# MPEP § 2165.04: Examples of Evidence of Concealment

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2165.04

## Section

- **Citation:** MPEP § 2165.04
- **Heading:** Examples of Evidence of Concealment
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2100 - Patentability / MPEP § 2165.04

## Text

In determining the adequacy of a best mode disclosure, only evidence of
concealment (accidental or intentional) is to be considered. That evidence must tend to
show that the
quality
of an inventor’s best mode disclosure is so
poor as to effectively result in concealment.
I.
EXAMPLES — BEST MODE REQUIREMENT SATISFIED
In one case, even though the inventor had more information in his
possession concerning the contemplated best mode than was disclosed (a known computer
program) the specification was held to delineate the best mode in a manner sufficient
to require only the application of routine skill to produce a workable digital
computer program.
In re
Sherwood,
613 F.2d 809, 204 USPQ 537 (CCPA 1980).
In another case, the claimed subject matter was a time controlled
thermostat, but the application did not disclose the specific Quartzmatic motor which
was used in a commercial embodiment. The court concluded that failure to disclose the
commercial motor did not amount to concealment since similar clock motors were widely
available and widely advertised. There was no evidence that the specific Quartzmatic
motor was superior except possibly in price.
Honeywell
v.
Diamond,
499 F.Supp 924, 208 USPQ 452 (D.D.C. 1980).
There was held to be no violation of the best mode requirement even
though the inventor did not disclose the only mode of calculating the stretch rate
for plastic rods that he used because that mode would have been employed by those of
ordinary skill in the art at the time the application was filed.
W.L. Gore
& Assoc., Inc.
v. Garlock Inc.,
721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).
There was no best mode violation where the patentee failed to
disclose in the specification “[k]nown ways to perform a known operation” to practice
the claimed invention. “Known ways of performing a known operation cannot be deemed
intentionally concealed absent evidence of intent to deliberately withhold that
information.”
High Concrete Structures Inc. v. New Enter
220 USPQ 303 (Fed. Cir. 1983).
There was no best mode violation where the patentee failed to
disclose in the specification “[k]nown ways to perform a known operation” to practice
the claimed invention. “Known ways of performing a known operation cannot be deemed
intentionally concealed absent evidence of intent to deliberately withhold that
information.”
High Concrete Structures Inc. v. New Enter. Stone & Lime
Co.,
377 F.3d 1379, 1384, 71 USPQ2d 1948, 1951 (Fed. Cir. 2004). The
unintentional failure to disclose in the specification the use of a crane to support
the patented frame in order to carry out the method of loading and tilting the frame
was held not to defeat the best mode requirement because one of ordinary skill in the
art would understand and use a crane to move heavy loads.
Id.
“The
best mode requirement of
[35 U.S.C.] § 112
is not violated
by unintentional omission of information that would be readily known to persons in
the field of the invention.”
Id.
There was no best mode violation where there was no evidence that
the monoclonal antibodies used by the inventors differed from those obtainable
according to the processes described in the specification. It was not disputed that
the inventors obtained the antibodies used in the invention by following the
procedures in the specification, that these were the inventors’ preferred procedures,
and that the data reported in the specification was for the antibody that the
inventors had actually used.
Scripps Clinic and Research Found.
v.
Genentech, Inc.,
927 F.2d 1565, 18 USPQ 2d 1001 (Fed. Cir.
1991).
Where an organism was created by the insertion of genetic material
into a cell obtained from generally available sources, all that was required to
satisfy the best mode requirement was an adequate description of the means for
carrying out the invention, not deposit of the cells
ad actually used.
Scripps Clinic and Research Found.
v.
Genentech, Inc.,
927 F.2d 1565, 18 USPQ 2d 1001 (Fed. Cir.
1991).
Where an organism was created by the insertion of genetic material
into a cell obtained from generally available sources, all that was required to
satisfy the best mode requirement was an adequate description of the means for
carrying out the invention, not deposit of the cells. As to the observation that no
scientist could ever duplicate exactly the cell used by applicants, the court
observed that the issue is whether the disclosure is adequate, not that an exact
duplication is necessary.
Amgen, Inc.
v.
Chugai Pharm. Co.,
927 F.2d 1200, 18 USPQ 2d 1016 (Fed. Cir.
1991).
There was held to be no violation of the best mode requirement where
the Solicitor argued that concealment could be inferred from the disclosure in a
specification that each analog is “surprisingly and unexpectedly more useful than one
of the corresponding prostaglandins . . . for at least one of the pharmacological
purposes.” It was argued that appellant must have had test results to substantiate
this statement and this data should have been disclosed. The court concluded that no
withholding could be inferred from general statements of increased selectivity and
narrower spectrum of potency for these novel analogs, conclusions which could be
drawn from the elementary pharmacological testing of the analogs.
In
re
Bundy,
642 F.2d 430, 435, 209 USPQ 48, 52 (CCPA 1981).
II.
EXAMPLES — BEST MODE REQUIREMENT NOT SATISFIED
The best mode requirement was held to be violated where inventors of
a laser failed to disclose details of their preferred TiCuSil brazing method which
were not contained in the prior art and were contrary to criteria for the use of
TiCuSil as contained in the literature.
Spectra-Physics, Inc.
v.
Coherent, Inc.,
827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.
1987)
S — BEST MODE REQUIREMENT NOT SATISFIED
The best mode requirement was held to be violated where inventors of
a laser failed to disclose details of their preferred TiCuSil brazing method which
were not contained in the prior art and were contrary to criteria for the use of
TiCuSil as contained in the literature.
Spectra-Physics, Inc.
v.
Coherent, Inc.,
827 F.2d 1524, 3 USPQ 2d 1737 (Fed. Cir.
1987).
The best mode requirement was violated because an inventor failed to
disclose whether to use a specific surface treatment that he knew was necessary to
the satisfactory performance of his invention, even though how to perform the
treatment itself was known in the art. The argument that the best mode requirement
may be met solely by reference to what was known in the prior art was rejected as
incorrect.
Dana Corp.
v.
IPC Ltd. P'ship,
860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 1988).
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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2165.04. Check the current official text before relying on it. Not legal advice.