Appeal No. 2006-2627 Page 14
Application No. 09/947,833
ADAMS, Administrative Patent Judge, dissenting in part.
Obviousness is determined in terms of the level of skill of a person having
ordinary skill in the art at the time the invention was made. 35 U.S.C. § 103; Graham v.
John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). “A prima facie case of
obviousness is established when the teachings from the prior art itself would appear to
have suggested the claimed subject matter to a person of ordinary skill in the art.” In re
Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). This so called
“suggestion test” is not a rigid, inflexible test. To the contrary, the suggestion test is
flexible and requires that the evidence be viewed through the lens of a person of
ordinary skill in the art6 with consideration of common knowledge and common sense.
Dystar Textilfarben GMBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
1367, 80 USPQ2d 1641, 1650 (Fed. Cir. 2006).
As discussed in more detail below, on this record one need only read the
evidence as would a person of ordinary skill in the art. It begins with a teaching in the
art of two bone repair compositions that share a common core of ingredients and differ
only with regard to the presence of demineralized bone in one (O’Leary), and calcium
sulfate7 (Yim) in the other. Adding to this body of evidence is a third reference
6 “[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior
art and the claimed invention. This reference point prevents these factfinders from using their own insight
or, worse yet, hindsight, to gauge obviousness.” Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d
1795, 1797 (Fed. Cir. 2001), citation omitted.
7 Yim discloses the use of calcium sulfate hemihydrate. Appellants’ claims 1, 23 and 25 require calcium
sulfate. For clarity, I note that according to appellants’ specification the calcium sulfate can be calcium
sulfate hemihydrate. See, e.g., “Preferred Embodiment 6,” appellants’ specification, page 10. Therefore,
all reference to calcium sulfate, herein, refers to both calcium sulfate and calcium sulfate hemihydrate.
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