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Percent Identity and the Written Description Requirement of
35 U.S.C. 112, first paragraph
Remy Yucel, Ph.D.Supervisory Patent Examiner
Technology Center 1600(571) 272-0781
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35 U.S.C. 112 Specification, first paragraph
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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Written Description- Notice and Materials
Written Description Guidelines (66 FR 1099 (Jan. 5, 2001); 1242 O.G. 168 (Jan. 30, 2001)– http://www.uspto.gov/web/menu/current.html#register
Training Materials• http://www.uspto.gov/web/patents/guides.htm
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Written Description- Coverage
Written in technology neutral manner since recent decisions of the Federal Circuit have written description implications in a broad range of technologies
– In re Curtis (dental floss)
– Noelle v. Lederman (antibodies)
– Univ. of Rochester v. Searle (pharmaceutical treatment)
– In re Wallach (DNA)
– Bilstad v. Wakalopulos (sterilizing apparatus)
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Written Description- Coverage
Products, Processes, Products by process
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Written Description- Coverage
Original claims
New claims and amended claims
Claims asserting benefit of an earlier priority or filing date
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General Principles
Basic inquiry: Can one skilled in the art reasonably conclude that the inventor had possession of the claimed invention at the time the application was filed?
Written description requirement is separate and distinct from the enablement requirement.
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General Principles
Strong presumption that an adequate written description is present in the application as filed.
Initial burden is on examiner to present prima facie case of lack of written description.
Applicant should show support for new or amended claims (MPEP 714.02 and 2163.06).
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Foundation for Examiner’s Analysis
Determine what each claim as a whole covers– Broadest reasonable interpretation in light of
and consistent with written description - In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997).
– Preamble and transition phrases treated under common usage
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Foundation for Examiner’s Analysis
Transition phrases
– Open: “comprising”, “having”
– Closed: “consisting of”
– “Consisting essentially of”• Necessarily includes listed ingredients• Open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention (PPG Industries Inc. v. Guardian Industries Corp., 156 F.3d 1351, 48 USPQ2d 1351 (Fed. Cir. 1998))
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Foundation for Examiner’s Analysis
Review entire application to understand what applicant has described as the essential features of the claimed invention– Review conducted from standpoint of one of
skill in the art at the time the application was filed
– Includes determining field of invention and level of skill and knowledge in the art
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Analysis
If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claim is not explicitly described in the specification, then the requirement for an adequate written description is met.
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How to Determine Possession?
Federal Circuit has not directly set forth a “possession test”
Extrapolate from decisions in various technologies
» e.g., Pfaff v. Wells Electronics, Vas-Cath v. Mahurkar, Fiers v. Revel
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How to Determine Possession?
Particularly troublesome when possession of species does not equate with possession of genus
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Evidence of Possession
Actual reduction to practice– Reduction to practice normally not
required• cf.: Amgen Inc. v. Chugai Pharmaceutical
Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991)
– Deposit of biological materials• Not a substitute for written description
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Evidence of Possession
Clear depiction of the claimed invention in detailed drawings– Pfaff v. Wells Electronics, Inc., 525
U.S. 55, 48 USPQ2d 1641 (1998)
What is conventional or well known to one skilled in the art need not be disclosed in detail– Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 19 USPQ2d 1111 (Fed. Cir. 1991)
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Evidence of Possession
Written description describing sufficient relevant identifying characteristics
– Weigh factual considerations including:• Level of skill and knowledge in the art• Complete or partial structure• Physical and/or chemical properties• Functional characteristics• Correlation between structure and function• Method of making
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Evidence of Possession
Written description describing sufficient relevant identifying characteristics
– The less mature the technology, the heavier the burden on the disclosure to demonstrate possession.
– Because the level of skill and knowledge in the art increases over time, it is essential to determine possession as of the effective filing date.
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Evidence of Possession
Possession analyzed for each claim drawn to a species, and thereafter for each claim drawn to a genus – Legal definitions of genus and species recognized
in patent law, not taxonomic definitions Written description for claimed genus may be
satisfied through sufficient description of a representative number of species– Species must be adequately described and must
fairly represent the variation within the entire genus
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New or Amended Claims, or Claims Asserting Entitlement to Earlier Filing Date
Each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure– Hyatt v. Boone, 146 F.3d 1348, 47 USPQ2d
1128 (Fed. Cir. 1998)
In some situations, minor errors in sequence information may be corrected by reliance on a deposited biological material
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New or Amended Claims, or Claims Asserting Entitlement to Earlier Filing Date
Each claim must include all elements which applicant has described as essential or critical– Tronzo v. Biomet, Inc., 156 F.3d 1154, 47
USPQ2d 1829 (Fed. Cir. 1998)– Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473, 45 USPQ2d 1498 (Fed. Cir. 1998)– Johnson Worldwide Associates Inc. v. Zebco
Corp., 175 F.3d 985, 50 USPQ2d 1607 (Fed. Cir. 1999)
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Written Description: Analysis of Percent Identity Claims
The following three examples illustrate analysis and determination of written description for claims reciting percent identity
– Example 1: Percent Identity and a well-known family of polypeptides.
– Example 2: Percent Identity and a novel polypeptide.
– Example 3: Percent Identity and a novel, inducible promoter region.
