SCOTT et al. V. KOYAMA et al. - Page 22





              Interference No. 103,635                                                                                     
              Scott contends that the Koyama application discloses an experiment, Experiment 3, which                      
              is representative of the process defined by the count and that when declarant John D. Scott                  
              attempted to repeat Experiment 3, he obtained a trichloroethylene conversion of 19-21%,                      
              and in one instance a conversion of 60%, instead of the 99% referred to in the Koyama                        
              application.  Based on the differing results, "Scott concludes that Koyama must have used                    
              some other condition or feature not disclosed by Koyama to obtain the results referred to in                 
              Example 3" (paper no. 22, p. 3). Scott speculates that "[t]his omission may be, for                          
              example, the use of pressure" (paper no. 22, p. 3).  Scott points out that Koyama does not                   
              disclose the use of pressure and that it is Scott who found that superatmospheric pressure                   
              should be used.  Scott also implies that a particular catalyst is necessary.                                 
                     We have carefully reviewed the Scott motion and the accompanying declaration and                      
              find that Scott has not established that Koyama at the time of filing its application, had a                 
              preferred embodiment for carrying out its method.  On this record, Scott has not                             
              established that Koyama knowingly withheld information regarding the best way to practice                    
              the claimed process.  "It is concealment of the best mode of practicing the claimed                          
              invention that section 112, ¶ 1 is designed to prohibit," Randomex, Inc. v. Scopus Corp.,                    
              849 F.2d 585, 588, 7 USPQ2d 1050, 1053 (Fed. Cir. 1988).  Absent evidence of                                 
              accidental or actual concealment by applicant, a rejection for failure to provide the best                   
              mode cannot be sustained.  In re Sherwood, 613 F.2d 809, 204 USPQ 537 (CCPA 1980),                           
              cert. denied, 450 U.S. 994 (1981).  No such evidence has been provided.                                      
                     We point out that Scott’s motion had been deferred to final hearing.  Scott argues                    
              that the Koyama specification is defective because it failed to disclose any pressure or                     
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