Appeal No. 2005-1422 Page 15
Application No. 09/997,522
distinguish it from other materials.” University of California v. Eli Lilly and Co.,
119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir. 1997), provides the appropriate
analysis. The claims in Lilly were directed generically to vertebrate or
mammalian insulin cDNAs. See id. at 1567, 43 USPQ2d at 1405. The court held
that a structural description of a rat cDNA was not an adequate description of
these broader classes of cDNAs, because a “written description of an invention
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.
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