a reliable braze joint. 827 F.2d at 1531, 3 USPQ2d at 1741. In holding that the best mode was not
disclosed the court also relied upon following legal conclusion of the district court:
3. The six stage braze cycle employed by Coherent, and
developed by it, are [sic, is] necessary to the enjoyment of the
invention taught by the patents in suit by a person skilled in the art of
laser construction, and are [sic] not sufficiently disclosed by the
patents in suit. [Bracketed material and second emphasis original.
First emphasis added.]
827 F.2d at 1537, 3 USPQ2d at 1746. The six stage brazing cycle, while itself not required by the
claims, directly relates to the quality of the brazed joint, i.e., the claimed “means for attaching the
distal edge of each of the cup rims along the inside wall of said tube.” In other words, the six stage
brazing cycle had an impact on the quality of this particular element of the claimed subject matter.
David’s semi-automatic assay for identifying antibodies is not necessary for the enjoyment of
the David invention. David’s semi-automatic assay as not been shown to impact the quality of the
claimed assays. The antibodies identified by the semi-automatic assay have not been shown to give
a better assay or have any impact at all on the process set out in David’s claims.
We find that David did not violate the best mode requirement of 35 U.S.C. § 112, ¶ 1. In
view of our holding that the best mode requirement was not violated, there can be no inequitable
conduct for failure to comply with the best mode requirement.
B. Engvall’s inconsistent positions theory
Engvall argues that both before the patent examiner and before this board, David asserted that
the “at least about 10 liters/mole” limitation was “required,” “material,” and “critical,” to8
patentability. Engvall Brief, p. 132. Engvall also asserts that notwithstanding these representations,
David sought and procured patent claims in foreign countries which did not include any affinity
limitation. In Engvall’s view, these two positions are irreconcilable and inconsistent and, in failing
to inform either the patent examiner or this board of the positions taken in foreign patent offices,
David has violated the duty of disclosure to the PTO. Engvall Brief, p. 132.
In our view, taking different, irreconcilable and inconsistent positions before the PTO and
foreign patent offices coupled with the failure to disclose the different positions to the PTO may
support a conclusion that the duty of disclosure has been violated. David does not deny that broader
claims were asserted and obtained in foreign jurisdictions. However, this fact standing alone does
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