A Claimed Method Fails to Satisfy Written Description If It Is Not Described as a Whole

QUAKE v. LO

Before Reyna, Chen, and Hughes.  Appeal from the Patent Trial and Appeal Board (“PTAB”).

Summary: A claimed method must be expressly described as a whole in order to satisfy the written description requirement.

Dr. Quake and Dr. Lo separately filed patent applications with claims directed toward a method for determining the presence of a chromosomal abnormality in fetuses using random massively parallel sequencing (“MPS”) method.  Both Quake and Lo requested interferences to determine who first invented the method.  The PTAB agreed with Lo’s argument that four claims of Quake’s patent are unpatentable for lack of written description, and Quake appealed.  The Federal Circuit vacated and remanded the decision.  On remand, the PTAB found that the disclosures in Quake’s specification were insufficient to demonstrate that the inventors were in possession of the random MPS method, and again found Quake’s claims unpatentable.

The Federal Circuit affirmed the PTAB’s decision.  Quake’s specification only expressly describes detection to target sequences, and MPS is discussed in only two paragraphs.  The first paragraph refers to a separate patent application discussing MPS, but the teachings of that application could be used in either random or targeted MPS.  The second paragraph refers to “random sequence information,” but it does so in the context of identifying chromosomes through targeted MPS, not random.  The Federal Circuit determined that substantial evidence supports the PTAB’s finding that those two paragraphs together are not adequate to convey using random MPS to determine chromosomal abnormality, and held that Quake’s patent does not meet the written description requirements. 

Editor: Paul Stewart

Written by: Janet M. Allendorph, Ph.D. & Kendall Loebbaka