Appeal No. 94-3676
Application 07/949,327
California v. Eli Lilly & Co., 119 F.3d 1559, 1566-67, 43
USPQ2d 1398, 1404 (Fed. Cir. 1997):
An adequate written description of a DNA, such as
the
cDNA of the recombinant plasmids and microorganisms . . .
“requires a precise definition, such as by structure,
formula, chemical name, or physical properties,” not a
mere
wish or plan for obtaining the claimed chemical
invention.
Fiers v. Revel, 984 F.2d 1164, 1171, 25 USPQ2d 1601, 1606
(Fed. Cir. 1993). Accordingly, “an adequate description
of a DNA requires more than a mere statement that it is
part of the invention and reference to a potential method
for isolating it; what is required is a description of
the
DNA itself.” Id. at 1170, 25 USPQ2d at 1606.
Citing Deuel and Bell, the court added, Id. at 1567-68,
43 USPQ2d at 1405-1406:
Thus, a fortiori, a description that does not render a
claimed invention obvious does not sufficiently describe
that invention for purposes of § 112 . . . .
. . . . .
. . . [A] description of rat insulin cDNA is not
a description of the broad classes of . . . mammalian
insulin cDNA.
. . . . .
. . . In claims to genetic material . . . 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 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
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