Appeal 2007-1069
Application 10/334,990
In our opinion, Lilly is not the proper standard to apply to the claims
in this appeal. In Lilly, at issue was the written description of a novel DNA
genus. Lilly, 119 F.3d at 1563, 1567, 43 USPQ2d at 1401, 1405. In this
case, DNA sequences for the claimed enzymes were known in the prior art.
It is unnecessary for a patent application to provide a description of
nucleotide sequences which are already known in the prior art. Falko-
Gunter Falkner v. Inglis, 448 F.3d 1357, 1367, 79 USPQ2d 1001, 1008
(Fed. Cir. 2006). As explained in Capon v. Eshhar, 418 F.3d 1349, 1358, 76
USPQ2d 1078, 1084-5 (Fed. Cir. 2005):
The “written description” requirement must be applied in
the context of the particular invention and the state of the
knowledge. The Board’s rule that the nucleotide sequences of
the chimeric genes must be fully presented, although the
nucleotide sequences of the component DNA are known, is an
inappropriate generalization. When the prior art includes the
nucleotide information, precedent does not set a per se rule that
the information must be determined afresh. Both parties state
that a person experienced in the field of this invention would
know that these known DNA segments would retain their DNA
sequences when linked by known methods. Both parties explain
that their invention is not in discovering which DNA segments
are related to the immune response, for that is in the prior art,
but in the novel combination of the DNA segments to achieve a
novel result.
Here, the claimed enzymes – hydantoinase, hydantoin racemase, and
D- or L-carbamoylase – were well-known and characterized in the prior art.
As explained by Appellants, enzyme activities for each of the three enzyme
classes were known in the art prior to the filing date of the application (Br.
13). Conserved amino acid motifs had been established for each enzyme
class (Br. 16, 18, 20 (Tables 1-3)). Nucleotide information for these
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