Appeal No. 2005-1169 Page 5 Application No. 09/900,063 The Court of Appeals for the Federal Circuit, our reviewing court, has addressed the issue of what constitutes 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.” Enzo Biochem, 323 F.3d at 964, 63 USPQ2d at 1613 (citing Guidelines for Examination of Patent Applications Under the 35 U.S.C. § 112, ¶ 1 “Written Description Requirement, 66 Fed. Reg. 1099, 1106 (January 5, 2001)). The court also addressed the issue of what constitutes adequate written description of a claim to a broad genus of sequences. In The Regents of The University of California v. Eli Lilly and Co., 119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir. 1997), the court determined that the disclosure of rat cDNA did not provide adequate written description support for claims drawn to mammalian and vertebrate DNA. Eli Lilly, 119 F.3d at 1567-68, 43 USPQ2d at 1405. The court stated:Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007