Appeal No. 2001-0545 Page 9
Application No. 08/442,423
In Enzo-Biochem, the court refined the approach advanced by Eli Lilly,
adopting an example offered in the USPTO guidelines having facts that
contrasted with those of Eli Lilly, wherein the written description requirement
would be met. Thus, adequate written description may be present for a genus of
nucleic acids based on their hybridization properties, “if they hybridize under
highly stringent conditions to known sequences because such conditions dictate
that all species within the genus will be structurally similar.” Enzo Biochem, 296
F.3d at 1327, 63 USPQ2d at 1615.
Claim 20 is drawn to a method of inhibiting angiogenesis through the
administration of “a pharmaceutically effective amount of a nucleic acid bFGF
ligand.” Claim 20 further defines the method of identifying the bFGF ligand. The
nucleic acid ligand, however, is merely described in terms of function, i.e., the
ability to bind to bFGF. Moreover, the specification only discloses a small
number of nucleic acid sequences that bind to bFGF, see claim 21, and, as
noted by the specification, there are at least two distinct families of nucleic acid
ligands that bind to bFGF. See Specification, pages 28-29. Thus, even though
the specification discloses several sequences of nucleic acid ligands to bFGF,
such a disclosure does not provide an adequate disclosure of the genus as the
specification does not present data or evidence that the remaining members of
the genus hybridize under highly stringent conditions to the known sequences
such that all species within the genus will be structurally similar.
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