Appeal 2007-0532
Application 10/828,316
elements recited in the instant claims, and that the formable composition is
then further treated to make a load-bearing implant. The fact that Boyce
subjects the disclosed formable composition to further treatment, however,
does not prevent the disclosure of that composition from making the instant
claims unpatentable under 35 U.S.C. § 103.
Appellants also argue that Boyce’s working examples do not teach
many of the limitations of the instant claims (Br. 7, 16) but that is irrelevant
to an inquiry into obviousness. “[I]n a section 103 inquiry, ‘the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807, 10
USPQ2d 1843, 1846 (Fed. Cir. 1989).
Appellants argue that neither Sander nor Breitbart disclose all of the
limitations of the instant claims (Br. 8-12, 17-21) but the rejection is based
on the teachings of the combined references. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Appellants also argue that “none of the cited references disclose the
additives of cells at a concentration of 105 – 108 per cc of carrier or a specific
amount of growth factor added to 10cc of carrier” (Br. 12, 21).
This argument is irrelevant to claim 21, which requires no particular
concentration of growth factor, and it is unclear to what extent it has
application to claim 23. Claim 23 requires a “cellular material taken from a
group consisting of living cells, cell elements such as red blood cells, white
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