Manual mode updating application
In re Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960).
In re Bosy, 360 F.2d 972, 149 USPQ 789 (CCPA 1966). If, however, the applicant develops specific instrumentalities or techniques which are recognized by the applicant at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well. Coherent, Inc., 827 F.2d 1524, 3 USPQ 2d 1737 (Fed. A best mode rejection is proper only when the first inquiry can be answered in the affirmative, and the second inquiry answered in the negative with reasons to support the conclusion that the specification is nonenabling with respect to the best mode. In re Newton, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969). The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public. Is the information contained in the specification disclosure sufficient to enable a person skilled in the relevant art to make and use the best mode? 119(e) and 120 required that the invention claimed in the later-filed application be disclosed in the earlier-filed application in the manner provided by pre-AIA 35 U. Section 15 of the Leahy-Smith America Invents Act also amended 35 U. Where an inventor knows of a specific material or method that will make possible the successful reproduction of the claimed invention, but does not disclose it, the best mode requirement has not been satisfied.
Failure to disclose the best mode need not rise to the level of active concealment or inequitable conduct in order to support a rejection.
The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute.
The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves.
119(e) or 120, which indicate that the disclosure in the earlier filed application must be made in the manner provided by 35 U.
112, first paragraph, "other than the requirement to disclose the best mode." See MPEP § 2165, subsection II. DEFECT IN BEST MODE CANNOT BE CURED BY NEW MATTERIf the best mode contemplated by the inventor at the time of filing the application is not disclosed, such a defect cannot be cured by submitting an amendment seeking to put into the specification something required to be there when the patent application was originally filed. Any proposed amendment of this type (adding a specific mode of practicing the invention not described in the application as filed) should be treated as new matter. There was no evidence that the specific Quartzmatic motor was superior except possibly in price.
In re Sherwood, 613 F.2d 809, 204 USPQ 537 (CCPA 1980).