Interference Nos. 103,882, 103,933, and 104,228 Consolidated Judgment
Gregory v. Tsui et al. Page 19
publically known is the harm underlying abandonment). In both cases, the Commissioner
affirmed a decision that the applicant had, for the purposes of a priority contest, abandoned the
invention. Thus, the principle cited in Costello is that, in a priority contest, abandonment of an
application is also an abandonment of that constructive reduction to practice for any purpose
other than as evidence of conception because the applicant has "abandoned" the invention in the
sense now codified in § 102(g). The applicant's cure is to resume efforts to make the invention
publically known from a time prior to the conception of its opponent. All of this discussion of
abandonment is remote, however, from a failure to disclose a best mode unless we make a leap
from such failure to a holding of abandonment (a position that Tsui has not expressly advocated).
A best-mode violation is not a failure to take any steps to make the invention known. Rather a
best-mode violation is a holding back of information that is (by definition)19 not essential to the
practice of the invention. We decline to equate a putative best-mode violation with abandonment
for the purposes of § 102(g).
Tsui has not provided any other sufficient basis for stripping Gregory of the benefit of its
earliest applications.
D. The status of the Collins and Riordan patents
Both Collins and Riordan rely on Tsui's 609 application for priority, but Tsui was
designated senior party in their respective interferences. In the 933 interference, the
19 Otherwise, the violation would be a violation of the written-description requirement or the enablement
requirement. E.g., Bigham, 857 F.2d at 1418, 8 USPQ2d at 1269 (no-mode is a written-description problem, not a best-
mode problem).
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