Appeal No. 2006-0102 Page 11
Application No. 09/732,439
When faced with circumstances similar to those at issue here, our
appellate reviewing court has held claims to lack adequate description. For
example, in University of California v. Eli Lilly and Co., 119 F.3d 1559, 43
USPQ2d 1398 (Fed. Cir. 1997), our appellate reviewing court held that claims
generically reciting cDNA encoding vertebrate or mammalian insulin were not
adequately described by the disclosure of cDNA encoding rat insulin. Id. at
1568, 43 USPQ2d at 1406. The court held that
a generic statement such as “vertebrate insulin cDNA” or
“mammalian insulin cDNA,” without more, is not an adequate
written description of the genus because it does not distinguish the
claimed 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.
Id. The court described two ways of properly describing a claimed genus:
A description of a genus of cDNAs may be achieved 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 members of the
genus, which features constitute a substantial portion of the genus.
Id. The court has since clarified that the description of representative species
does not necessarily have to include their complete structure (nucleotide
sequence). See Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964, 63
USPQ2d 1609, 1613 (Fed. Cir. 2002).
The Eli Lilly court held that a fully described genus is one for which a
person skilled in the art can “visualize or recognize the identity of the members of
the genus.” On this record, as the examiner points out (Answer, page 16),
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