Appeal No. 1998-2436
Application 08/550,667
Upon our review of the specification, we must agree
with appellants that the steps of drawing and texturizing
are set forth in the original specification. We note
that on page 10 of the answer, the examiner argues that
the specification does not indicate that these steps are
used to form the filaments of the instant invention. We
disagree with the examiner’s understanding of appellants’
specification. The specification clearly sets forth that
filament 20 can be texturized and that filament 20 can be
drawn (page 8, lines 13 and 21 of appellants’
specification).
It appears that the examiner views the Cole
declaration (dated August 15, 1996) as providing more
information than appellants' specification regarding the
details of how to make appellants' filaments. Based upon
this, the examiner concludes that appellants have
withheld the best mode of carrying out the invention. We
determine that the examiner has not met his burden for
the following reasons.
Evaluation of whether the best mode requirement has
been satisfied entails two underlying factual inquiries.
One must first determine whether the inventor
subjectively contemplated a best mode of practicing the
claimed invention at the time the patent application was
filed. United States Gypsum Co. v. National Gypsum Co.,
74 F.3d 1209, 1212, 38 USPQ2d 1388, 1390 (Fed. Cir.
7
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