2165.02 Best Mode Requirement Compared to Enablement Requirement [R-11.2013]
The best mode requirement is a separate and distinct requirement from the enablement requirement of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112. In re Newton, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969).
The best mode provision of 35 U.S.C. 112 is not directed to a situation where the application fails to set forth any mode — such failure is equivalent to nonenablement. In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974).
The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public. If, however, the applicant develops specific instrumentalities or techniques which are recognized by the applicant at the time of filing as the best way of carrying out the invention, then the best mode requirement imposes an obligation to disclose that information to the public as well. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.), cert. denied, 484 U.S. 954 (1987).