Appeal No. 2003-1993
Application No. 09/470,526
The Federal Circuit has also addressed the written description requirement in the
context of 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.’” [Emphasis
added] Id. at 1324, 63 USPQ2d at 1613 .
The court in Enzo adopted its standard 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.
Finally, it is well-settled that the written description requirement of 35 U.S.C.
§ 112, first paragraph, can be satisfied without express or explicit disclosure of a later-
claimed invention. See, e.g., In re Herschler, 591 F.2d 693, 700, 200 USPQ 711, 717
(CCPA 1979): “The claimed subject matter need not be described in haec verba to
satisfy the description requirement. It is not necessary that the application describe the
claim limitations exactly, but only so clearly that one having ordinary skill in the pertinent
art would recognize from the disclosure that appellants invented processes including
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