2165 The Best Mode Requirement
2165.01 Considerations Relevant to Best Mode
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).
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).
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
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).
II. EXAMPLES - BEST MODE REQUIREMENT NOT SATISFIED