Best Mode

Question 1

What impact does AIA have on Enablement?

Answer 1

AIA did not eliminate enablement but does prevent lacking of best mode to be the basis for validity or enablement

Question 2

Three considerations for Enablement:

Answer 2

1. Examiner to presume best mode exists
2. Invention is defined by the claims
3. Specification need not set forth details not relating to essence of the invention

Question 3

Enablement does not require:

Answer 3

1. Specific examples
2. Identify which of the modes described is the best mode
3. Lack of best mode is not curable to amend the specification with something that should have been filed initially

Question 4

Enablement 2-Prong Inquiry:

Answer 4

1. Did inventor possess best mode at time of filing (subjective)
2. If so, was it disclosed such that a POSA could practice it?
   Evidence of concealment
   Cases - computer software vs. laser inventions