2165.03 Requirements for Rejection for Lack of Best Mode [R-11.2013]
I. ASSUME BEST MODE IS DISCLOSED UNLESS THERE IS EVIDENCE TO THE CONTRARY
The examiner should assume that the best mode is disclosed in the application, unless evidence is presented that is inconsistent with that assumption. It is extremely rare that a best mode rejection properly would be made in ex parte prosecution. The information that is necessary to form the basis for a rejection based on the failure to set forth the best mode is rarely accessible to the examiner, but is generally uncovered during inter partes proceedings.
II. EXAMINER MUST DETERMINE WHETHER THE INVENTOR KNEW THAT ONE MODE WAS BETTER THAN ANOTHER, AND IF SO, WHETHER THE DISCLOSURE IS ADEQUATE TO ENABLE ONE OF ORDINARY SKILL IN THE ART TO PRACTICE THE BEST MODE
According to the approach used by the court in Chemcast Corp. v. Arco Indus., 913 F.2d 923, 16 USPQ2d 1033 (Fed. Cir. 1990), a proper best mode analysis has two components:
- (A) Determine whether, at the time the application was filed, the inventor knew of a mode of practicing the claimed invention that the inventor considered to be better than any other.
The first component is a subjective inquiry because it focuses on the inventor’s state of mind at the time the application was filed. Unless the examiner has evidence that the inventors had information in their possession
- (1) at the time the application was filed
- (2) that a mode was considered to be better than any others by the inventors,
there is no reason to address the second component and there is no proper basis for a best mode rejection. If the facts satisfy the first component, then, and only then, is the following second component analyzed:
- (B) Compare what was known in (A) with what was disclosed - is the disclosure adequate to enable one skilled in the art to practice the best mode?
Assessing the adequacy of the disclosure in this regard is largely an objective inquiry that depends on the level of skill in the art. Is the information contained in the specification disclosure sufficient to enable a person skilled in the relevant art to make and use the best mode?
A best mode rejection is proper only when the first inquiry can be answered in the affirmative, and the second inquiry answered in the negative with reasons to support the conclusion that the specification is nonenabling with respect to the best mode.