Appeal No. 2006-2627 Page 29
Application No. 09/947,833
There can be no doubt that each of these cases is dependent on its own facts.31
However, each case exemplifies the flexibility implicit in a fact-based reasoned analysis
of obviousness, and provides insight on what a person of ordinary skill in the art would
glean from a full and fair reading of the prior art. As discussed above, on this record
one need only read the evidence as would a person of ordinary skill in the art.
On this record, O’Leary and Yim teach two bone repair compositions that share a
common core of ingredients that comprise hydroxypropyl methylcellulose and a mixing
solution. These two compositions differ only with regard to the presence of
demineralized bone in one (O’Leary), and calcium sulfate in the other (Yim). Adding to
this body of evidence is a third reference (Wironen) which expressly teaches the
combination of demineralized bone together with any one of a variety of agents that
“enhance the manipulable characteristics of strength and osteoinduction exhibited by
the composition,” comprising demineralized bone and cancellous bone. While Wironen
provides a listing of agents that fulfill this requirement, there can be no doubt that this
listing is not exhaustive.32 The evidence on this record, in addition to the knowledge of
a person of ordinary skill in this art at the time the invention was made, establishes that
calcium sulfate exhibits the same properties as those agents listed in Wironen.
See, e.g., Yim, column 8, lines 25-28.
31 In re Cofer, 354 F.2d 664, 667, 148 USPQ 268, 271 (CCPA 1966) (“[n]ecessarily it is facts appearing in
the record, rather than prior decisions in and of themselves, which must support the legal conclusion of
obviousness under 35 U.S.C. § 103”).
32 See, e.g., Wironen, page 6, lines 1-3, where Wironen provides a listing of specific agents, in addition to,
“like material[s]”.
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