Appeal No. 1996-3547 Page 11
Application No. 08/089,854
Moreover, we do not find the opinions and arguments supplied
in the Klaas de Groot declaration convincing for the reasons
presented above. We note that the appealed claims are drawn to a
prosthetic device per se, not a particular use of the prosthetic
device. In this regard, the declaration attempts to
differentiate appellants' invention from the prior art based on a
particular use of the prosthetic device in binding to a
hydroxyapatite portion of bone and on the capability of the
device to induce the formation of a calcium phosphate layer or
deposit calcium, all of which are not required by the claims.
See In re Self, 671 F.2d 1344, 1350-1351, 213 USPQ 1, 7 (CCPA
1982). Indeed, appellants appear to further undercut the de
Groot declaration by acknowledging in their specification that
the claimed invention is not limited to the theoretical
discussion therein regarding how the polymer may bind to bone
(specification, pages 2 and 3).
Appellants’ additional arguments and the de Groot
declaration opinion regarding Jones teaching away from the
claimed bone binding properties by teaching surface energy
matching are likewise unconvincing for the reasons discussed
above and since the claims do not require a specific bone binding
mechanism but rather a prosthetic device that could be fastened
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