Full opinion text
OPINION CALEB M. WRIGHT, Senior District Judge. This case is an appeal under 35 U.S.C.A. § 146 from a Board of Patent Interferences (“Board”) Opinion issued pursuant to 35 U.S.C.A. § 135. That Opinion awarded Montedison, S.p.A. (“Montedison”) priority for the invention of solid crystalline polypropylene. Each plaintiff in this litigation, E. I. du Pont de Nemours & Co. (“Du Pont”), Standard Oil Company (“Standard”), and Phillips Petroleum Company (“Phillips”), seeks to invalidate Montedison’s claim of priority by establishing that it produced the product prior to Montedison. Each also argues that it is entitled to the patent in its own right. In addition, Du Pont argues that Montedison’s senior party status should be vacated on the grounds of a possible discrepancy in inventorship in Montedison’s applications, and Phillips premises a similar demand upon Montedison’s alleged failure to teach the best mode of producing its invention. Montedison defends the Board’s decision awarding it priority, claiming that none of the other parties ever completed the steps required for an actual or a constructive reduction to practice. This case traces its history to the early 1950s. Prior to that time, polymer chemists did not know whether the manufacture of solid crystalline polypropylene was possible, much less how to make it. By 1957, however, at least five companies, including the litigants herein, claimed to have polymerized solid crystalline polypropylene and were seeking patent coverage for their alleged discoveries. On September 9, 1958, the Patent Office initiated this Interference to determine which applicant, if any, was entitled to receive the American patent rights to solid crystalline polypropylene. The Primary Examiner initially defined the Interference Count as: Normally solid polypropylene having a crystalline polypropylene component. The parties immediately filed Patent Office Rule 231 Motions in order to change the wording of this Count. The Primary Examiner finally decided these motions on June 14, 1962, amending the Count to its present form: Normally solid polypropylene, consisting essentially of recurring propylene units, having a substantial crystalline polypropylene content. Du Pont, Phillips, and Standard subsequently took extensive testimony which was completed by March 25, 1966. Montedison was given until July 29,1966 to complete its testimony. Montedison proceeded to file ancillary proceedings seeking broad discovery under 35 U.S.C. § 24, and the Patent Office suspended any further action pending resolution of these ancillary proceedings. The Interference was resumed on May 12, 1969, and Natta’s testimony period was extended to December 8, 1969. In April, 1970, the parties terminated their rebuttal testimony, having generated more than 800 pleading papers, deposed more than 100 witnesses, and amassed more than 18.000 pages of testimony and over 1000 exhibits. The parties argued their cases for priority before the Board on October 28 and 29, 1970, and on November 29,1971 the Board released its 113 page Opinion awarding priority to Montedison. The Board’s Opinion was appealed in early 1972 by Du Pont, Standard, and Phillips. These cases were consolidated in this Court on May 15, 1975. On July 1, 1977, this Court approved and signed a 181 page Pre-Trial Order. Trial followed, consuming eighty-five days between September 19, 1977 and May 17, 1978. The parties generated a transcript in excess of 14,000 pages and prepared about 4,600 exhibits, more than 500 pages of legal memoranda, and nearly 2.000 proposed Findings of Facts and Conclusions of Law, about which they have argued extensively during two rounds of briefing totalling more than 1,800 pages. In considering the evidence, this Court has generally adhered to the well established rule that clear and convincing evidence must be adduced in order to justify overruling a determination of priority made by the Board. This rule was established by the Supreme Court in Morgan v. Daniels: [W]here the question decided in the Patent Office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction. The Morgan v. Daniels rule, however, is not always applicable. If, for instance, it is established that “fraud and perjury have intervened to impeach the very foundation upon which the ruling of the Patent Office [was] based”, the Board’s Opinion must be given less weight and may be overturned upon a showing that a mere preponderance of evidence supports an alternative finding. In this case, all three plaintiffs claim that Montedison acted fraudulently in misrepresenting or failing to supply relevant information to the Examiners. As explained below, this Court finds that Montedison committed fraud against Phillips but that the other fraud claims against Montedison are either inadmissible or without merit. Phillips therefore need only adduce a preponderance of evidence that it is entitled to a priority date different from that awarded by the Board, but since fraud did not impeach the very foundation of the Board’s findings with regard to the other plaintiffs, this ruling does not apply to them. The remaining plaintiffs must still adduce clear and convincing evidence to overcome the Board’s findings regarding their priority dates. Applying these standards, this Court finds that Montedison is entitled to a June 8, 1954 priority date as determined by the Board. This Court also finds that Du Pont failed to adduce even a preponderance of the evidence that it is entitled to a priority date prior to the August 17, 1954 date awarded by the Board, and that Standard similarly failed to adduce even a preponderance of evidence showing that it is entitled to a priority date prior to the October 15, 1954 date awarded by the Board. These findings are therefore affirmed. This Court, however, reverses the Board’s findings as to Phillips, since Phillips did adduce at least a preponderance of evidence demonstrating its entitlement to a priority date no later than January 27, 1953 instead of the January 11,1956 priority date found by the Board. Since Phillips’s date is senior to those of the other three parties, priority is awarded to Phillips. THE PRODUCT The distinguishing characteristics of solid crystalline polypropylene are described by the single Count in Interference: (1) normally solid; (2) polypropylene, consisting essentially of recurring propylene units; (3) having a substantial crystalline polypropylene content. The first limitation requires that the product be normally solid. The term “solid” implies a substance of definite shape, while “normally” is implied when scientists usually characterize a material as solid. The second limitation requires that the product be a polypropylene consisting essentially of recurring propylene units. “Polypropylene” is a substance made by polymerizing molecules of propylene. Propylene molecules contain three carbon atoms (C) and six hydrogen atoms (H) arranged as a methylene group (= CH2) connected by a double bond to a =CH- group that is in turn connected by a single bond to a methyl group (-CH3). This arrangement may be depicted as follows: Figure 1 In a polymerization reaction, one of the bonds constituting the double bond breaks and provides the propylene molecule with an extra bond with which it can attach itself to other molecules. Sometimes the