Appeal No. 1998-2436
Application 08/550,667
1996).2 If the inventor contemplated such a best mode, one
must then determine whether, objectively, the
specification adequately discloses the best mode such
that those having ordinary skill in the art could
practice it.3 Id. See also Great N. Corp. v. Henry Molded
Prods., 94 F.3d 1569, 1571, 39 USPQ2d 1997 (Fed. Cir.
1996).
In the present case, the examiner does not discuss
whether the specification adequately discloses the best
mode such that those having ordinary skill in the art
could practice it. The examiner simply states that
because the specification does not set forth the steps
discussed in the Cole declaration, then appellants have
withheld the best mode of carrying out the invention.
(answer, page 5). The examiner does not explain how the
Cole declaration shows that the specification does not
adequately disclose the best mode such that one of
ordinary skill in the art is unable to practice
appellants' invention. Accordingly, the examiner has not
met his burden.
In view of the above, we reverse the rejection of
claims 1-10 under 35 U.S.C. § 112, first paragraph, best
mode.
2 We note that the examiner has not raised this aspect of best mode in
the present case as an issue before us, and therefore need not be
considered.
3 We note that this aspect of best mode has been raised by the examiner
as an issue before us.
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