Appeal 2007-0862
Application 10/680,675
requirements varies with the nature and scope of the invention at issue, and
with the scientific and technologic knowledge already in existence.” Capon
v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005).
Here, the Examiner argues that the Specification does not adequately
describe the “quantifiable characteristics” to be selected for using the
claimed method, relying on the test defined by University of California v. Eli
Lilly and Co., 119 F.3d 1559, 43 USPQ2d 1398 (Fed. Cir. 1997), and cases
applying it. That test, however, does not apply to every generic term recited
in a claim: it applies only to a chemical genus encompassing compounds
that are not defined by structure. See Amgen, Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1332, 65 USPQ2d 1385, 1398 (Fed. Cir.
2003): “Both Eli Lilly and Enzo Biochem are inapposite to this case because
the claim terms at issue here are not new or unknown biological materials
that ordinarily skilled artisans would easily miscomprehend.”
Like the “vertebrate cells” and “mammalian cells” recited in the
claims at issue in Amgen, the term “quantifiable characteristics” recited in
the instant claims is not a “new or unknown biological material[ ] that
ordinarily skilled artisans would easily miscomprehend.” As in Amgen, the
Eli Lilly/Enzo Biochem test that the Examiner relies on is inapposite here.
The Examiner also argues that the claims lack adequate descriptive
support because the Specification does not describe how to use images only
of embryo organs to practice the claimed method or how to classify embryos
according to the properties recited in claim 14 using digital image
classification (Answer 5, 6).
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Last modified: September 9, 2013