Appeal No. 2006-1035 Page 12
Application No. 09/925,140
structural features common to the members of the genus, which features
constitute a substantial portion of the genus.
Id. The court has since clarified that the description of representative species does not
necessarily have to include their complete structure (nucleotide sequence). See Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964, 63 USPQ2d 1609, 1613 (Fed. Cir.
2002).
The holding of Eli Lilly supports our conclusion that the instant specification does
not adequately describe the claimed genus of DNAs – those that encode naturally
occurring sequences at least 90% identical to SEQ ID NO:1. The Eli Lilly court held that
a fully described genus is one for which a person skilled in the art can “visualize or
recognize the identity of the members of the genus.” Here, the specification provides no
description of DNAs that encode naturally occurring variants of SEQ ID NO:1 that would
allow a person skilled in the art to determine whether a given DNA encoding an amino
acid sequence at least 90% identical to SEQ ID NO:1 is within the scope of the instant
claims.
The recitation of “naturally occurring” sequences does not imply any structural
features that would distinguish the claimed DNAs from non-naturally occurring DNAs.
Since the specification does not describe the claimed DNAs adequately for those skilled
in the art to distinguish the claimed DNAs from other DNAs, the specification does not
adequately describe the claimed DNAs under the standard of Eli Lilly.7
7 Our conclusion is also consistent with the Eli Lilly court’s treatment of claims directed to cDNA encoding
human insulin. The court noted that a description that merely renders obvious a claimed invention does
not describe that invention adequately to satisfy 35 U.S.C. § 112, first paragraph, and that a claim to a
specific DNA is not made obvious by knowledge of the encoded protein sequence and a method of
obtaining the DNA. 119 F.3d at 1567, 43 USPQ2d at 1405 (citing Lockwood v. American Airlines, Inc.,
107 F.3d 1565, 41 USPQ2d 1961 (Fed. Cir. 1997), and In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007