Ex Parte Smith - Page 10




               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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