Appeal No. 1997-2634
Application 08/222,662
regeneration material, until the bone regeneration material hardens and attaches to the
existing bone. On the other hand, according to Laurencin, the “specific function” of
hydrolytically unstable polyphosphazenes in bone repair “would be to support osteoblast
growth, forming a bone-polymer matrix” (page 963). Thus, both Elia and Laurencin
discuss the use of polyphosphazenes in the context of bone repair or replacement, but the
specific function of Elia’s porous containment systems is entirely different from that of
Laurencin’s hydrolytically unstable polyphosphazene growth supports.
Neither of the additional references cited by the examiner (Schacht and Lee) does
anything to remedy the underlying deficiency in the examiner’s proposed combination of
Elia and Laurencin.
We have no doubt that the prior art could be modified in the manner proposed by
the examiner, but the fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification. In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no
reason stemming from the prior art which would have led a person having ordinary skill in
the art to fabricate a hydrolytically unstable polyphosphazene matrix for repair or
replacement of bone with the specific porosity required by the claims. In our judgment, the
only reason or suggestion to combine the references in the manner proposed by the
examiner comes from appellant’s specification.
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