polymerization is very orderly, resulting in the production of a polypropylene consisting of recurring propylene units: Figure 2 This type of regular polymerization is known as head-to-tail polymerization oh 1-2 addition. Its essential feature is that the first (head) carbon atoms in every propylene molecule joins with another propylene molecule by binding to its second (tail) carbon atom. One noticeable result of this 1-2 addition is that none of the methylene groups are adjacent, but are isolated from each other; another is that the pendant methyl group are also isolated in that none of them “dangle” from adjacent carbon atoms. The Count’s second limitation does not require that the polypropylene be composed solely of recurring propylene units. As set forth by the Examiners, “The presence of very small irregularities in the polymer chain, in an amount insufficient to effect the basic character of the composition, would not disqualify a polymer from falling within the scope of the substituted count ” A useful approach to describe the regularity of this structure is comparison of the number of methylene and methyl groups. When propylene polymerizes in a perfectly recurring head-to-tail fashion, the ratio of these numbers is 1.0 because each recurring propylene unit contains one methylene group and one methyl group. A ratio significantly larger than 1.0 indicates that the polypropylene is not composed essentially of recurring propylene units but rather contains an impurity that causes an impermissibly large increase in the number of methylene groups relative to the number of dangling methyl groups. The third limitation requires that the polymer be substantially crystalline. The term “crystalline” describes a structure in which molecules of a substance are arranged in a well ordered array known as a lattice. “Crystalline” may be contrasted with the term “amorphous”, which describes materials such as glass, liquid water, or air, whose molecules are not arranged in any particular order. The term “substantial” is used in order to exclude solid polypropylenes containing no more than an “inconsequential amount of crystalline polypropylene”. Whether a product complies with the limitations of the Count may be ascertained by comparing certain of its properties with those of solid crystalline polypropylene. The product of the Count is generally a non-tacky, i. e. non-sticky solid. It is insoluble in pentane and weaker organic solvents. When a sample of polypropylene is only slightly crystalline, it melts at about 230 °F. (110 °C.), and its density is 0.88 grams per cubic centimeter (g./cm.³); when a sample is very crystalline, it melts at about 347°F. (175°C.), and its density is 0.95 g./cm.³ In contrast, amorphous polypropylene is soluble in pentane and weaker organic solvents, its density is 0.85 g./cm.³, and it softens at 167 °F. (75 °C.). The most reliable techniques for determining that a product is solid crystalline polypropylene are infrared and x-ray analysis. Molecular units vibrate when exposed to characteristic wavelengths of infrared radiation, and in so doing, they absorb the infrared radiation. In infrared analysis, the amount of radiation absorbed by a sample at various wavelengths is measured, and a scan, or chart, plotting absorbances against wavelength is prepared. The molecular structure of the product may then be determined by examining the location and quantity of the absorption. Crystalline polypropylene typically absorbs infrared radiation in the bands or ranges near 7.25, 8.6, 10.03, 10.27, and 11.85 microns, and does not absorb infrared radiation at 13.7 and 13.9 microns. Absorbance at 7.25, 8.6 and 10.27 microns and the lack of absorbance at 8.9 and 13.7 and 13.9 microns indicates the presence of recurring propylene units; absorbance at 7.25 microns specifically indicates the presence of dangling methyl groups. It is evident that these methyl groups are isolated when there is absorbance at 8.6 and 10.27 microns. Methylene group isolation is shown by a lack of absorbance at 13.7 and 13.9 microns. Crystallinity is indicated- by absorbance at 10.03 and 11.85 microns. The other significant technique for identifying crystalline polypropylene is x-ray diffraction. Molecules bend or diffract x-rays. When an amorphous material is exposed to x-rays, the random molecular arrangement produces a random diffraction pattern. In contrast, the well-ordered molecules of a crystalline material produce a distinct and identifiable x-ray diffraction pattern that may be recorded as a picture or as a scan in which the x-ray intensity is plotted at various angles of incidence. It is thus possible to determine whether a material is amorphous or crystalline. The material’s chemical constituency is also indicated if the diffraction pattern is similar to one previously prepared for a known sample. The parties to this litigation generally practiced remarkably similar techniques in producing their respective products. Each party mounted compounds of metals, the working part of the catalyst, upon catalytic supports containing silica and alumina. The catalyst was “activated” by heating it to 800°F. (425°C.) to 1000°F. (540°C.) for at least several hours under an atmosphere of dried gas, usually air. The catalyst was cooled and stored for the actual polymerization experiment. Each party placed the catalyst in one of three principle types of reactor: stirred autoclave, shaker autoclave, or fixed bed. A stirred autoclave consists of a closed container with a mixing blade or stirrer, into which chemicals may be admitted. A shaker autoclave is similar, but is agitated by shaking as opposed to stirring. The fixed bed reactor consists of a container in which the catalyst is packed in a column, reactants are admitted at the bottom of the reactor, and agitation is achieved by upward flow of the materials through the catalyst, with the finished product being removed from the top of the reactor. Reactions were generally run for two to ten hours or more at elevated temperatures and pressures. Propylene was admitted to the reactor along with a hydrocarbon solvent known as a “diluent”. When the run was completed each party removed the diluent and product from the reactor and washed any remaining polymer from the catalyst with a hydrocarbon solvent. The diluent and wash solvent were then separated from the crude polymer. Finally, the crude polymer was usually fractionated, or purified, by dissolving any impurities in a variety of organic solvents. The parties claim that the remaining residue was the product of the Count. THE LAW OF PRIORITY A priority date may be established by proving either an actual or a constructive reduction to practice. In the former case, one looks to the adequacy of the inventors’ experiments, while in the latter ease, one looks to the adequacy of the application as filed in the Patent Office. Actual Reduction To Practice. Three elements must be proven in order to establish that a product has been actually reduced to practice: (1) Production of a composition of matter satisfying the limitations of the Count; (2) Recognition of the composition of matter; and (3) Recognition of a specific practical utility for the composition. The production requirement may be satisfied by proving that a product was produced and that it meets the limitations of the