Appeal No. 2001-0544 Page 12
Application No. 08/195,048
clearly allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.’”).
Gentry Gallery is instructive here. The invention in Gentry Gallery was a
sofa having two reclining seats and a “console” between them that housed the
controls for the seats. Id. at 1475, 45 USPQ2d at 1499. “[T]he original
disclosure clearly identifie[d] the console as the only possible location for the
controls. It provide[d] for only the most minor variation in the location of the
controls. . . . No similar variation beyond the console [was] even suggested. . . .
Thus, locating the controls anywhere but on the console [was] outside the stated
purpose of the invention.” Id. at 1479, 45 USPQ2d at 1503. In addition, the
“broadest original claim was directed to a sofa comprising, inter alia, ‘control
means located upon the center console.’” Id. “[W]hen viewed in its entirety, the
disclosure [was] limited to sofas in which the recliner control is located on the
console.” Id.
The inventor, however, later added claims that allowed the controls to be
placed outside the console. The court found that these claims lacked an
adequate written description. Id. at 1478, 45 USPQ2d at 1502. The specification
made clear that the inventor “considered the location of the recliner controls on
the console to be an essential element of his invention. Accordingly, his original
disclosure serves to limit the permissible breadth of his later-drafted claims.” Id.
at 1479 45 USPQ2d at 1503. The caselaw makes clear that “claims may be no
broader than the supporting disclosure, and therefore that a narrow disclosure
will limit claim breadth.” Id. Since the “disclosure unambiguously limited the
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