Appeal 2006-3416
Application 10/884,751
description support for a later-claimed genus including that species); see also In re
Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973), “the case law
does ‘not compel the conclusion that a description of a species always constitutes a
description of a genus of which it is a part”’ either. Gentry Gallery, 134 F.3d at
1479, 45 USPQ2d at 1503 (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co.,
119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405 (Fed. Cir. 1997)); see also In re
Curtis, 354 F.3d 1347, 69 USPQ2d 1274 (Fed. Cir. 2004); Johnson Worldwide
Assocs. v. Zebco Corp., 175 F.3d 985, 993, 50 USPQ2d 1607, 1613 (Fed. Cir.
1999) (explaining that Gentry Gallery concerns “the situation where the patent's
disclosure makes crystal clear that a particular (i.e., narrow) understanding of a
claim term is an ‘essential element of [the inventor's] invention’”); and Tronzo v.
Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998). “It is a truism that
a claim need not be limited to a preferred embodiment. However, in a given case,
the scope of the right to exclude may be limited by a narrow disclosure.” Gentry
Gallery, 134 F.3d at 1479, 45 USPQ2d at 1503. Each case must be decided on its
own facts. In re Smythe, 480 F.2d at 1382, 178 USPQ at 284.
On the facts before us, the Specification describes in every embodiment that
the second flange is necessary to secure the graft vessel to the target vessel. If only
a single flange were used, it is not clear how the graft vessel would be prevented
from simply passing through the opening in the target vessel. As such, although
the Appellants’ Specification does not explicitly disavow or disclaim an
embodiment having a single flange, neither does the Specification present any
alternative to a device having two flanges that would achieve the function of the
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