The opinion
BALDWIN, Judge,
dissenting.
I do not agree with the majority that the issue of whether species count 2 is patent-ably distinct from genus count 1 is ancillary to priority, and must therefore be determined by the board. The purpose of an interference is to determine priority of invention between competing inventors. Patentability of the invention is not involved. The PTO has determined genus count 1 to be patentable over the prior art. That determination is not properly contested in the interference proceeding. Similarly, the PTO has determined that species count 2 is patentably distinct over genus count 1. That determination involves the same considerations of patentability as the determination of the patentability of count 1. In determining the logical relationship of an issue to priority, I cannot distinguish the question of the patentable distinctness of count 2 from count 1 from the question of the patentability of count 1 over the prior art.
The majority extends the holdings of Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977), and Nitz v. Ehrenreich, 537 F.2d 539 , 190 USPQ 413 (CCPA 1976) to apply to a question of patentable distinctness per se. However, unlike the questions in Aelony and Nitz , there is no question of interference-in-fact before us. Species count 2 methanol is disclosed in example 13 of the Hester application and example 17 of the Allgeier application, thus providing support in the two specifications for the invention of count 2. Rather than remanding as the majority has done, I would agree with the board that the question of patentable distinctness is an issue involving amending counts which is not ancillary to priority and is not, therefore, properly reviewed by the board.