Appeal No. 94-1483
Application No. 07/695,141
Description Requirement, 35 U.S.C. § 112, First Paragraph
Claims 14 through 16, 18, 20 through 22, 24 through 28,
and 32 through 34 are rejected under 35 U.S.C. § 112, first
paragraph, as based on an inadequate written description of
the claimed invention.
These claims are drawn to (1) genetic material, including
DNA; (2) an expression vector containing DNA; (3) a
prokaryotic or eukaryotic host cell containing the expression
vector; and
(4) a method of culturing the host cell. They all fall short
of complying with the written description requirement of the
statute because appellants' specification does not provide the
kind of specificity necessary to support them.
As stated in Univ. of Cal. v. Eli Lilly and Co., 119 F.3d
1559, 1566-69, 43 USPQ2d 1398, 1404-07 (Fed. Cir. 1997), an
adequate written description of genetic material, such as DNA
or cDNA, requires a precise definition, e.g., by structure,
formula, chemical name, or physical properties. A mere wish
or plan for obtaining the claimed chemical invention, or a
general method for obtaining the genetic material involved,
will not do. What is required is a description of the DNA
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