Appeal No. 94-1483
Application No. 07/695,141
itself. Speaking in terms of human insulin-encoding cDNA, the
court stated that "[d]escribing a method of preparing a cDNA
or even describing the protein that the cDNA encodes . . .
does not necessarily describe the cDNA itself." Univ. of
Cal., 119 F.3d at 1567, 43 USPQ2d at 1405. The court
emphasized that a high degree of specificity is required in
describing and supporting claims to genetic material. This is
not accomplished by setting forth the name of the protein that
cDNA encodes. In this context, the court stated that "[a]
definition by function, as we have previously indicated, does
not suffice to define the genus because it is only an
indication of what the gene does, rather than what it is."
Univ. of Cal., 119 F.3d at 1568, 43 USPQ at 1406. The best
way of complying with the written description requirement,
perhaps the only way, is to set forth the precise sequence of
nucleotides that make up the claimed genetic material.
Here, appellants set forth the nucleotide sequence for a
fluorescein-specific single chain T-cell receptor. See Figure
2 of the specification. Claims 14 through 16, 18, 20 through
22, 24 through 28, and 32 through 34, however, are not limited
to that subject matter. Rather, the claims recite genetic
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