Appeal No. 1996-0047
Application No. 08/047,758
appellants (Brief, page 7), the evidence proffered is said to
show that the use of mono and dicarboxylic acids to prepare
hydrocarbyl substituted mono or dicarboxylic acid producing
materials was known to those skill in art at the time of the
invention. This statement has not been refuted by the
examiner. On this record, we are of the view that the
examiner simply fails to demonstrate that one of ordinary
skill in this art would not know how to make and use the
claimed invention without undue experimentation. This being
the case, we reverse this rejection as well.
With respect to the best mode requirement under 35 U.S.C.
§ 112, first paragraph, we are aware that the appellants must
disclose the best mode known to them at the time a patent
application is filed. Spectra-Physics, Inc. v. Coherent,
Inc., 827 F.2d 1524, 1535, 3 USPQ2d 1737, 1745 (Fed. Cir.),
cert. denied, 484 U.S. 954 (1987). The examiner, however,
fails to establish that appellants have withheld any
information regarding what he knew to be his best mode at the
time the parent or present application was filed. In re Gay,
309 F.2d 769, 773, 135 USPQ 311, 315-16 (CCPA 1962). The fact
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