Appeal No. 2004-0051
Application No. 09/746,795
the first paragraph of section 112. See Ex parte Ohshiro, 14
USPQ2d 1750, 1752 (Bd. Pat. App. & Int. 1990).
To satisfy the written description requirement, one skilled in
the art, reading the original disclosure, must “immediately discern
the limitation at issue” in the claims. Waldemar Link Gmbh & Co.
v. Osteonics Corp., 32 F.3d 556, 558, 31 USPQ2d 185, 1857 (Fed.
Cir. 1994). “It is ‘not a question of whether one skilled in the
art might be able to construct the patentee’s device from the
teachings of the disclosure....Rather, it is a question whether the
application necessarily discloses that particular device.’” Martin
v. Mayer, 823 F.2d 500, 505, 3 USPQ2d 1333, 1337 (Fed. Cir. 1987),
quoting Jepson v. Coleman, 314 F.2d 533, 536, 136 USPQ 647, 649-50
(CCPA 1963). The written description requirement is not satisfied
if the disclosure would lead one to speculate as to “modifications
that the inventor might have envisioned, but failed to disclose.”
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (Fed. Cir. 1997). Contrary to appellant’s discussion of
Gentry Gallery (Reply Brief, pages 3-4), there is no new “essential
element” test mandating an inquiry into what an inventor considers
to be essential to his invention. See Cooper Cameron Corp. v.
Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323, 62 USPQ2d
1846, 1850-51 (Fed. Cir. 2002). The Court in Gentry “applied and
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