Appeal No. 2005-1383
Application No. 09/364,847
1563-64, 19 USPQ2d at 1117; In re Gosteli, 872 F.2d 1008,1012, 10 USPQ2d 1614,
1618 (Fed. Cir. 1989); In re Edwards, 568 F.2d 1349, 1351-52,196 USPQ 465, 467
(CCPA 1978).
With respect to the written description of inventions involving a chemical genus,
the Federal Circuit has stated that “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.” University of California v.
Eli Lily and Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1404, quoting Fiers v. Revel,
984 F.2d 1164, 1171, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993). Moreover, a “functional
description can be sufficient only if there is also a structure-function relationship known
to those of ordinary skill in the art.” In re Wallach, 378 F.3d 1330, 1334, 71 USPQ2d
1939, 1943 (Fed. Cir 2004); see also, University of Rochester v. G.D. Searle & Co., Inc.,
358 F.3d 916, 925, 69 USP2d 1886, 1893 (Fed. Cir. 2004); Enzo Biochem, Inc. v. Gen-
Probe Inc., 323 F.3d 956, 964, 63 USPQ2d 1609, 1613 (Fed. Cir. 2002).
We appreciate the examiner’s concerns with respect to the claims being directed
to a genus of enzymes which are described by their function; however, we find that, in
the case before us, the specification reasonably conveys to one skilled in the art that the
appellants were in possession of the invention at the time the application was filed.
Union Oil of California v. Atlantic Richfield Co., 208 F.3d at 997; Vas-Cath Inc. v.
Mahurkar, 935 F.2d at 1563-64; In re Gosteli, 872 F.2d at 1012; In re Edwards, 568
F.2d at 1351-52. Here, it appears that the examiner has studied the appellants’
disclosure and formulated a conclusion as to what he (the examiner) regards as the
broadest possible invention, and then determined that the appellants’ claims are
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