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Examiner’s Burden of Proof
Description as filed presumed adequate
No per se rules Allegation of unpredictability in the
art is insufficient Need reasonable basis to challenge
– Evidence– Technical reasoning
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Examiner’s Burden of Proof
Evidence and technical reasoning that indicates unpredictability may support a prima facie case for lack of written description.– In In re Curtis, the court held that there was
sufficient evidence to indicate that ordinary artisans could not predict the operability of other species other than the single one disclosed in the specification.
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Example 1: A New Restrictase Family Member
The specification discloses SEQ ID NO: 1 which encodes a polypeptide.
– The polypeptide is identified as a new restrictase family member based on a high level of homology to other restrictases.
– The amino acid sequence is identified as SEQ ID NO: 2.
– The specification does not disclose any other sequences, including any sequence with less than 100% identity to SEQ ID NO: 1 that encodes a polypeptide with restrictase activity.
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Example 1: A New Restrictase Family Member
The field recognizes that the restrictase family is well-characterized.
The art teaches several domains and motifs shared by all family members that are required for restrictase activity.
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Example 1: A New Restrictase Family Member
Consider the following claim: An isolated nucleic acid sequence that
encodes a polypeptide with at least 85% amino acid sequence identity to SEQ ID NO: 2; wherein the polypeptide has restrictase activity.
Is there written description?
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Example 1: A New Restrictase Family Member An isolated nucleic acid sequence that encodes a polypeptide with at least 85% amino acid
sequence identity to SEQ ID NO: 2; wherein the polypeptide has restrictase activity.
Weigh factual considerations such as: • Level of skill and knowledge in the art• Complete or partial structure• Physical and/or chemical properties• Functional characteristics• Correlation between structure and function
Analyze claim against the backdrop of a well-developed field and conclude that the written-description requirement is met for the claim above.
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Example 2: A novel polypeptide
The specification discloses SEQ ID NO: 1 which encodes a polypeptide.
– The polypeptide is novel and does not share significant sequence identity with any known polypeptide or polypeptide family but the polypeptide has a novel activity X.
– The amino acid sequence is identified as SEQ ID NO: 2.
– The specification does not disclose any other sequences, including any sequence with less than 100% identity to SEQ ID NO: 1 that encodes a polypeptide with activity X.
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Example 2: A novel polypeptide
Consider the following claim: An isolated nucleic acid sequence that
encodes a polypeptide with at least 85% amino acid sequence identity to SEQ ID NO: 2; wherein the polypeptide has activity X.
Is there written description?
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Example 2: A novel polypeptide
An isolated nucleic acid sequence that encodes a polypeptide with at least 85% amino acid sequence identity to SEQ ID NO: 2; wherein the polypeptide has activity X.
Weigh factual considerations
In this situation, there is no well-developed field of prior art because the polypeptide and its activity are novel.
The specification teaches a single, reference sequence and does not provide any information as to relevant characteristics or even partial structure/function information.
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Example 2: A novel polypeptide
Conclusion: The above claim does not meet the written description requirement, consistent with the reasoning in Curtis.
Under In re Alton, 37 USPQ2d 1578 (Fed. Cir. 1998), USPTO bears the burden of presenting evidence or reasons why persons skilled in the art would not find the disclosure of a species to be a description of the genus defined in the claims.– The Office Action would present evidence and reasons to
support a prima facie case.
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Example 3: A novel inducible promoter
The specification discloses: – a single nucleic acid sequence SEQ ID
NO: 1 which is a novel, inducible promoter– promoter activity is induced by Y– location of sequences common to all
promoters (e.g. CAAT-box)
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Example 3: A novel inducible promoter The specification does not disclose:
– other promoters that are inducible by Y– sequences or motifs responsible for
induction by Y.
The prior art does not teach promoters inducible by Y.
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Example 3: A novel inducible promoter
Consider the following claim: An isolated promoter with at least 85%
sequence identity to SEQ ID NO: 1; wherein the promoter is inducible by Y.
Is there written description?
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Example 3: A novel inducible promoter An isolated promoter with at least 85% sequence identity to SEQ ID
NO: 1; wherein the promoter is inducible by Y.
In this situation we have some structure-function information from the prior art.
However neither the prior art nor the specification teach the structure(s) required for induction by Y.
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Example 3: A novel inducible promoter An isolated promoter with at least 85% sequence identity to SEQ ID NO: 1; wherein the promoter is inducible by Y.
The structure-function information in the prior art is of a general nature because it describes promoter elements that are common to all promoters.
Presence of these common elements does not address the question of
what structure(s) are required for specific induction by Y.
Conclusion: Because the specification does not disclose a single sequence with less than 100% identity to SEQ ID NO: 1 with promoter activity that is inducible by Y and because the prior art is silent with respect to promoters that are inducible by Y, disclosure of general promoter motifs alone is not sufficient to fulfill the written description requirement.
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Example 3: A novel inducible promoter An isolated promoter with at least 85% sequence identity to SEQ ID NO: 1;
wherein the promoter is inducible by Y.
Conclusion: – because the specification does not disclose a single
sequence with less than 100% identity to SEQ ID NO: 1 with promoter activity that is inducible by Y; and
– because the prior art is silent with respect to promoter structure(s) that are inducible by Y, disclosure of general promoter elements alone is not sufficient to fulfill the written description requirement.
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Example 3: A novel inducible promoter
The Office action would present evidence and reasons to support a prima facie case for lack of written description based on the reasoning in Curtis.
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Thank You
Remy Yucel, Ph.D.
Supervisory Patent Examiner
TC1600
(571) 272-0781
