Appeal No. 1999-1430
Application No. 08/441,893
of inoperative combinations becomes significant, and in
effect forces one of ordinary skill in the art to experiment
unduly in order to practice the claimed invention, the claims
might indeed be invalid. See, e.g., In re Cook, 439 F.2d
730, 735, 169 USPQ 298, 302 (CCPA 1971).
However, on this record, the examiner has not provided the evidence necessary
to demonstrate that one of ordinary skill in the art would be forced to experiment
unduly n order to practice the claimed invention.
Furthermore, it appears that events may have overtaken this ground of
rejection. In this regard, we direct the examiner’s attention to United States
Patent No. 5,350,683 (‘683) issued September 27, 1994. The instant application
is a continuation of the Sims patent, which is a divisional of the ‘683 patent.
We direct the examiner’s attention to claim 1 of the ‘683 patent:
1. An isolated DNA selected from the group consisting of:
(a) a cDNA clone having a nucleotide sequence encoding an amino
acid sequence of amino acids 1 through 385 of SEQ ID NO.:2;
(b) a DNA capable of hybridization to a clone of (a) under
moderately stringent conditions and which encodes a
biologically active type II IL-1R molecule; and
(c) a DNA having a sequence which is degenerate as a result of
the genetic code to a DNA as defined in (a) or (b) above and
which encodes biologically active type II IL-1R molecules.
Part “(b)” of this claim is drawn to a DNA that encodes a biologically active
type II IL-1R molecule and is capable of hybridization under moderately stringent
conditions to a cDNA clone having a nucleotide sequence encoding an amino
acid sequence of amino acids 1 through 385 of SEQ ID NO.:2. We note the
similarity of this DNA claim to appealed claim 16 drawn, in part, to an isolated
and purified Type II IL-1 receptor that binds IL-1 and is encoded by a DNA that
hybridizes under moderately stringent conditions with a DNA selected from the
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