Appeal No. 2003-0936
Application No. 09/532,806
The invention is, for purposes of the “written
description” inquiry, whatever is now claimed.
More recently, the Federal Circuit discussed both the Vas-Cath
and Eli Lilly decisions (Vas-Cath, Inc. v. Mahurkar, supra; and
Regents of the University of California v. Eli Lilly & Co., 119
F.3d 1559, 43 USPQ2d 1398 (Fed. Cir. 1997)), in Enzo Biochem Inc.
v. Gen-Probe Inc., 296 F.3d. 1316, 63 USPQ2d 1609 (Fed. Cir. 2002).
The court stated in Enzo Biochem Inc. v. Gen-Probe Inc., 296 F.3d.
at 1324, 63 USPQ2d at 1613:
In Eli Lilly, we concluded that a claim to a microorganism
containing human insulin cDNA was not adequately described
by a statement that the invention included human insulin
cDNA. Id. at 1557, 43 USPQ2d at 1405. The recitation
of the term human insulin cDNA conveyed no distinguishing
information about the identity of the claimed DNA sequence,
such as its relevant structural or physical characteristics.
Id. We stated that an adequate written description of
genetic material “‘requires a precise definition, such
as by structure, formula, chemical name, or physical
properties,’ not a mere wish or plan for obtaining the
claimed chemical invention,” and that none of those
descriptions appeared in that patent. Id. at 1566,
43 USPQ2d at 1404 . . . . The specification in the
Eli Lilly case did not show that the inventors had
possession of human insulin cDNA.
However, the court in Enzo Biochem Inc. v. Gen-Probe Inc.,
296 F.3d. at 1329, 63 USPQ2d at 1616-17, clarified:
It is true that in Vas-Cath, we stated: “The purpose of
the ‘written description’ requirement is broader than to
merely explain how to ‘make and use’; the applicant must
also convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, he or she
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