Interference No. 103,635
Best mode is a question of fact. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
1524, 1535-1536, 3 USPQ2d 1737, 1745 (Fed. Cir.), cert. denied, 484 U.S. 954 (1987).
The purpose of the best mode requirement is to ensure that the public, in exchange for the
rights given the inventor under the patent laws, obtains from the inventor a full disclosure of
the preferred embodiment of the invention which they conceived. Id. See also In re Gay,
309 F.2d 769, 135 USPQ 311 (CCPA 1962).
Determining whether a patent application complies with the best mode requirement
involves two underlying factual inquiries. First, it must be determined whether, at the time
the patent application was filed, the inventor had a best mode of practicing the claimed
invention. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 927, 16 USPQ2d 1033,
1036 (Fed. Cir. 1990). Thus, the first inquiry is subjective, Chemcast, 913 F.2d at 928, 16
USPQ2d at 1036, and focuses on the inventor’s state of mind at the time they filed their
application. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1049, 34 USPQ2d 1565, 1569
(Fed. Cir.), cert. denied, 516 U.S. 988 (1995). Second, if the inventor had a best mode of
practicing the claimed invention, it must be determined whether the specification
adequately disclosed what the inventor contemplated as the best mode so that those
having ordinary skill in the art could practice it. Chemcast, 913 F.2d at 927-928, 16 USPQ
2d at 1036-37. Thus, the second inquiry is objective and depends upon the scope of the
claimed invention and the level of the skill in the art. Chemcast, 913 F.2d at 928-929, 16
USPQ2d at 1037.
Scott, in their motion, allege that the Koyama specification is defective in that it fails
to identify a condition or feature which would yield a 99% conversion of trichloroethylene.
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