Appeal 2007-1633
Application 09/480,236
Id. at 1568, 43 USPQ2d at 1406. Finally, the Lilly court set out exemplary
ways in which a genus of cDNAs could be described:
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.
Our appellate reviewing court revisited the issue of describing DNA.
See Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 1316, 63 USPQ2d 1609
(Fed. Cir. 2002). The Enzo court held that a claimed DNA could be
described without, necessarily, disclosing its structure. The court adopted
the standard that “the written description requirement can be met by
‘show[ing] that an invention is complete by disclosure of sufficiently
detailed, relevant identifying characteristics . . . i.e., complete or partial
structure, other physical and/or chemical properties, functional
characteristics when coupled with a known or disclosed correlation between
function and structure, or some combination of such characteristics.’” See
id. at 1324, 63 USPQ2d at 1613 (emphasis omitted, ellipsis and bracketed
material in original).
Our appellate review court has also noted that “Eli Lilly did not hold
that all functional descriptions of genetic material necessarily fail as a matter
of law to meet the written description requirement; rather, the requirement
may be satisfied if in the knowledge of the art the disclosed function is
sufficiently correlated to a particular, known structure.” Amgen, Inc. v.
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