Appeal No. 2002-1630 Page 8
Application No. 09/175,713
The Enzo court directed the district court to consider specifically Example
9 of the Written Description Guidelines.2 See 296 F.3d at 1327, 63 USPQ2d at
1615. That example describes a hypothetical application that discloses a single
cDNA (SEQ ID NO:1) encoding a receptor-binding protein and claims nucleic
acids that hybridize under “highly stringent conditions” to the complement of SEQ
ID NO:1. On these facts, the Example concludes that the claimed genus of
nucleic acids is adequately described, because “a person of skill in the art would
not expect substantial variation among species encompassed within the scope of
the claims because the highly stringent hybridization conditions set forth in the
eclaim yield structurally similar DNAs.”
In our view, claims 6-9 would also be considered to have an adequate
written description under the Guidelines. Claims 6-9 differ, in relevant part, from
Example 9 of the Guidelines in that the hybridization conditions recited are only
stringent rather than highly stringent. That is, the claims recite hybridization
conditions of, e.g., 4xSSC and 65°C, while the Example recites conditions of
6xSSC and 65°C. Therefore, claims 6-9 allow the claimed polynucleotides to
differ somewhat more in structure from the recited sequence. However, those
skilled in the art would expect polynucleotides that hybridize under either
stringent or highly stringent conditions to be similar in sequence (i.e., structure) to
the target polynucleotide. In any event, the examiner has not adequately
2 Example 9 of the Written Description Training Materials is available online at the USPTO web
site (www.uspto.gov/web/offices/pac/writtendesc.pdf). See pages 35-37.
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