Appeal No. 1995-2374
Application 07/673,158
It is also noted that the only DNA segments, vectors, and hosts for
which the specification provides adequate written description are those
limited to the DNA sequence of Figure 1.
While raising an issue under the written description requirement of 35 U.S.C. § 112, first
paragraph, the examiner has not made a separate rejection under this section of the
statute. Rather, the only rejection made is under the enablement requirement, not the
written description requirement.
Subsequent to the briefing in this appeal, our appellate reviewing court issued the
decision in University of California v. Eli Lilly and Co., 119 F.3d 1559, 43 USPQ2d 1398
(Fed. Cir. 1997). Therein, the court determined that claims to genetic material which are
couched only in functional language describing what the DNA does do not distinguish the
claimed genus from others and are not described in accordance with 35 U.S.C. § 112, first
paragraph, by equally broad language in the application.
Upon return of the application, the examiner should review all of the claims pending
in this application and determine whether they comply with the written description
requirement 35 U.S.C. § 112, first paragraph. In so doing, the examiner should take into
account the decision in University of California, supra. Also, the examiner should note that
claims, such as claims 11 and 16, define genetic material in a manner which is broader
than the definition of the genetic material in claim 5. It does not appear that the examiner
has separately considered the patentability of claims 11 and 16 on this record.
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