Count. The results of subsequent (nunc pro tunc) testing are admissible for this purpose. This proposition is most clearly supported by Silvestri v. Grant, where the junior party, Silvestri, sought to prove that he had made the invention, a new form of ampicillin, prior to the filing date of the senior party. The junior party introduced the expert testimony of Bomstein who, subsequent to Silvestri’s work, examined an infrared scan made from the two parties’ products and concluded they were identical. The Court of Customs and Patent Appeals (C.C.P.A.) noted: [T]he board was critical of Bomstein’s testimony on the ground that it came after the issue of [the senior’s party’s] patent. That criticism would, of course, be relevant if the testimony were relied on to show that Silvestri had appreciated in 1962 that a new form of ampicillin had been made. However, Bomstein’s testimony is used only to establish that Silvestri had obtained the new form of ampicillin before December 26,1962. Accordingly, we accept this testimony as establishing that the ampicillin obtained by Silvestri and that of the count have the same spectrograph. Following this precedent, this Court’s analysis will include examination of nunc pro tunc evidence in determining whether a party obtained the product. The Board erred in the application of standards to the second requirement of an actual reduction to practice, recognition of the new product. In effect, the Board required that applicants recognize and describe their products’ new features using the precise language of the Count. This holding conflicts with case law precedent, and despite the arguments advanced by Montedison and Standard, the Court finds that such in haec verba recognition and description is unnecessary. In Heard v. Burton the junior party, Heard, sought to establish an actual reduction to practice for the invention of a process using a catalyst comprising platinum on eta-alumina prior to the senior party’s filing date. The Board held against Heard, finding that he had failed to recognize the catalyst by name. The court of Customs and Patent Appeals affirmed the Board’s ultimate disposition, but in so doing noted that in haec verba recognition was unnecessary: We agree with appellant that it is irrelevant that Heard never referred to or appreciated the support material to be eta -alumina or to contain eta -alumina by that name. Nor do we interpret the board’s opinion as so requiring. However, we consider it fatal to appellant’s case that not until after appellees’ filing date did Heard recognize that his “ammonia-aged” catalyst, as appellees put it, “contained any different form of alumina at all!” We point out, as does appellees’ brief, that the count calls for a particular form of alumina and we think that appellant’s failure to recognize that he had produced a new form, regardless of what he called it, is indicative that he never conceived the invention prior to appellees’ filing date, (emphasis in original) Later, the C.C.P.A. reiterated this position in Siivestri, supra, stating: This standard does not require' that Siivestri establish that he recognized the invention in the same terms as those recited in the count. The invention is not the language of the count but the subject matter thereby defined. Siivestri must establish that he recognized and appreciated as a new form, a compound corresponding to the compound defined by the count, (emphasis in original) Du Pont interprets Heard v. Burton as requiring that a party not only .recognize that his product is new, but that he also appreciate enough about the product to justify the conclusion that it corresponds to the Count. Phillips, on the other hand, argues that it is sufficient if an inventor merely recognize that the product, which happens to correspond to the Count, is va new form of matter. The C.C.P.A. has opted for the former test, and it is adopted here. In Meitzner v. Corte, two years after Siivestri, the junior party, Meitzner, sought to establish an actual reduction to practice of a cation exchange resin described by the Count as having a “spongy structure” permeable to liquids. The C.C.P.A. held that, although Meitzner failed to mention the limitation “spongy”, he would satisfy the recognition requirement if he appreciated both that his product was new and that it had the “outward manifestations or characteristics” of sponginess. Meitzner was therefore able to satisfy the recognition requirement without mentioning “sponginess” by proving that he appreciated that the product had: “(1) a milky, opaque to non-transparently white appearance, (2) resistance ... to destruction upon subsequent chemical reaction, including saponification or sulfonation, and (3) the high chemical reactivity . relative to the corresponding resins having a gel-type structure which are produced without the addition of the organic liquid.” Following Meitzner v. Corte, then, this Court holds that in order to prove adequate recognition of solid crystalline polypropylene for an actual reduction to practice, an inventor need only recognize the newness of the product and appreciate enough about the outward manifestations of solidity, recurring propylene units, and crystallinity to justify the conclusion that the product falls within the Count. The utility requirement is satisfied when an inventor has learned enough about the product to justify the conclusion that it is useful for a specific purpose. It is possible for an inventor to justify this conclusion by likening the invention to known compounds of demonstrated utility. In Cirio v. Flanigan, when an inventor sought a patent for an ion-exchanger, the C.C.P.A. considered the fact that the invention was a form of zeolite, the ion-exchanging and absorptive properties of which were widely known and appreciated. Similarly, in Silvestri v. Grant an inventor sought a patent for a new form of ampicillin which could be stored longer than older forms, and the C.C.P.A. weighed the fact that the new form was recognized as being very similar to the old form whose utility had been well established. Significant bench testing has generally been required to the extent that it is necessary to establish the essential properties of the product relevant to utility. For example, the C.C.P.A. required that utility for a thermal insulating foam be based on tests establishing thermal conductivity, density, and compressive strength; utility for an organic photoconductor was based upon three standard tests for photoconductivity; and utility for an explosive was based upon its ability to explode. This testing need only be sufficient to establish recognition of the most important properties; extensive testing of every detail of the product is not necessary. In Steinberg v. Seitz, for example, the Board found that utility for a device for measuring blood clotting rates had been established by positive results in two coagulation rate tests. Upon appeal, the appellants argued that the Board should have required further testing including testing on a larger number of samples, especially blood samples from abnormal individuals, statistical reporting of the results, and comparison of the results with those obtained by the prior art method. In upholding the Board’s decision, the C.C.P.A. stated: “We have considered these arguments, but are convinced that