Appeal 2007-2681
Application 10/680,676
description is inadequate because “there is nothing to convey to one of skill
in the art that the properties in claim 14 could be reasonably predicted using
a digital image classification model” (id. at 6).
We will reverse the rejection for lack of written description. “The
‘written description’ requirement . . . serves both to satisfy the inventor’s
obligation to disclose the technologic knowledge upon which the patent is
based, and to demonstrate that the patentee was in possession of the
invention that is claimed. . . . The descriptive text needed to meet these
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
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