Appeal No. 2002-1630 Page 7
Application No. 09/175,713
USPQ2d 1578, 1583 (Fed. Cir. 1996). “[T]he written description requirement can
be met by ‘show[ing] 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.’” Enzo Biochem, Inc. v. Gen-Probe
Inc., 296 F.3d 1316, 1324, 63 USPQ2d 1609, 1613 (Fed. Cir. 2002) (emphasis
omitted, bracketed material in original).
The Enzo court cited with approval the USPTO’s Written Description
Examination Guidelines See id. at 1327, 63 USPQ2d at 1615. Particularly
relevant here, the court noted that the Written Description Guidelines include an
example of “genus claims to nucleic acids based on their hybridization
properties.” Id. According to the Guidelines, “such claims may be adequately
described if they hybridize under highly stringent conditions to known sequences
because such conditions dictate that all species within the genus will be
structurally similar.” Id. The court directed the district court to consider the
Guidelines in determining whether the claims at issue were adequately
described. See id.
In this case, claims 6-9 are very similar to the genus claims defined by
hybridization properties addressed in Enzo, in that the broadest category of
nucleic acids defined by these claims are those that hybridize under stringent
conditions to a structurally defined polynucleotide. To be consistent with Enzo,
therefore, we consider how claims 6-9 would be treated under the Guidelines.
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