Appeal No. 1997-3020
Application 08/149,101
activity identified through the use of such routine characterization studies will confirm the
ability or inability of a given hybrid cytokine to function for a given purpose.
For these reasons, we reverse the examiner’s rejection of claims 1 through 11 and
27 under 35 U.S.C. § 112, first paragraph (enablement).
2. Claims 12 through 26 and 28
Claim 12 on appeal recites a DNA molecule that encodes a hybrid cytokine
comprising 1) four "-helical regions, wherein the four "-helical regions are 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),
interleukin-11 (E), ciliary neurotrophic factor (C) and oncostatin-M (O), and 2) three linking
sequences, the linking sequences selected from at least a portion of one or more linking
sequences from any of the foregoing cytokines.
In the Examiner’s Answer (Paper No. 22, May 16, 1997), the examiner states on
page 17 that if the hybrid cytokines are not enabled under 35 U.S.C. § 112, first
paragraph, then making a non-enabled product through the use of the DNA molecule
recited in claims 12 through 26 and 28 is also not patentable under this statute. However,
the examiner does not dispute in any manner that one skilled in that would be able to use
the claimed DNA, vectors and hosts to make the hybrid cytokines.
We reverse the rejection of claims 12 through 26 and 28 under
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