Appeal No. 2002-0449 Page 7
Application No. 09/037,409
2. Written description
The examiner should also consider whether the instant claims are
supported by an adequate written description. The Federal Circuit has recently
addressed the application of the written description requirement to 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 a standard for
determining the sufficiency of descriptive support 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 proteins as well as DNAs. See
id. (citing Guidelines’ example of an antibody defined by its binding affinity). See
also id. at 1328-29, 63 USPQ2d at 1616 (“Even if a claim is supported by the
specification, the language of the specification, to the extent possible, must
describe the claimed invention so that one skilled in the art can recognize what is
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007