Appeal 2007-1633
Application 09/480,236
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1332, 65 USPQ2d 1385, 1398
(Fed. Cir. 2003).
This standard applies to polypeptides as well as DNAs. See
University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 925, 69
USPQ2d 1886, 1893 (Fed. Cir. 2004): “We agree with Rochester that Fiers,
Lilly, and Enzo differ from this case in that they all related to genetic
material whereas this case does not, but we find that distinction to be
unhelpful to Rochester’s position. It is irrelevant; the statute applies to all
types of inventions. We see no reason for the rule to be any different when
non-genetic materials are at issue.”
With respect to the use of an assay to support written description, in
University of Rochester, the patent claimed a method of selectively
inhibiting the enzyme PGHS-2 (also known as COX-2) by “administering a
non-steroidal compound that selectively inhibits activity of the PGHS-2 gene
product to a human.” Id. at 918, 69 USPQ2d at 1888. The patent “describes
in detail how to make cells that express either COX-1 or COX-2, but not
both . . . , as well as ‘assays for screening compounds, including peptides,
polynucleotides, and small organic molecules to identify those that inhibit
the expression or activity of the PGHS-2 gene product.[’]” Id. at 927, 69
USPQ2d at 1895.
The court held that the disclosure of screening assays and general
classes of compounds was not adequate to describe compounds having the
desired activity: without disclosure of which peptides, polynucleotides, or
small organic molecules have the desired characteristic, the claims failed to
meet the description requirement of § 112. See id. (“As pointed out by the
district court, the ‘850 patent does not disclose just ‘which “peptides,
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