Appeal 2007-0543
Application 10/023,182
not necessary to satisfy the requirement (id. at 926, 69 USPQ2d at 1894). In
University of California v. Eli Lilly and Co., 119 F.3d 1559, 1568, 43 USPQ2d
1398, 1406 (Fed. Cir. 1997), the court explained that “[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. at 1569, 43 USPQ2d
at 1406). In addition, the court subsequently clarified that “the written description
requirement would be met for [a claim] . . . if [a] functional characteristic . . . were
coupled with a disclosed correlation between that function and a structure that is
sufficiently known or disclosed.” Enzo Biochem, 296 F.3d at 1324-25,
63 USPQ2d at 1613.
Finally, the court has made it clear that other factors, including the level of
knowledge and skill in the art, are relevant to whether a description satisfies § 112.
See Capon v. Eshhar, 418 F.3d 1349, 1359, 76 USPQ2d 1078, 1085 (Fed. Cir.
2005) (“[T]he 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.”).
Here the specification discloses more than forty representative peptides.
Each of the peptides is structurally identical to a portion of NY-ESO-1, the protein
encoded by SEQ ID NO: 1, and each of the peptides was identified on the basis of
what was known about MHC binding motifs at the time of the invention.
Moreover, at least three of the peptides were shown to meet the functional
limitations of the claims using a conventional cytotoxicity assay. We conclude that
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