they are untenable. The testing which appellants contend is necessary, we believe, would be necessary for commercial refinement of the [product], but not for establishing actual reduction to practice.” This position was reiterated in Cochran v. Kresock, where the invention, a circuit for improving flesh tones in color television reception, was tested by connecting it to a color television set and observing the quality of the flesh tones. The C.C.P.A. held: “Appellant would appear to require a testing of the [product] for reliability, over a period of time, under adverse conditions. While such testing may be desirable before the circuit could be commercially introduced, such extensive testing is not required for a reduction to practice.” The C.C.P.A. addressed the utility question as applied to polymer compositions in Anderson v. Natía. In that case, Du Pont sought to rely upon the work of Anderson and Baxter, who are also involved in this case, to justify the conclusion that various plastic polymers, including polypropylene, had utility as plastic films. Du Pont claimed that manual manipulation of its product showed that it was tough, self-supporting, and flexible, and that its product had been pressed into a film suitable for infrared testing. Finally, Du Pont cited the ensuing infrared analysis and density and viscosity determinations as showing utility. The C.C.P.A. held that although these tests were relevant to the identification of the product as meeting the limitations of the Count, they were not sufficiently directed to ascertaining the utility of the product. Such rudimentary observations were especially insufficient in the absence of standard testing for strength. In the instant case, Standard, Phillips, and Montedison all introduced evidence concerning the additional testing necessary to justify the conclusion that a polymer had utility as a solid plastic. Standard’s Dr. Herman Mark testified that such utility could be proven if the testing cited in Anderson v. Natta were supplemented by further testing showing that a polymer was insoluble in xylene and that it was crystalline. Phillips’s Dr. Thomas Fox testified that solid plastics were used principally for making molded articles and that in order to conclude that a material was useful for making molded articles [Y]ou would have to know that the material is capable of being molded. You would have to know that it is going to be thermally stable [i. e. would not decompose] at the temperatures you would use to mold it. You would have to know that it is at the use temperature a rigid, high [Young’s] modulus. . . [Y]ou should know that you have a high molecular weight polymer because very low molecular weight polymers are very often low in tensile strength, and high molecular weight polymers are in general not low in tensile strength. Montedison offered Dr. Cecil Bawn and Dr. Frank Reinhart to establish a standard for utility recognition. Bawn agreed with Fox that utility testing should include the determination of the thermal stability and Young’s modulus, but went further and insisted that it was also necessary to determine that the material “is not cracking up in the mold, . . . [that] it flows easily, . . . [that] the parts coming out are not too brittle. One has to experiment in a mold, is what it comes to, before one can say it can be molded successfully.” In addition, impact strength measurements are necessary. If the material were to be used as a fiber, it would have to be tested for reaction to sunlight, washing, and sweat; if it were to be used as a film, it would have to be tested for wearability, tearability, flexibility and brittleness; and, if it were to be used for packaging, toxicity would have to be determined. These opinions of the required extent of testing were supported by Reinhart. The Court finds that Fox’s tests are most closely related to determination of the properties relevant to the utility of a solid plastic because they measure the ability of the plastic to be molded and to retain a molded shape. As the subsequent discussion shows, both of Mark’s additional tests, like the infrared analysis in Anderson v. Natta, supra, were standard practice for separating and identifying a polymerization product. If these tests are adopted as sufficient to show utility, the utility requirement would melt into the production and recognition requirements. Since the Supreme Court has carefully stated that utility is a distinct requirement of a reduction to practice, this Court rejects Standard’s proposed tests. The extensive tests proposed by Bawn and Reinhart, on the other hand, are overly rigorous. The more than fifteen tests suggested by these witnesses go beyond establishing utility as a solid plastic and extend to the feasibility of commercial production. A fabric that reacts favorably to human sweat, for example, might sell better than one that does not. There could, nevertheless, still be plenty of uses, such as drapery, carpeting, window shades, or insulation, to which a fiber may be put where its reaction to human sweat is unimportant. Similarly, a plastic that readily cracks during sudden cooling after molding may be difficult to work with, but it is possible that the cooling process could be modified to avoid the negative effects. This Court therefore rejects the idea that patentable utility can be found only by following the extensive testing program proposed by Bawn and Rein-hart and holds that utility of a solid plastic may be demonstrated by the successful completion of the tests proposed by Fox. Constructive. Reduction To Practice. A constructive reduction to practice is established as of the date that an inventor files an application complying with 35 U.S.C. § 112. Section 112 provides in part: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The requirements of a constructive reduction to practice are thus description of (1) the product; (2) a process for making it, such process being the best mode known to the inventors; and (3) the product’s utility. The requirement that the product be described is of course adequately satisfied by an application that describes the product in the same words as those used in the Count. The Board apparently believed that such an in haec verba description was absolutely necessary. Since the Board’s Opinion, however, the C.C.P.A. has ruled that patent entitlement is based on scientific skill and diligence and not on the ability to manipulate English synonyms. An application will thus contain an adequate description of the product if: [T]he language which is contained in the [original] application is the legal equivalent of the [Count] language, in the sense that the ‘necessary and only reasonable construction to be given the disclosure [in the original application] by one skilled in the art’ ... is the same as the construction which such person would give the language in the claims of the later [Count], (emphasis in original) Legal equivalence, or inherency, may be established either by the direct meaning of the language or by inferences drawn from the terms of the initial disclosure. Legal equivalence may also be proven by the use of circumstantial evidence showing successful experiments reproducing the initial application. The instant case raises the issue of what constitutes a successful reproduction experiment. Montedison and Standard insist that the law requires that the product of the Count be “invariably” obtained in every attempted reproduction: [I]nherency ‘may not be established by probabilities and possibilities.’ It ‘is not sufficient that a person following the disclosure might obtain the result set forth in the count; it must invariably happen.’ Stamicarbon N. V. v. Chemical Constr. Corp., 544 F.2d 645, 652 (3d Cir. 1976). Inherency does not mean that a thing might be done or that it might happen, as in the instant case, one out of twenty odd times; but it must be disclosed, if inherency is claimed, that the thing will necessarily happen. . . . Application of Draeger, 150 F.2d 572, 574 [32 CCPA 1217] (C.C.P.A.1954). The weakness of these arguments is that the Stamicarbon and Draeger cases upon which they rely involved process patents. In a process patent ease, the application must disclose a functioning process. If the process is ineffectual, the disclosure must be inadequate. Therefore the process must work every time. In a product patent case, however, the only claim is that when the disclosed process produces a product with certain specified characteristics, that product invariably falls within the Count. The fact that the process might also produce other non-conforming products is not relevant. In Application of Nathan, for instance, the applicant sought a patent upon steroids containing fluorine or chlorine substituents bound in a specific geometrical array known as “alpha orientation”. The question was whether the original application, which failed to verbalize specifically the geometrical orientation of the fluorine or chlorine substituent, inherently specified it. The C.C.P.A. found adequate description despite the fact that the applicant did not submit any evidence that the disclosed process always and inevitably produced the required product. Rather, all the evidence was directed to showing the similarities between any resulting product that complied with the disclosure and the product described by the Count. The requirement that the best mode of production of the invention be described is satisfied when the specification is sufficient to guide one skilled in the art to its successful application. The specification need not be as detailed as a “production specification”. Rather, an enabling disclosure may presume the knowledge that was commonly known in the art at the time the application was filed. Moreover, an enabling disclosure may require its readers to engage in reasonable experimentation. An inventor must nevertheless disclose the best production method then known to the applicant. The purpose behind this requirement is “to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived.” A best mode attack on a patent will fail unless it is proven that the applicant intentionally concealed his knowledge. It will also fail if the best mode, although not expressly disclosed in the application, is generally known to persons skilled in the art. The requirement that the product’s utility be described is mandated by case law. In Brenner v. Manson, Manson filed a patent application for a process for producing a known chemical compound whose utility was unknown. The Patent Examiner rejected Manson’s application for failing to disclose any utility and was ultimately affirmed by the Supreme Court. Although the case involved the adequacy of the applicant’s § 112 disclosure, the Court implicitly assumed that 35 U.S.C. § 112 incorporated 35 U.S.C. § 101, which requires that patentable inventions be useful. The Court of Customs and Patent Appeals subsequently rearticulated this interpretation of § 112 in Application of Kirk, noting: “[S]urely Congress intended § 112 to presuppose full satisfaction of the requirements of § 101. Necessarily, compliance with § 112 requires a description of how to use presently useful inventions, otherwise an applicant would anomalously be required to teach how to use a useless invention.” Section 112 thus requires that an application for a constructive reduction to practice disclose a specific purpose for which the invention may be used. This requirement may be met either by including utility statements within the application or by introducing evidence that the reported properties of the invention were sufficient to justify the conclusion that the material was useful for a specific purpose. In the instant case, the adequacy of utility disclosure for a constructive reduction to practice only arose in the context of Phillips’s application, which disclosed that its polymer was useful as a solid plastic as well as other information allegedly supporting this statement. Phillips’s statement alone might be sufficient to disclose a utility. Alternatively, the utility requirement may be satisfied by disclosing sufficient information concerning the product’s Young’s modulus, thermal stability, and molecular weight. MONTEDISON’S PRIORITY CASE Montedison claims two priority dates for a constructive reduction to practice: June 8, 1954 and July 27, 1954. Although Montedison’s application for a patent for solid crystalline polypropylene was not filed in the United States until June 8, 1955, Montedison seeks the benefit of the 1954 dates when it filed applications for the same product in Italy. This relation back of the priority date of an American filing to the date of a foreign application is provided by 35 U.S.C. § 119: An application for patent for an invention filed in this country by any person who has . . . previously regularly filed an application for a patent for the same invention in a foreign country . shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; . The Board found that Montedison had fully complied with the requirements of § 119 and awarded it the senior priority date of June 8, 1954. Du Pont and Phillips attack this award. This Court finds that the challenges lack merit and affirms the Board’s Opinion. Inventorship. Du Pont first argues that the American application does not comply with the requirement in 35 U.S.C. § 111 that the “[application for patent shall be made by the inventor” because it lists Giorgio Mazzanti, Roberto Pino and Guilio Natta as joint inventors. Du Pont claims that Natta was the sole inventor and that the inclusion of the other names renders the application invalid. Du Pont presented a similar argument to the Board where it was rejected after extensive consideration of the facts. A review of the record fails to disclose any reason to disagree with the Board that Natta, Mazzanti, and Pino were the joint inventors. If Montedison did mistakenly join Pino and Mazzanti as inventors, the remedy would not be the automatic invalidation of its patent as Du Pont contends, but rather Montedison would be afforded the opportunity to amend under 35 U.S.C. § 256, which provides: Whenever a patent is issued on the application of persons as joint inventors and it appears that one of such persons was not in fact a joint inventor, and that he.....was included as a joint inventor by error and without any deceptive intention, the Commissioner may . . . issue a certificate deleting the name of the erroneously joined person from the patent. The policy behind this provision is to make the amendment remedy widely available. Only when errors in inventorship are intentional or fraudulent will such amendment be