Ex parte TODARO et al. - Page 6




              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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