2165

2165 The Best Mode Requirement

2165.01 Considerations Relevant to Best Mode

I. DETERMINE WHAT IS THE INVENTION

ELI LILLY

The key question in any obviousness double patenting analyis is: "Does any claim in the application define merely an obvious variation of an invention claimed in the patent asserted as supporting double patenting?" General Foods Corp. v. Studiengessellschaft Kohle mbH, 972 F.2d 1272, 1278 (Fed, Cir, 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA 1970)). Answering this question requires that the decision-maker first construe the claims in the patent and the claims under review and determine the differences between them. Eli Lilly & Co. v. Barr Laboratories, Inc., 251 F.3d 955, 970 (Fed. Cir. 2001). After determinig the differences, the decision-maker must determine whether the differences in subject matter render the claims patentably distinct. Id. Where the subject matter of a pending claim under review is an obvious variation of the subject matter of a patented claim, the pending claim is not patentably distinct. In re Vogel, 422 F.2d 438, 441 (CCPA 1970).

II. SPECIFIC EXAMPLE IS NOT REQUIRED

GAY

see also In re Gay, 309 F.2d 769, 774 (CCPA 1962) ("Not every last detail is to be described, else patent specifications would tum into production specifications, which they were never intended to be.").

III. DESIGNATION AS BEST MODE IS NOT REQUIRED

IV. UPDATING BEST MODE IS NOT REQUIRED

V. DEFECT IN BEST MODE CANNOT BE CURED BY NEW MATTER

2165.02 Best Mode Requirement Compared to Enablement Requirement

“[Application sufficiency under § 112, first paragraph, must be judged as of its filing date. It is an applicant’s obligation to supply enabling disclosure without reliance on what others may publish after he has filed an application on what is supposed to be a completed invention. If he cannot supply enabling information, he is not yet in a position to file.” In re Glass, 492 F.2d 1228, 1232 (CCPA 1974).

Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir. 1987) ("[a] patent need not teach, and preferably omits, what is well known in the art.")

2165.03 Requirements for Rejection for Lack of Best Mode

2165.04 Examples of Evidence of Concealment [R-3]

I. EXAMPLES - BEST MODE REQUIREMENT SATISFIED

SCRIPPS

In other words, there must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991).

Citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed. Circ. 1991), Appellant argues that “[o]pen-ended [ranges in] claims are not inherently improper” and that, in assessing whether such limitations in claims are in compliance with the enablement requirement, “the Examiner must first determine whether ‘there is an inherent, albeit not precisely known, upper [or lower] limit’ and the[n] secondly determine whether ‘the specification enables one of skill in the art to approach that limit.’”

Appellant contendsthat even though the upper end of the claimed range is open-ended, the Federal Circuit has held that this is not inherently improper, and that such a claim limitation may be supported (Appeal Br. 8, 9 (discussing Anderson Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007))). As stated in Anderson,

As we have said, “[o]pen-ended claims are not inherently improper, as for all claims their appropriateness depends on the particular facts of the invention, the disclosure, and the prior art. They may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.”

Id. at 1376–77, quoting Scripps Clinic & Research Found. v. Genetech, Inc., 927 F.2d 1565, 1572 (Fed. Cir. 1991).

II. EXAMPLES - BEST MODE REQUIREMENT NOT SATISFIED