disallowed. Du Pont has failed to adduce evidence that Montedison intentionally or fraudulently misjoined Mazzanti and Pino as inventors. Du Pont argues that Montedison can no longer avail itself of this amendatory provision because it did not exercise the necessary diligence in seeking to amend its application. According to Du Pont, the fact that Montedison has tolerated the allegedly erroneous listing for more than twenty years indicates a lack of diligence. Montedison has however exercised the necessary diligence. Soon after filing Montedison’s American application, Harry A. Toulmin, Montedison’s American patent counsel, investigated the inventorship three times and concluded that Montedison’s application correctly identified the investors. Toulmin’s finding was affirmed by the Opinion of the board in 1971. Montedison has therefore had no reason to seek to amend its application since that time. Best Mode Phillips also attacks Montedison’s June 8, 1954 constructive reduction to practice date, claiming that the American application does not disclose the “best mode contemplated by the inventor of carrying out his invention” as required by 35 U.S.C. § 112. Phillips concedes that Montedison’s Italian applications disclosed the best mode known as of their filing dates, but contends that by 1955, when Montedison filed its American patent application, it had discovered a better catalyst. Specifically, Phillips argues that Montedison had discovered that the titanium tetrachloride (TiCU) catalyst disclosed in 1954 was inferior to a titanium trichloride (TiCls) catalyst and that Montedison’s American patent application should have disclosed this improvement. It is well established that “the critical date with regard to disclosing the best mode contemplated is the date of the filing of the application”. The question in this case is which date is critical in a § 119 setting: that of the United States filing, or that of the prior foreign filing. Phillips claims that compliance with the best mode requirement of § 112 is to be measured by the date of filing of the American application, and that Montedison’s failure to disclose the TÍCI3 method in this application constitutes non-compliance sufficient for invalidation. Phillips bases this argument on a reading of § 119 that interprets the phrase “the same application” as meaning “the subsequent American application”. Phillips claims that this reading justifies the conclusion that Montedison’s American patent application should have been updated. Assuming arguendo that Phillips’s reading is correct, although the law is by no means clear, Phillips’s argument nevertheless ignores the clear language of the statute, which provides that the effective date of the subsequent American application is the date of Montedison’s Italian filing. It is not contested that as of that date, June 8, 1954, Montedison honestly believed that its best catalyst was TiCl4. Since Montedison’s subsequent American application accurately disclosed what Montedison honestly believed as of that application’s effective date, this Court finds that Montedison’s application satisfied the best mode requirements of § 112. DU PONT’S PRIORITY CASE Du Pont claims two priority dates: May 17, 1954 for an actual reduction to practice, and August 18, 1954 for a constructive reduction to practice based upon United States Application 451,064. The Board rejected Du Pont’s claim for an actual reduction to practice, finding no production of the product, no recognition of the product, and no recognition of utility. The Board accepted Du Pont’s claim for a constructive reduction to practice, and awarded Du Pont August 19, 1954 as its earliest possible priority date. After careful analysis, the Court finds that Du Pont did indeed produce, by May 17, 1954, a product meeting the limitations of the Count, but that since its inventors failed to recognize both the product and a utility for it by that date, the Board was correct in failing to find an actual reduction to practice. The Court also affirms the Board’s determination that Du Pont’s constructive reduction to practice was complete as claimed, and finds that Du Pont was properly awarded the benefit of August 19, 1954 as its earliest priority date. Du Pont’s Actual Reduction To Practice. Du Pont’s development of crystalline polypropylene began in 1953 in the Exploratory Research Section of the Research Division of the Polychemicals Department located in Wilmington, Delaware. During the relevant time period, Dr. W. F. Gresham headed the section, Drs. I. M. Robinson and Arthur Anderson served as Research Supervisors, and Drs. Nicholas G. Merckling, Gelu S. Stamatoff and Warren N. Baxter worked as Research Chemists. In late 1953 Merckling began research aimed at “the preparation of hydrocarbon polymers of superior properties including toughness and stiffness at elevated temperatures.” By February, 1954, Merckling had found a German patent that disclosed a reduced titanium tetrachloride (TiCU) catalyst useful “for the obtaining of solid polymerizates from ethylene.” The catalyst was made by reacting aluminum trichloride (AICI3), titanium tetrachloride (TiCU) and powdered aluminum at elevated temperatures and pressures. Using this catalyst, Merckling produced a homopolymer from ethylene which was surprisingly stiff. Following this encouraging lead, Du Pont scientists began to explore the potential use of reduced metal halides such as TiCU as catalysts for the polymerization of olefins, including propylene. By April 1954 Du Pont scientists had slightly modified the German catalyst by reducing TÍCI4 with various “Grignard reagents” rather than aluminum metal. With this improved catalyst they produced a polyethylene having an “essentially linear structure”. This polyethylene was “different in that it had a much lower amount of branching in the polymer chain.” Robinson expected that the new catalyst could be used to produce other polymers from various olefinic compounds including propylene, which would demonstrate “different structure (less branching).” As early as April 22, 1954 Merckling may have realized this expectation by polymerizing what Robinson considered to be their first solid polypropylene. Merckling produced too little product for further analysis, however. By May 1954 Stamatoff and Baxter had joined the olefin polymerization project, and on May 5, 1954 Stamatoff obtained a small amount of solid polymer, which he assumed was polypropylene. Although the sample, containing about “.1 to .2 grams” of polymer, was again too small to analyze, certain gross characteristics were observed: the sample was “solid polypropylene, and it was flexible”, and it had a stick temperature greater than 122 °F. (50° C.) to 167 °F. (75 °C.). Then, on May 17, 1954 Baxter conducted Run 4460-41 and produced the product upon which Du Pont premises its claim for an actual reduction to practice. Baxter began this Run on May 11, 1954 when he prepared a catalyst by mixing six grams of TiCl4, forty milliliters (mis.) of phenyl magnesium bromide and 200 mis. of cyclohexane. The resulting solid catalyst was then separated from liquid cyclohexane by filtration under an atmosphere of nitrogen gas, and stored for subsequent use. On May 17, 1954 Baxter charged a stainless steel lined Shakertube with three grams of the catalyst, 100 mis. of cyclohexane, and 50 g. of propylene. The reaction proceeded for two hours at a temperature of about 86°F. (30°C.). The product was then removed from the reactor and washed from the catalyst with toluene. Baxter then dissolved as much of the crude product as he could in methanol, hydrochloric acid, and acetone, and dried the residue in an oven at 150° F. (70 °C.). Careful analysis clearly and convincingly shows, despite the finding of the Board, that the 0.5 g. of resulting polymer satisfied the three limitations of the Count, although Du Pont’s scientists did not recognize what they had nor did they sufficiently prove the utility of their product. 