No. 59.” In this respect, the situation here is very similar to the situation with respect to Parker’s Exhibit 18. Concerning it, the majority says (and I agree), “The trouble with Parker’s evidence with respect to his Exhibit 18 is that Frilette had no way to go behind the bald figures therein.” I think the majority should apply the same principle to Frilette’s Experiment No. 59.