Appeal No. 1997-3020
Application 08/149,101
hybrids, using the standard techniques and accepted parameters which have been applied
previously to known native cytokines.
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
substances....” In re Dinh-Nguyen, 492 F.2d 856, 859, 181
USPQ 46, 48 (CCPA 1974).
The examiner has criticized example 1 on pages 15-16 of the specification 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 feels that example 1 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,
example 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
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