Appeal 2007-1633
Application 09/480,236
In addition to these structural requirements, claim 51 provides the functional
requirement that the antibody be at least about 90% as effective on a molar
basis in competing with UCHT-1 for binding to human CD3 antigen.
The problem is, however, that Appellants’ Specification fails to
provide a disclosure of which residues are required for the antibody to be at
least about 90% as effective on a molar basis in competing with UCHT-1 for
binding to human CD3 antigen. In our opinion, a skilled artisan cannot, as
one can do with a fully described genus, visualize or recognize the identity
of the members of the genus that exhibit this functional property.
“A written description of an invention involving a chemical genus,
like a description of a chemical species, ‘requires a precise definition, such
as by structure, formula, [or] chemical name,’ of the claimed subject matter
sufficient to distinguish it from other materials.” University of California v.
Eli Lilly and Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405 (Fed. Cir.
1997 (bracketed material in original). The claims in Lilly were directed
generically to vertebrate or mammalian insulin cDNAs. See id. at 1567,
43 USPQ2d at 1405. The court held that a structural description of a rat
cDNA was not an adequate description of these broader classes of cDNAs.
The Lilly court explained that
a generic statement such as. . . ‘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.
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