Appeal No. 2001-0545 Page 8
Application No. 08/442,423
Guidelines proffered by the United States Patent and Trademark Office
(USPTO). The court stated that:
The written description requirement can be met by “showing that an
invention is complete by disclosure of sufficiently detailed, relevant
identifying characteristics . . . i.e., complete or partial structure,
other physical and/or chemical properties, functional characteristics
when coupled with a known or disclosed correlation between
function and structure, or some combination of characteristics.
Enzo Biochem, 296 F.3d at 1324, 63 USPQ2d at 1613 (citations omitted).
The court also addressed the issue of what constitutes adequate written
description of a claim to a broad genus of sequences. In The Regents of The
University of California v. Eli Lilly and Co., 119 F.3d 1559, 43 USPQ2d 1398
(Fed. Cir. 1998), the court determined that the disclosure of rat cDNA did not
provide adequate written description support for claims drawn to mammalian and
vertebrate DNA. Eli Lilly, 119 F.3d at 1567-68, 43 USPQ2d at 1405. The court
stated:
In claims to genetic material, however, a generic statement such as
“vertebrate insulin cDNA” or “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 possessed by members of the genus that distinguish
them from others. One skilled in the art therefore cannot, as one
can do with a fully described genus, visualize or recognize the
identity of the members of the genus. 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.
Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
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