Appeal No. 1996-2538
Application 08/097,869
With regard to the hybrid cytokines possessing a “desired activity,” we note that it is
not a requirement for enablement under 35 U.S.C. §112, first paragraph, that a
specification describe how to achieve a desired activity for a product. It is sufficient that
appellants demonstrate that the hybrid cytokines are active to some degree. In this regard
we point to the declarations filed March 31, 1993 (Leung #1) and July 27, 1993 (Leung
#2).
With regard to testing the hybrid cytokines for properties associated with their
native counterparts, it is noted that the specification on pages 19 and 20 describes
in vitro tests which can be used to assess the properties that a particular hybrid cytokine
has. Appellants urge that such tests are known and fully described in the literature articles
cited. The examiner has not established that assays are not known or would require undue
experimentation to perform in order to ascertain the various properties of a given hybrid
cytokine.
While not expressly stated by the examiner, to the extent that the examiner is
concerned that the claims might be inclusive of “inoperative” embodiments, such
concerns were addressed in Atlas Powder Co. v. E.I. DuPont De Nemours & Co.,
750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984):
Even if some of the claimed combinations were inoperative,
the claims are not necessarily invalid. “It is not a function of the
claims to specifically exclude... possible inoperative
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