Appeal No. 2004-2356 Page 4
Application No. 09/833,740
DISCUSSION
Written Description
Claims 1-5 and 9-11 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter that was not described in such a way as
to reasonably convey to one skilled in the relevant art that the inventors, at the
time the application was filed, had possession of the claimed invention, i.e., lack
of adequate written description.
We initially note that appellants argue that claims 1-5 stand or fall
together, and claims 9, 10 and 11 each stand or fall alone. See Appeal Brief,
page 7. As claims 1-5 stand or fall together, we focus our analysis of that group
on claim 1.
The Court of Appeals for the Federal Circuit, our reviewing court, has
addressed the issue of what constitutes an adequate written description for a
claim drawn to a nucleic acid. In Enzo Biochem, Inc. v. Gen-Probe Inc, 323 F.3d
956, 63 USPQ2d 1609 (Fed. Cir. 2002), the court adopted a portion of the
Guidelines proffered by the United States Patent and Trademark Office
(USPTO). The court stated 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 characteristics.”
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