applicant's contemplated best mode. Indeed, most of the cases in
which we have said that the best mode requirement was violated
addressed situations where an inventor failed to disclose non-claimed
elements that were nevertheless necessary to practice the best mode
of carrying out the claimed invention. [Citations omitted.]
We do not disagree with Engvall that the best mode requirement may require the disclosure
of non-claimed subject matter. However, for the reasons we have already stated, we do not believe
this is such a case. The facts here are unlike those in Chemcast. In Chemcast, the claimed subject
matter was a grommet for sealing openings in panels. The claims specified that the grommet have
a locking portion and a base portion and specified certain characteristics about the materials for each.
913 F.2d at 924-25, 16 USPQ2d at 1034. The district court had held one of Chemcast’s claim’s
invalid for failure to disclose the best mode. In particular the district court found that Chemcast had
not disclosed “(1) the particular type, (2) the hardness, and (3) the supplier and trade name, of the
material used to make the locking portion of the grommet.” Chemcast, 913 F.2d at 926, 16 USPQ2d
at 1035. The Federal Circuit affirmed because the inventor knew and had in mind a specific material
for the locking portion of the grommet that was “necessary for satisfactory performance” of the
invention. 913 F.2d at 928, 16 USPQ2d at 1037. In other words, Chemcast kept information to itself
which it knew would effect how well the claimed invention worked. David’s semi-automatic
screening assay has not been shown to have any impact at all on the performance of the process set
out in David’s claims. David’s screening assay has not been shown to result in antibodies which make
the claimed process better or achieve a better result.
We do not view Spectra-Physics Inc. v. Coherent Inc., 827 F.2d 1524, 3 USPQ2d 1737 (Fed.
Cir. 1987) as inconsistent with our view. In Spectra-Physics the patent claimes a laser. The laser
comprised cups inside of a tube and
means for attaching the distal edge of each of the cup rims along the
inside wall of said tube.
827 F.2d at 1527 n.2, 3 USPQ2d at 1739 n.2. The preferred means for attaching each cup to the tube
was a brazed joint between the edge of the cups and the tube. The court held that the patentee had
violated the best mode requirement by failing to disclose the specific six stage brazing cycle which
the inventor’s used to join each cup to the tube. The court noted that the six-stage cycle produced
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