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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