Appeal No. 2007-0534
Application No. 10/463,016
perspective of one of ordinary skill in the art as of the relevant filing date. See
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111 (Fed. Cir.
1991). Falkner v. Inglis, 448 F.3d 1357, 1363, 79 USPQ2d 1001, 1007 (Fed. Cir.
2006). In Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir.
2005) the Federal Circuit stated, “[t]he ‘written description’ requirement implements the
principle that a patent must describe the technology that is sought to be patented; the
requirement serves both to satisfy the inventor's obligation to disclose the technologic
knowledge upon which the patent is based, and to demonstrate that the patentee was in
possession of the invention that is claimed.”
The "descriptive text needed to meet these requirements varies with the nature
and scope of the invention at issue, and with the scientific and technologic knowledge
already in existence. The law must be applied to each invention that enters the patent
process, for each patented advance is novel in relation to the state of the science. "
Capon, 418 F.3d at 1357, 76 UPQ2d at 1084.
"Since the law is applied to each invention in view of the state of relevant
knowledge, its application will vary with differences in the state of knowledge in the field
and differences in the predictability of the science." Id.
Precedent illustrates that the determination of what is needed to
support generic claims to biological subject matter depends on a variety of
factors, such as the existing knowledge in the particular field, the extent
and content of the prior art, the maturity of the science or technology, the
predictability of the aspect at issue, and other considerations appropriate
to the subject matter. See, e.g., In re Wallach, 378 F.3d 1330, 1333-34 [71
USPQ2d 1939] (Fed. Cir. 2004) (an amino acid sequence supports “the
entire genus of DNA sequences” that can encode the amino acid
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