Appeal No. 2004-2314 Page 4
Application No. 09/971,101
We will reverse this rejection. The written description requirement of 35
U.S.C. § 112, first paragraph, does not require a description of the complete
structure of every species within a chemical genus. See Utter v. Hiraga, 845 F.2d
993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988) (“A specification may, within the
meaning of 35 U.S.C. § 112, ¶ 1, contain a written description of a broadly
claimed invention without describing all species that claim encompasses.”).
The Federal Circuit has held that “[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.” University of California v.
Eli Lilly and Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997).
The court has also held that the complete structure of a claimed DNA is
not necessarily required. The court adopted the standard that “the 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, alterations in original).
The instant claims are directed to polypeptides, not DNA as in Lilly and
Enzo, but the same standard applies. See University of Rochester v. G.D.
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