Federal Circuit: Nucleotide Sequence of Claimed DNA not Required to Satisfy Written Description Requirement

Capon v. Eshhar v. Dudas (Fed. Cir. 2005).

In an interference proceeding regarding a chimeric genes for cell-surface antibody production, the BPAI the claims of both applications after finding that they both failed to provide an adequate written descriptions as required by 35 U.S.C. 112. Particularly the Board found that the written description must include a listing of the specific nucleotide sequence of claimed DNA.

On appeal, the CAFC reversed, finding that the per se rule requiring recitation in the specification of the nucleotide sequence of the claimed DNA to be incorrect when the sequence is already known in the field.

The Board's rule that the nucleotide sequences of the chimeric genes must be fully presented, although the nucleotide sequences of the component DNA are known, is an inappropriate generalization. When the prior art includes the nucleotide information, precedent does not set a per se rule that the information must be determined afresh.

On remand, the CAFC asked the Board to further explore whether the applications include appropriate descriptions in light of what is known in the field.