Appeal No. 2002-2030 Page 4
Application No. 09/294,663
representative sample of the genus and does not provide an adequate written
description for the genus.” Id.
We agree with the examiner’s reasoning and conclusion. The Federal
Circuit provided the appropriate standard in University of California v. Eli Lilly &
Co., 119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir. 1997). The claims in Lilly were
directed generically to vertebrate or mammalian insulin cDNAs. See 119 F.3d at
1567, 43 USPQ2d at 1405. The court held that a structural description of a rat
cDNA was not an adequate description of these broader classes of cDNAs,
because a “written description of an invention involving a chemical genus, like a
description of a chemical species, ‘requires a precise definition, such as by
structure, formula, [or] chemical name,’ of the claimed subject matter sufficient to
distinguish it from other materials.” Id. (bracketed material in original).
The Lilly court explained that
a generic statement such as . . . ‘mammalian insulin cDNA,’ without
more, is not an adequate written description of the genus because
it does not distinguish the genus from others, except by function. It
does not specifically define any of the genes that fall within its
definition. It does not define any structural features commonly
possessed by members of the genus that distinguish them from
others. One skilled in the art therefore cannot, as one can do with
a fully described genus, visualize or recognize the identity of the
members of the genus. A definition by function, as we have
previously indicated, does not suffice to define the genus because it
is only an indication of what the gene does, rather than what it is.
Id. at 1568, 43 USPQ2d at 1406. Finally, the Lilly court held that a genus of
cDNAs could be described
by means of a recitation of a representative number of cDNAs,
defined by nucleotide sequence, falling within the scope of the
genus or of a recitation of structural features common to the
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