Appeal No. 2004-2314 Page 5
Application No. 09/971,101
Searle & Co., Inc., 358 F.3d 916, 925, 69 USPQ2d 1886, 1893 (Fed. Cir. 2004)
(“We agree with Rochester that Fiers, Lilly, and Enzo differ from this case in that
they all related to genetic material whereas this case does not, but we find that
distinction to be unhelpful to Rochester’s position. It is irrelevant; the statute
applies to all types of inventions. We see no reason for the rule to be any
different when non-genetic materials are at issue.”).
Here, each of the genera of polypeptides objected to by the examiner –
those comprising at least 10, 20, 30, 40, 75, or 100 contiguous amino acids of
SEQ ID NO:2 or SEQ ID NO:4 – are described in the specification sufficiently to
meet the standard set out in Enzo. The specification provides the complete
structure of the claimed fragments of SEQ ID NO:2 or SEQ ID NO:4, in that the
complete sequence of SEQ ID NO:2 and SEQ ID NO:4 is described and the
claimed fragments are merely subsequences of the whole.
With respect to the claimed sequences that comprise at least 10, 20, 30,
40, 75, or 100 contiguous amino acids of SEQ ID NO:2 or SEQ ID NO:4, the Lilly
court held that a genus could be described via “recitation of structural features
common to the members of the genus, which features constitute a substantial
portion of the genus.” 119 F.3d at 1568, 43 USPQ2d at 1406. The Enzo court
held that such a description could take the form of “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.” 296 F.3d at 1324, 63 USPQ2d at
1613, emphasis added.
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