Ex parte Lin, Appeal No. 2009-4275, Application No. 10/255,216 (BPAI October 30, 2009)
The Examiner rejected Lin’s patent application for failure to comply with the best mode requirement of 35 USC § 112p1. The Board reversed that rejection because Lin had not disclosed any embodiments. “The best mode provision of 35 U.S.C. § 112 is not directed to situations where no mode has been set forth, and therefore we cannot sustain this rejection.” (Citing Spectra-Physics and In re Glass)
Although Lin won that argument, the board affirmed parallel rejections of lacking enablement, utility, and definiteness.
Under the Federal Circuit’s 2002 precedent of Bayer v. Schein Pharma, the best mode requires “actual disclosure regardless of whether [the best mode] would be within the knowledge of one of ordinary skill in the art.”