Appeal No. 97-2764
Application No. 08/354,018
The essence of [the enablement requirement] is
that a specification shall disclose an invention in
such a manner as will enable one skilled in the art
to make and utilize it. Separate and distinct from
[enablement] is [the best mode requirement], the
essence of which requires the inventor to disclose
the best mode contemplated by him, as of the time he
executes that application, of carrying out his
invention.
. . . The question of whether an inventor has or
has not disclosed what he feels is his best mode is,
however, a question separate and distinct from the
question of the sufficiency of his disclosure to
satisfy the requirements of [enablement]. (emphasis
in original)
Furthermore, as to best mode,
The examiner should assume that the best mode is
disclosed in the application, unless evidence is
presented that is inconsistent with that assumption.
It is extremely rare that a best mode rejection
properly would be made in ex parte prosecution. The
information that is necessary to form the basis for
a rejection based on the failure to set forth the
best
mode is rarely accessible to the examiner, but is
generally uncovered during discovery procedures in
interference, litigation, or other inter partes
proceedings. See MPEP 7th edition § 2165.03.
"[T]here is no objective standard by which to judge the
adequacy of a best mode disclosure. DeGeorge v. Bernier, 768
F.2d 1318, 1324, 226 USPQ 758, 763 (Fed. Cir. 1985). Instead,
only evidence of 'concealment,' whether accidental or
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