Appeal No. 1997-3951
Application 08/238,987
production of cytokines such as TNF. Recombinant TNF, IL-2 and GMCSF can be obtained
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from Cetus Corporation, 1400 53 Street, Emeryville, CA, or Biogen corp. [sic, Corp.],
Cambridge, MA. IL-1 can be obtained can be obtained [sic] from Genentech, South San
Francisco, CA, or Hoffman-LaRoche, Nutley, NJ. Gamma interferon can be obtained from
Genentech, Biogen or Amgen Biologicals, Thousand Oaks, CA. LPS from E. coli, strain
055:B5 can be obtained from Difco, Detroit, MI.
Clearly, under the legal standards set forth above, the examiner needs to conduct
certain fact finding before concluding that the claims are non-enabled. That fact finding
has not been performed. Furthermore, the specification does provide guidance as to the
type of cytokines which are useful in the present invention, both by function and specific
compounds.
The examiner has not adequately explained why one skilled in the art would have undue
difficulty in identifying compounds which elicit production of such cytokines as required by the
claims on appeal.
The other aspect of the examiner’s position is his concern that the “claims broadly
encompass a significant number of inoperative species.” However, the examiner has not
favored the record with any specific examples of such “inoperative species.” As set forth in
Atlas Powder Co. v. E.I. Du Pont 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 . . . .
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