Appeal No. 2003-1993
Application No. 09/470,526
In claims involving chemical materials, generic formulae usually indicate
with specificity what the generic claims encompass. One skilled in the art
can distinguish such a formula from others and can identify many of the
species that the claims encompass. Accordingly, such a formula is
normally an adequate description of the claimed genus . . . [H]owever, a
generic statement such as “vertebrate insulin cDNA” or “mammalian
insulin cDNA,” without more, is not an adequate written description of the
genus because it does not distinguish the claimed genus from others,
except by function. It does not specifically define any of the genes that
fall within its definition. It does not define any structural features
commonly possessed by members of the genus that distinguish them
from others. One skilled in the art therefore cannot, as one can do with a
fully described genus, visualize or recognize the identity of the members
of the genus. A definition by function, as we have previously indicated,
does not suffice to define the genus because it is only an indication of
what the gene does, rather than what it is.
Id.
The Lilly court also stated that “[a] written description of an invention involving a
chemical genus, like a description of a chemical species, ‘requires a precise definition,
such as by structure, formula, [or] chemical name,’ of the claimed subject matter
sufficient to distinguish it from other materials.” Id. at 1567, 43 USPQ2d at 1405.
Finally, the court addressed the manner by which a genus of cDNAs might be
described. “A description of a genus of cDNAs may be achieved by means of a
recitation of a representative number of cDNAs, defined by nucleotide sequence, falling
within the scope of the genus or of a recitation of structural features common to the
members of the genus, which features constitute a substantial portion of the genus.” Id.
at 1568, 43 USPQ2d at 1406.
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