Appeal No. 94-0224
Application 07/322,604
REMAND
Claim 45 is directed to a genus of recombinant genes, the DNA sequences of
which are described functionally. As set forth in University of California v. Eli Lilly & Co.,
119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997) claiming a DNA
sequence by function “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.”
Upon return of the application, the examiner should consider the claims on appeal
in light of this decision and take appropriate action.
REVERSED; REMANDED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
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