Appeal No. 2001-0288 Page 8
Application No. 08/277,031
cytochromes P450 in the method nor requires any subtractive modification of the
teachings of the prior art.” We agree.
Appellants next argue that the specification contains evidence of
unexpected results. Specifically, appellants argue (Brief, page 10) “the
specification indicates that cytochrome P450 2C9 shows high activity in
hydroxylating tolbutamide, P450 2C19 shows good activity, and other P450 2C
subtypes show only modest activity.” According to appellants (id.):
though there is a reference indicating that tolbutamide is
metabolized by P450 2C subtypes, their relative activity is not
expected in view of the cited prior art … [therefore] [t]he selection
of P450 2C9 unexpectedly provides a yeast that can best
metabolize tolbutamide in addition to other compounds and this
unexpected result provides a ground for patentability of the
invention described in claims 1-5 and 10-14.
We are not persuaded by appellants’ argument. It is well settled that once
a prima facie case of obviousness is established, the burden of going forward
with proofs of patentability shifts to the applicant. In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). However, it is equally well settled that
the comparison must be with the closest prior art, In re De Blauwe, 736 F.2d
699, 705, 222 USPQ 191, 195 (Fed. Cir. 1984); In re Burckel, 592 F.2d 1175,
1179, 201 USPQ 67, 70 (CCPA 1979); and that the comparison must be
commensurate with the scope of the claims, In re Grasselli, 713 F.2d 731, 743,
218 USPQ 769, 778 (Fed. Cir. 1983). On this record, claim 1 does not require
that the yeast metabolize tolbutamide. Instead, as the examiner explains
(Answer, page 14) the limitation in claim 1 drawn to the “‘evaluation of the safety
of a chemical compound’, requires no particular efficacy with any single
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