Appeal No. 2000-2269 Page 10
Application No. 08/862,337
The court has held that a functional definition of DNA does not satisfy the written
description requirement. See Lilly, 119 F.3d at 1566, 43 USPQ2d at 1404 (“An
adequate written description of a DNA . . . ‘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. Accordingly, ‘an adequate
written 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.’”). See also id. at 1568, 43 USPQ2d at 1406
(“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.”). The court recently affirmed this interpretation of the written
description requirement. See Enzo Biochem, Inc. v. Gen-Probe Inc., 285 F.3d
1013, 1022, 62 USPQ2d 1289, 1297 (Fed. Cir. 2002).
Upon return of this case, the examiner may wish to consider whether,
under the reasoning of Lilly and Enzo, claims 26-34 should be rejected for failing
to meet the written description requirement of 35 U.S.C. § 112, first paragraph.
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