APPLICATION OF ROBERT H. SAUNDERS

The appealed claims were rejected by the examiner on the stated ground that they were fully met by the counts conceded by appellant in the interference hereinbefore described, citing In re Kyrides, 159 F. 2d 1019, 34 C.C.P.A., Patents, 920. The decision of the examiner was not only affirmed by the board but was also reaffirmed by it on reconsideration.

In addition to the case cited by the examiner, the board also cited and relied upon two factually and substantially analogous cases of this court: In re Williams, 168 F. 2d 525, 35 C.C.P.A., Patents, 1219; In re Kaase, 140 F. 2d 1016, 31 C.C.P.A., Patents, 932. Appellant notes in his brief that the Kyrides case will suffice for the purposes of framing the issue and discussion herein.

Appellant, the junior party, having conceded that he is not the first inventor of one species of the reaction product defined generically in the appealed claims, we are required here to determine the legal effect in an interference of a split decision based upon cross-concessions between the parties instead of an adjudication based upon evidence submitted by them to the tribunals of the Patent Office. The Solicitor for the Patent Office has defined the precise nature of the appealed claims together with the corresponding counts of the interference. He argues, in the light of the sound legal principle, that a patent on a generic invention must rest upon a generic discovery; that appellant has nowise shown he made a generic invention prior to the date of the claimed species thereof admittedly reduced to practice by Goldblatt et al., the senior party in the interference; and that failure to make such a showing bars appellant from obtaining the generic claims here presented.

We consider the following pertinent excerpt, summarizing the board’s decision and quoted from the brief of the solicitor, to be controlling of the question presented:

“As pointed out by the Board of Appeals the factual situation here substantially parallels that of the Kyrides case, supra. The sole distinction, if any, is that in the instant case, the opposing party in the interference conceded priority to appellant of the generic claims. That factual difference does not warrant a different conclusion. So far as the record shows, appellant is prior only on one species, and regardless of the concession of the opposing interferant, appellant is not entitled to claims which are broad enough to cover both species, when in fact there is no proof of anything other than a concession by the other party respecting a single species being reduced to practice prior to that party’s reduction to practice of the species conceded to him. As pointed out in the Williams case supra, having admitted that he is not the first inventor of the bicyclic species appellant may not obtain a patent covering it. He is entitled only to claims commensurate with the scope of his proved invention.”

We have carefully analyzed the merits of appellant’s position with respect to the various arguments presented by him and find nothing new or convincing therein. We deem it unnecessary therefore to discuss and pass upon them in detail. The decision of of the Board of Appeals is accordingly affirmed.

Affirmed.

GARRETT, Chief Judge, because of illness, did not participate in the hearing or decision in this case.