The above question is often a difficult one, the correct resolution of which depends upon complex factual inquiries. Clearly, the burden of proving that language contained in the parent application is the legal equivalent of the language contained in the claims of the later application is on the party asserting the equivalency, regardless of whether he is the junior or senior party in the interference, Crome v. Morrogh, 239 F.2d 390, 392, 44 CCPA 704, 708 (1956), and the burden is a heavy one. As was remarked in the principal opinion in In re Arkley, 455 F.2d 586, 589, 59 CCPA 804, ___ (1972), and not controverted in either of the other opinions, a "line of cases beginning with Ruschig II * * * have significantly tightened up on the application of the description requirement in the first paragraph of 35 U.S.C. § 112 * * *." (Footnote, listing three of these cases, omitted.)
Kean v. Wheelan, 102 F.2d 824, 26 CCPA 1010 at 1016; Weber v. Good et al., 129 USPQ 32 at 36 (Bd.Pat.Intf.). Appellant's position that the "substantially all * * * coarser than 60 mesh" recitation is not a critical limitation does not therefore remove its significance as a material limitation which it remains in accordance with the often declared rule that every, express limitation appearing in a claim copied for the purpose of interference must be regarded as material in determining the right to make the count. See, for example, Crome v. Morrogh, 239 F.2d 390, 44 CCPA 704 at 707 (1956). We therefore turn to the disclosure of the 1958 Storchheim application to see what support, express or inherent, there is for the material limitation that substantially all of the particles should be coarser than 60 mesh.
These "old rule" decisions placed the burden of proof on the party claiming benefit, regardless of whether the party was senior or junior, an applicant or patentee, trying to obtain benefit or defending an attack on its benefit. [These] decisions are based directly or indirectly on Wagoner v. Barger, 463 F.2d 1377, 1380, 175 USPQ 85, 87 (CCPA 1972) [which was based on Crome v. Morrogh, 239 F.2d 390, 391, 112 USPQ 49, 50 (CCPA 1956) which,] rather than being a benefit case, is a "right to make" case which, like the other "right to make" cases, placed the burden of proof on the copier. . . .
The examples in the parent application, of course, would have inherently possessed the same properties. See Crome v. Morrogh, 239 F.2d 390, 44 CCPA 704, 112 USPQ 49 (1956). In view of all the foregoing, we hold that appellant's parent application complies with the requirements of 35 U.S.C. § 112, first paragraph and that appellant is entitled to his filing date under 35 U.S.C. § 120.
Appellant, as the party copying claims from a patent for the purpose of instituting interference proceedings, must show by clear and convincing evidence that his disclosure supports the counts. Tummers v. Kleimack, 455 F.2d 566, 59 CCPA 846, 172 USPQ 592 (1972); Gubelmann v. Gang, 408 F.2d 758, 56 CCPA 1013, 161 USPQ 216 (1969); Dreyfus v. Sternau, 357 F.2d 411, 53 CCPA 1050, 1050, 149 USPQ 63 (1966); Crome v. Morrogh, 239 F.2d 390, 44 CCPA 704, 112 USPQ 49 (1956). The denial of appellees' motion to dissolve did not shift the burden.
Second, where support must be based on an inherent disclosure, it is not sufficient that a person following the disclosure might obtain the result set forth in the counts; it must inevitably happen. Crome v. Morrogh, 239 F.2d 390, 44 CCPA 704 [(1956)]. In Hansgirg v. Kemmer, 102 F.2d 212, 26 CCPA 937 (1939), the court said (emphasis in original):
The question is not whether the applicant party's application can be read to include the particular device of the patent, but whether it necessarily discloses the device. Gubelmann v. Gang, C.C.P.A., 408 F.2d 758, 766 (1969); Dreyfus v. Sternau, 357 F.2d 411, 415, 53 C.C.P.A. 1050 (1966); Jepson v. Coleman, 314 F.2d 533, 536, 50 C.C.P.A. 1051 (1963); Crome v. Morrogh, 239 F.2d 390, 392, 44 C.C.P.A. 704 (1956). "An ancillary question has been defined as one which, if decided in favor of the moving party, would necessarily result in judgment against his adversary, that is, that the moving party would be adjudged to be the prior inventor of the interference issue."
Jepson v. Coleman, supra; Bierly v. Happoldt, 201 F.2d 955, 40 CCPA 774. Second, where support must be based on an inherent disclosure, it is not sufficient that a person following the disclosure might obtain the result set forth in the counts; it must inevitably happen. Crome v. Morrogh, 239 F.2d 390, 44 CCPA 704. There is of record an affidavit filed in behalf of Sternau, the pertinent averments of which read as follows:
The applicable rule is that every express limitation must be regarded as material in determining the right to make a count. Crome v. Morrogh, 239 F.2d 390, 44 CCPA 704. Vogt must support the additional limitations in the dependent counts in issue in relation to the basic structure, and if he does not support the recitations of the basic structure, he plainly has no support for the additional recitations of the dependent counts in relation to that structure. The issue before us is quite narrow.
"When one copies claims from a patent for the purpose of instituting interference proceedings, in order to be successful, that person's application must clearly support those counts. See Brand v. Thomas, 96 F.2d 301, 25 CCPA 1053 [37 USPQ 505]; Crome v. Morrogh, 239 F.2d 390, 44 CCPA 704 [112 USPQ 49]. There must be no doubt that an applicant discloses each and every limitation of the claims and all doubts must be resolved against the copier. See [Louis H.] Segall v. [Marion W.] Sims et al., 276 F.2d 661, 47 CCPA 886 [125 USPQ 394]. * *"