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:
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