Appeal No. 2005-0258 Page 9
Application No. 09/768,877
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.
(bracketed material in original).
The Lilly court explained that
a generic statement such as. . . ‘mammalian insulin cDNA,’ without
more, is not an adequate written description of the genus because
it does not distinguish the 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.
Id. at 1568, 43 USPQ2d at 1406. Finally, the Lilly court set out exemplary ways
in which a genus of cDNAs could 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.
Our appellate reviewing court revisited the issue of describing DNA. See
Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 1316, 63 USPQ2d 1609 (Fed.
Cir. 2002). The Enzo court held that a claimed DNA could be described without,
necessarily, disclosing its structure. 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,
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007