Appeal No. 2001-0288 Page 7
Application No. 08/277,031
there were at least 19 2C subtypes of human cytochrome P450. Thus, where is
the motivation to select P450 2C9?” However, as explained by the examiner
(Answer, page 13) “[t]he footnote at the bottom of page 443 indicates that
Yasumori et al.[](‘89) had already aligned the DNA sequences … making it clear
that the standard nomenclature for the ‘human-2’ enzyme of [Yasumori ‘89]
would be IIC9.” Thus, the motivation to select P450 2C9 comes from Yasumori
‘87 and Yasumori ‘89. A prior art reference must be considered in its entirety in
an obviousness inquiry and must include a “full appreciation of what such
reference fairly suggests to one of ordinary skill in the art.” In re Wesslau, 353
F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965). We note that appellants did
not respond to this point of fact.
Nevertheless, appellants argue (Brief, page 9) even if Yasumori [‘89]
teaches the 2C9 cytochrome, “Crespi discloses yeast expressing cytochrome
P450s 1A1, 1A2, 2A3, 3A4 and 2E1. Thus, to arrive at the invention … one
would have to modify the Crespi disclosure not only to add the 2C9 enzyme but
also to suppress expression of the 1A1 and 2A3 enzymes.” This argument,
however, requires that the claim be read as if the transitional phrase “consisting
of” modifies the cytochrome P450 molecular species recited in the claim. It does
not, therefore, we cannot agree with appellants’ interpretation of the claimed
invention. As explained by the examiner (Answer, page 13) claim 1 “permit[s]
the practice of a method that ‘comprises’ the use of the four human cytochromes
P450 recited therein, thus [claim 1] neither excludes the use of other
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