Appeal No. 1996-2538
Application 08/097,869
substances....” In re Dinh-Nguyen, 492 F.2d 856, 859, 181
USPQ 46,48 (CCPA 1974).
The examiner has criticized Leung #1 on the basis that the media containing the
hybrid cytokine IGGG has less activity than conditioned media from mock transfected
control cells in supporting the growth of 32D cells, a cytokine-dependent cell line. The
examiner believes that the declaration does not show that hybrid cytokines encompassed
by the claims have predictable activity. However, the activity of IGGG at concentrations of
2.5%, 5.0% and 10.0% is greater than the activity of the mock transfected control cells at
the same concentrations. Contrary to the examiner’s opinion, Leung #1 demonstrates that
the hybrid cytokine IGGG supports the growth of 32D cells. Thus, one skilled in the art
would, at the very least, know how to use the claimed hybrids as culture reagents for
maintaining in vitro cultures of cytokine-dependent cell lines, similar to their native
counterparts. Again, it is not necessary to be able to predict with absolute certainty a
specific hybrid’s activity for enablement under 35 U.S.C. § 112, first paragraph.
The examiner has criticized Leung #2 on the basis that all of the different hybrid
cytokines tested, having different native "-helical regions, demonstrate the same activity
concerning the growth of Il-6-dependent cells 7TD1. Therefore, the examiner is of the
opinion that these results underscore the unpredictability of the activity of the claimed
hybrids. However, the examiner has again misapplied the standard of enablement based
solely on predictability in assessing the evidence presented in Leung #2. This declaration
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