Appeal No. 2005-0258 Page 10
Application No. 09/768,877
functional characteristics when coupled with a known or disclosed correlation
between function and structure, or some combination of such characteristics.’”
See id. at 1324, 63 USPQ2d at 1613 (emphasis omitted, ellipsis and bracketed
material in original).
Post-Lilly, the court has clarified that the representative species need not
necessarily be described in terms of their complete chemical structure. See Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964, 63 USPQ2d 1609, 1613
(Fed. Cir. 2002) (“[T]he 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.’” (emphasis omitted, alterations in original)).
Our appellate review court has also noted that “Eli Lilly did not hold that all
functional descriptions of genetic material necessarily fail as a matter of law to
meet the written description requirement; rather, the requirement may be
satisfied if in the knowledge of the art the disclosed function is sufficiently
correlated to a particular, known structure.” Amgen, Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1332, 65 USPQ2d 1385, 1398 (Fed. Cir. 2003).
This standard applies to polypeptides as well as DNAs. See University of
Rochester v. G.D. 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,
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