Appeal No. 2002-0427 Page 5
Application No. 08/179,656
Examiner’s Answer, page 10. She concluded that “the specification lacks an
adequate written description for variants and non-naturally occurring analogues
of the LDGF2 of SEQ ID NO:17” because, among other reasons, “[w]ith the
exception of [SEQ ID NO:17], the skilled artisan cannot envision the detailed
chemical structure of the encompassed proteins, and therefore conception is not
achieved until reduction to practice has occurred,” and “[o]ne cannot describe
what one has not conceived.” Id., page 11, citing Fiers v. Revel, 984 F.2d 1164,
25 USPQ2d 1601 (Fed. Cir. 1993), and Fiddes v. Baird, 30 USPQ2d 1481 (Bd.
Pat. App. Int. 1993).
The Federal Circuit has recently addressed the written description
requirement in the context of DNA-related inventions. See Enzo Biochem, Inc.
v. Gen-Probe Inc., 296 F.3d 1316, 63 USPQ2d 1609 (Fed. Cir. 2002). The Enzo
court adopted the standard 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 such characteristics.’” Id. at 1324, 63 USPQ2d at 1613
(emphasis omitted, bracketed material in original).
While the invention at issue in Enzo was DNA, the holding of that case
would also seem to apply to a claimed protein. The court adopted its standard
from the USPTO’s Written Description Examination Guidelines. See 296 F.3d at
1324, 63 USPQ2d at 1613 (citing the Guidelines). The Guidelines apply to
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