Appeal No. 2004-2209 6
Application No. 09/406,445
With respect to written description, it is our finding that appellants have
established that the application and claims as originally filed convey that appellants
were in possession of the subject matter of the rejected claims. Additionally, in Gentry
Gallery, Inc. v. Berkline Corp., 134 F.3d 1475, 1478, 45 USPQ2d 1499, 1503 (Fed. Cir.
1998), the patentee had amended its claims to a sectional sofa so as to remove a
limitation that controls for a pair of parallel recliners be located on a console between
the recliners. The Federal Circuit held that the broadened claims failed to satisfy the
written description requirement because the written description clearly described the
central console as the only location for the controls. Id. at 1479, 45 USPQ2d at 1502. “In
Gentry, we applied and merely expounded upon the unremarkable proposition that a
broad claim is invalid when the entirety of the specification clearly indicates that the
invention is of a much narrower scope.” Cooper Cameron Corp. v. Kvaerner Oilfield
Prods., Inc., 291 F.3d 1317, 1323, 62 USPQ2d 1846, 1851(Fed. Cir. 2002). In the
present case, appellants have not stated that concrete is the only material for non-
metallic guide rails, nor have appellants stated that the use of concrete is essential or
necessary or is the only material contemplated for the invention. Thus, no rejection
under the written description requirement is tenable.
With respect to any rejection contemplated under the second paragraph of
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