Appeal 2007-0852
Application 09/919,195
exemplary compounds of specific disclosed structure” (Br. 11), but they
have not provided evidence that the cited patents describe antagonists which
are also not specific to at least one other RAR receptor subtype as recited in
claim 13.
In University of California v. Eli Lilly & Co., 119 F.3d 1559, 43 USPQ2d
1398 (Fed. Cir. 1997), the court held that claims generically reciting cDNA
encoding vertebrate or mammalian insulin were not adequately described by the
disclosure of cDNA encoding rat insulin. Id. at 1568, 43 USPQ2d at 1406. The
court held that
a generic statement such as “vertebrate insulin cDNA” or
“mammalian insulin cDNA,” without more, is not an adequate written
description of the genus because it does not distinguish the claimed
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 1569, 43 USPQ2d at 1406. The court held that a
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. The court has since clarified that the complete structure of the representative
species does not necessarily have to be described. See Enzo Biochem v. Gen-Probe
Inc., 323 F.3d 956, 964-65, 63 USPQ2d 1609, 1613 (Fed. Cir. 2002).
The instant Specification does not adequately describe the recited genera of
compounds having RARβ antagonist activity for use in the claimed method. 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,
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