1. Production of The Product of The Count. The first evidence that the product of Run 4460-41 was normally solid was an entry in Baxter’s Notebook describing it as “solid polypropylene” and further describing it as “tough” and “elastic”. This description is supported by Baxter’s testimony at trial, where he remembered: The film was solid, it was tough, it was translucent, it wasn’t sticky, it was slightly elastic in that when I gripped the ends with my fingers and pulled it, it might extend a little bit, perhaps 5 percent, and then recover. The solid polymer I then pressed into a film that was a tough film, it was flexible, elastic, it was translucent in appearance. Anderson testified that this film resembled a “rigid, tough plastic”, and that it was non-tacky. Michael Beck, who subjected this material to infrared analysis for Du Pont, remembered that this film appeared “hard”. The Court finds that this evidence is sufficient to establish that the product met the first limitation of the Count. Analysis of available infrared spectra convinces the Court that the product of Run 4460-41 was polypropylene, consisting essentially of recurring propylene units. Infrared absorption over the range of two to fifteen microns was measured and recorded on May 18, 1954 by Beck, producing scan D-35. At trial, Dr. Edward Brame testified that he had analyzed this scan and found bands at wavelengths near 7.25, 8.6, 10.03, 10.27, and 11.85 microns, and no absorbance peaks at 13.7 microns or 13.9 microns. On the basis of this information, Brame concluded “that this was a homopolymer of propylene”. Brame also concluded that, although there were some possible signs of head-to-head and tail-to-tail polymerization, the scan showed “primarily the structure of propylene polymerized head-to-tail”. Brame also testified that he noted absorptions at 13.3 to 13.35, 13.75, 13.95, 14.4 and 15.03 microns, and that these absorptions were “not associated with the fundamental chain structure of the polypropylene.” Upon further investigation, he attributed these absorptions to the presence of trace amounts of the catalyst, which had contained chloride and phenyl groups, and dismissed the possibility that these absorbances indicated that the product was a copolymer of propylene and ethylene. Since the accuracy of Brame’s conclusions is not contested, the Court adopts them as true and finds that Run 4460-41 produced a homopolymer of propylene having primarily head-to-tail polymerization that satisfied the second limitation of the Count. That the product of Run 4460-41 had a substantial crystalline polypropylene content was proven by testimony of Brame and also by analysis of x-ray scans and other physical testing data. Brame further analyzed scan D-35, at trial. Following a method first described by Dr. W. Heinen for determining the crystallinity of propylene samples, Brame compared infrared absorptions at 11.85 microns indicating the number of propylene units in the crystalline lattice and at 8.6 microns indicating the total number of propylene units in this sample. In this manner he estimated that the product of Run 4460-41 was about 28% crystalline. The presence of crystallinity was confirmed by x-ray analysis. On July 7, 1954 Dr. A. Ryland prepared an x-ray photograph, D-46. The appearance of crystalline diffraction maxima on the photograph indicated that the polymer was partially crystalline. The diffraction maxima were “represented by the relatively sharp circles which are apparent on this film, as contrasted to the rather diffuse blackening of thé film which is characteristic of an amorphous portion of the polymer.” Ryland subsequently informed Beck that Baxter’s product was partially crystalline. On August 2, 1954 she reported: “standard pattern taken for our files”, and later testified: “The fact that I have referred to a standard pattern of this material indicates to me that I detected discrete diffraction maxima since I would not have used that terminology to refer to an amorphous material.” Ryland compared scan D-46 to x-ray pictures of polyethylene and other polymers and concluded that the new scan showed a “diffraction pattern which was distinctly different from that of any of the other polymers in our files.” In her testimony before the Board, Ryland reexamined the x-ray diffraction patterns. She measured the interplanar spacings represented on those patterns and concluded that the partial crystallinity demonstrated by the product of Run 4460-41 was of the propylene type. Crystallinity was also confirmed by density and softening point measurements made of the product of Run 4460-41. In September 1954 Baxter reported that his polymer had a density of 0.88 g./cm.³. In addition, Baxter reported in a June 17, 1954 memorandum to Gresham that the product of Run 4460-41 had a transition temperature, which Baxter called a “softening point”, of 150°C. (302°F.). These numbers are within the range of values normally associated with crystalline polypropylene. 2. Recognition of The Product. Recognition of the product for the purpose of establishing an actual reduction to practice is established by appreciation that the product is' a new form, and knowledge of sufficient of its properties to justify the conclusion that it corresponds to the compound defined by the Count. Baxter clearly recognized by May 1954 that he had made a new product: Q. Well, do you recall what if any significance there was to you then in mid-May 1954 from this polypropylene film [from Run 4460-41] after you had made it and examined it? A. I recall that I thought it was significant that I had made a new, solid polypropylene, and to my knowledge solid polypropylene had not been made previously. ... Du Pont knew or appreciated very little else about its product prior to Natta’s priority date of June 8, 1954. It has not been established that the 302 °F. (150 °C.) transition temperature was measured before June 17, 1954. An x-ray picture was not prepared until July, 1954. The infrared scan was not thoroughly analyzed until August, 1954, and an accurate estimate of density was not made until September, 1954. Although Du Pont did ultimately obtain this information, it cannot be used to retroactively supplement an otherwise inadequate recognition. Du Pont’s recognition that the product of Run 4460-41 was normally solid is adequately demonstrated by the contemporane-ously recorded observations of the scientists who first saw Du Pont’s polymer. Since no party has challenged the adequacy of this evidence, the Court finds that Du Pont recognized enough about its product to justify the conclusion that it complied with the Count’s first limitation. As noted above, scan