Appeal No. 2005-0147
Application No. 10/203,081
based on underlying factual findings. In re Wands, 858 F.2d at 735, 8 USPQ2d at 1402;
In re Vaeck, 947 F.2d at 495, 20 USPQ2d at 1444.
In our view, one skilled in the art would understand whether a particular protein
has at least 50%, or at least 75%, sequence similarity with SEQ ID NO:2 as set forth in
the claims. In addition, we find that the functional assays disclosed in the specification
provide sufficient guidance for one skilled in the art to determine whether a particular
protein is within the scope of the claims. Accordingly, we agree with the appellant that it
would not require undue experimentation for one skilled in the art to “make and use” the
claimed methods.
As a final matter, with respect to the subject of taxonomy, we find the arguments
raised by both the examiner and the appellant to be misdirected. The relevant issue
here is whether the specification disclosure would have enabled one skilled in the art to
“make and use” a viral protein having the claimed characteristics, regardless of its name
or origin.
Other Issues
Upon return of this application to the corps, the examiner may wish to re-consider
whether claims 1 and 4 are unpatentable under § 112, first paragraph, written
description, as containing subject matter which was not described in the application in
such a way as to reasonably convey to one skilled in the relevant art that the inventors
had possession of the claimed invention at the time the application was filed.
The examiner states, and the appellant does not contest, that the fifteen viral
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