Appeal No. 2002-0033 Page 6
Application No. 09/372,020
The decision in Gentry Gallery cited as authority for this rejection by the
examiner does not create a new requirement of claim content. In Gentry Gallery the
issue was whether the written description, which described a specific location of a
control console on a reclining sofa, adequately supported broad claims that were not
limited to this location of the console; these broad claims were asserted by the patentee
against a reclining sofa having the control console in a different location. The Federal
Circuit held that the broad claims were not supported by the written description, and
were invalid. As explained in Johnson Worldwide Assoc. v. Zebco Corp., 175 F.3d 985,
993, 50 USPQ2d 1607, 1613 (Fed. Cir. 1999), "this court's determination [in Gentry
Gallery] that the patent disclosure did not support a broad meaning for the disputed
claim terms was premised on clear statements in the written description that described
the location of a claim element . . . as 'the only possible location' and that variations
were 'outside the stated purpose of the invention.' " Thus Gentry Gallery4 is simply one
of many decisions holding that "claims in an application which are broader than the
applicant's disclosure are not allowable." See e.g., In re Sus, 306 F.2d 494, 505, 134
USPQ 301, 310 (CCPA 1962) (citations omitted).
4 Gentry Gallery is a situation where the patent's disclosure made crystal clear that a particular
(i.e., narrow) understanding of a claim term is an "essential element of [the inventor's] invention."
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