Appeal No. 1996-2538
Application 08/097,869
DISCUSSION
The patent examiner bears the initial burden of providing reasons why a supporting
disclosure does not enable one skilled in the art to make and use a claimed invention. In
re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). The examiner’s
position concerning the enablement of the appealed claims is two-fold. First, the examiner
is of the opinion that it would require undue experimentation for one skilled in the art to
make the hybrid cytokines such that the hybrid cytokines possess a desired activity.
Second, the examiner is of the opinion that there is an unpredictability in the activity of any
one hybrid cytokine encompassed by the claims on appeal.
Claim 1 on appeal recites a hybrid cytokine comprising first, second, third and
fourth "-helical regions, wherein each of the first, second, third and fourth "-helical regions
is derived from the corresponding "-helical region of a factor selected from the group
consisting of leukemia inhibitory factor (L), granulocyte-colony stimulating factor (G),
interleukin-6 (I) and oncostatin (O), and wherein at least one of the "-helical regions of the
hybrid cytokine is derived from a factor different from that of the other "-helical regions.
Claim 20 is directed to a pharmaceutical or veterinary composition which comprises an
effective amount of the hybrid cytokine in admixture with a pharmaceutically acceptable
excipient.
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