Appeal No. 1998-2836
Application No. 08/453,211
teaches (Table 9) that his Example 25 induces bone growth. 6
See, also, Oonishi, col. 13, ll. 29-43.
At any rate, for the reasons set forth above, the applied
prior art would have suggested to the artisan a bone
substitute material having the composition recited in claim
19. We can perceive of no reason why the composition
suggested by the prior art would not have also induced bone
formation. The mere recognition of latent functions or
properties possessed by a prior art process cannot serve as
the basis for patentably distinguishing over that prior art
process. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987), cert. denied,
484 U.S. 827 (1987). Note also In re Baxter Travenol Labs,
952 F.2d 388, 392, 21 USPQ2d 1282, 1285 (Fed. Cir. 1991)
(“[m]ere recognition of latent properties in the prior art
does not render nonobvious an otherwise known invention”) and
Ex parte Obiaya, 227 USPQ 58, 60 (Bd. App. 1985), aff'd. mem.,
795 F.2d 1017 (Fed. Cir. 1986) (“[t]he fact that appellant has
6The pathological remarks regarding example 25 indicate
that “[a]fter 4 weeks, a number of bone cells existed” and
“[a]fter 6 weeks, the bone increased in amount.”
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