Appeal No. 2001-0288 Page 13
Application No. 08/277,031
combination of Crespi, Sakaki, Yasumori ‘89, Paolini, Wolf, Yasumori ‘87 and
Yabusaki. We note that Crespi teaches “that ‘it is reasonable to expect that
additional P450s may be established to have primary responsibility for the
activation of other procarcinogens’ and that further cDNAs encoding other
cytochromes P450 may be expressed in their transformed cells.”
Claim 6:
According to appellants (Brief, page 12) “the Eugster, Ellis and Bligh
references merely provide description of the 2A6 or 2D6 enzymes. None of the
references provide any description at all of the 2C19 enzyme.” Appellants also
argue (id.) that “with respect to the 2C19 enzyme, the specification provides
evidence of unexpected results obtained using this enzyme.” However, as the
examiner points out, the claim “recites a Markush group of alternate, or even
multiple, choices. Patentability of this claim may not be determined solely by the
presence or absence of expression of a cytochrome P450 IIC19 when the
limitations of the claim are satisfied by any one of a set of equivalent elements.”
We agree.
Appellants also argue (Brief, page 12) that there is no suggestion to
combine the 2A6, 2C19 or 2D6 enzymes with the 1A2, 2C9, 2E1 and 3A4
enzymes “to make a yeast that is useful in a method for assaying the safety of a
chemical compound.” In response, the examiner argues (Brief, page 15) that
Ellis:
teach that the human cytochrome P450 IID6 may be successfully
expressed in yeast transformants in active form and that its
metabolism has been studied in association with “diseases such as
cancer and Parkinson’s disease.” Bligh et al. teach that the human
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