## Facts

- A Patent Office interference was declared between Gordon Gould’s patent application filed April 6, 1959 and Robert W. Hellwarth’s application filed August 1, 1961.
- The interference counts covered an optical maser (laser) with standard elements (laser material, pumping means, and an optical cavity) combined with means permitting “Q-switched” or “giant pulse” operation.
- Gould was the senior party by filing date, but the Board of Patent Interferences awarded priority to Hellwarth.
- The Board found Gould’s application did not provide an enabling disclosure under 35 U.S.C. § 112 for the subject matter of the counts, because it did not adequately teach how to make an operable Q-switched laser within the scope of the counts.
- Gould appealed, arguing his disclosure sufficiently supported the counts and that his earlier filing should control priority.

## Issues

1. Whether Gould’s 1959 application enabled a person of ordinary skill in the art, as of its filing date, to make and use an operable Q-switched (giant pulse) laser within the interference counts under 35 U.S.C. § 112.
2. Whether a senior party in an interference may rely on an earlier filing date to establish priority when the earlier application does not support the counts by an enabling disclosure.

## Decision

- The United States Court of Customs and Patent Appeals affirmed the Board’s award of priority to Hellwarth.
- The court held Gould’s application was not enabling for the interference counts under § 112.
- Because Gould’s earlier application did not support the counts, Gould could not rely on its filing date as a constructive reduction to practice for the counted subject matter.
- Hellwarth, whose application supported the counts, properly prevailed in priority.

## Legal Principles

- An application supports interference counts only if its specification satisfies 35 U.S.C. § 112 by teaching a person of ordinary skill in the art to make and use the claimed invention without undue experimentation.
- In an interference, an earlier filing date does not establish priority for a party whose earlier application fails to enable the subject matter defined by the counts.
- Disclosure of a general concept or desired result, without sufficient operational teaching, is inadequate to satisfy § 112 for purposes of priority.
- When a senior party’s disclosure is non-enabling for the counts, the junior party may prevail if the junior party’s disclosure supports the counts and priority is otherwise established.

## Conclusion

The court affirmed priority for Hellwarth because Gould’s earlier-filed application did not enable the Q-switched laser subject matter of the interference counts, so Gould could not use his filing date to establish priority despite being the senior party.


Gould v. Hellwarth, 472 F.2d 1383 (C.C.P.A. 1973)