D-35, prepared on May 17,1954, contained enough information to establish that Baxter’s product was a polypropylene consisting essentially of recurring propylene units. The recognition requirement, however, cannot be satisfied by merely obtaining a diffraction scan, be it x-ray or infrared. The inventor must also focus his attention on the critical peaks in each scan. In Langer v. Kaufman for instance, the alleged inventor, Tornqvist, subjected the sample to x-ray testing. His machinery traced diffraction patterns and printed photographs that were sufficient to show that the product fitted within the count. Since he failed to produce any evidence that he appreciated the importance of particular peaks, however, the C.C.P.A. held that there was no recognition of the product. In the instant case, Beck testified before the Board that immediately after preparing infrared scan D-35, he identified certain absorption bands as being possibly correlated with known vibration modes and made notes to this effect on the scan itself. Beneath the near 8.6 micron peak, he wrote: isolated internal methyl groups and beneath the 10.27 micron peak, he drew an arrow. Beck informed Baxter of these observations and confirmed them in writing on May 21, 1954: “Spectrum scanned 2-15 microns. Spectrum shows strong absorption at 7.25u [microns] (methyls). Band at 8.69u [microns] may be due to isolated internal methyl groups (R_CCC_R) At trial, Baxter testified that he had expected his product to evidence characteristics consistent with the second limitation of the Count: I expected it would be a linear molecule, that is, the carbon atoms in the backbone would be joined together in the chain with a methyl group pendant from every other carbon atom, and that this polymerization would have taken place in a head-to-tail manner at the number 1 and 2 positions of the propylene molecule where the double bond is located. He also testified that Beck’s report confirmed these expectations, and that he probably “wrote down the structure on a piece of scrap paper, but . . . did not write it down to preserve it to this day”. Careful analysis of this testimony shows that Du Pont failed to adduce even a preponderance of the evidence that its scientists recognized enough about their product by late May 1954 to justify the conclusion that it was composed essentially of recurring propylene units. Although Beck might have recognized the three peaks at 7.25, 8.6 and 10.27 microns indicative of the presence of recurring propylene units, he did not note the peak at 10.03 microns, and failed to remark on the absence of peaks at 13.7 and 13.9 microns. The mere presence of the three observed peaks without recognition of the other critical peaks, is insufficient to justify the conclusion that a polymer is composed essentially of recurring propylene units. The Court can give little weight to Baxter’s testimony that he recognized the second limitation, unsupported as it is, by a shred of documentary evidence. The Court therefore cannot find that he or anyone else at Du Pont appreciated enough about their polymer to justify the conclusion that it conformed to the Count’s second limitation. In seeking to show that its scientists recognized enough about their product by May 17,1954 to justify the conclusion that it had a substantial crystalline polypropylene content, Du Pont relies principally upon Anderson. He testified that he had expected Baxter’s polymerization to produce a rubbery product similar to polyisobutylene but upon examining the non-tacky results of Run 4460-41, had found that it more closely resembled crystalline polyethylene. Anderson further stated that he was not surprised when he later learned that Baxter’s product was crystalline: [T]he properties were of such a nature that it would have been more surprising had it not been crystalline. It was my understanding at that time that the crystal forces would tend to hold the polymer molecules together so that it would be more difficult to allow them to slip by each other when stretched or bent or otherwise subjected to physical deformation. As a consequence of this, a crystalline material will always be stiffer and usually higher melting or higher softening than a material that is not crystalline having the same structure. Anderson’s trial testimony, however, conflicts with an earlier statement of his: I cannot honestly say that I remember having made a comparison between this film and polyethylene. It may well be that I did so, but I do not recall it now. [A]t the time this testimony was taken I stated that the film tended to resemble polyethylene. But it does not indicate that I made this comparison mentally back at the time that I was shown this film. I still cannot honestly testify that I recall having made the comparison at that time. It is undoubtedly true that this entered my mind at that time, but I don’t recall it. The Court also rejects Anderson’s testimony because of the lack of corroborating documentary evidence. It is illogical to believe that anyone who discovered a new product and realized that its distinguishing feature was its crystalline nature would fail to record that realization. More likely, Du Pont’s scientists were unwilling, without the x-ray testing and further infrared analyses which they subsequently carried out to conclude that Baxter’s product was crystalline. Dr. Paul J. Flory testified that a polymer might be either tough and elastic and therefore crystalline, or rubbery and therefore amorphous. The Court is reticent, however, to hold that observations that a material is tough and elastic but not rubbery, is sufficient to justify the conclusion that the product is crystalline, especially when such observations are based solely on manual manipulation. For example, Baxter used the words “tough”, “elastic”, and “rubbery” to describe the same product—polybutadiene. Apparently the qualitative observations of Du Pont’s scientists were not intended to carry the meaning that Flory sought to extract from them. Du Pont also notes that when Baxter first made his polymer it appeared as a granular powder, and when dried overnight at 150°F. (70°C.) remained granular. Flory testified that this indicated: [T]hat the melting [or softening] point of this polymer was above the temperature of the oven, 70 degrees Centigrade. Otherwise the polymer would have been—the particles of the powder would have coalesced and have formed a sticky mass. So it must have had a [. . . transition] temperature above that of the oven. Since all previously produced polypropylenes were amorphous and softened below 158 °F. (70°C.), Flory assumed that the distinguishing feature that raised the transition point of Baxter’s product was the presence of crystallinity. This argument presumes that Baxter’s product was polypropylene, a conclusion that could not have been justified by the data available to Du Pont prior to Natta’s priority date. Since there are many substances with melting points higher than 158 °F. (70 °C.), the mere fact that a product falls into this category is not a sufficient ground for the conclusion that it is solid crystalline polypropylene. Finally, Du Pont noted that Baxter made a preliminary determination of the density of his polymer prior to Natta’s June 8, 1954 date and recorded that it was “less than 0.89” g./cm.³. Since Du Pont