Appeal No. 2005-0147
Application No. 10/203,081
each requirement are different. See, e.g., University of Rochester v. G.D. Searle & Co.,
358 F.3d at 920-21, 69 USPQ2d at 1893; Enzo Biochem Inc. v. Gen-Probe Inc., 296
F.3d at 1324, 63 USPQ2d at 1612; Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1563, 19
USPQ2d at 1116. Since the “Wands” factors discussed by the examiner are not
relevant to the issue of written description, the rejection, in its entirety, is not
sustainable.
II. Enablement
The examiner argues that the claims are directed to any “viral reaper protein”
having specific structural and functional characteristics. Answer, p. 5. The examiner
further argues that the specification only discloses fifteen (15) examples of such
proteins and that all were isolated from one viral family, Bunyaviridae. Id. The
examiner still further argues that the specification fails to provide any guidance as to the
isolation of the claimed proteins from other viral families. Id. The examiner contends
that because no similar proteins have been discovered outside the Bunyaviridae family
in two database searches several years after the filing of the application,
it is reasonably inferred that a large quantity of additional experimentation would
be required to discover “viral reaper proteins” among viruses and viral proteins
that were uncharacterized and unknown at the time the invention was made.
Considering the scope of the claims, the limited scope of the disclosure, and the
quantity of experimentation required, it is concluded that undue experimentation
would be required to make and use the full scope of the claimed invention
[emphasis added]. Id.
It is well established that the specification must teach those skilled in the art to
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