Appeal No. 1999-1280
Application No. 08/379,813
structure…; (2) the regeneration of bone in both the horizontal and vertical direction…;
and (3) reduced occurrence of ankylosis and root resorption.
Although the examiner argues (Supplemental Answer, page 3) that
“[r]egeneration of bone in horizontal and vertical directions is taught by Bentz,” the
examiner failed to address appellants’ evidence of unexpected results regarding the
regeneration of the cementum and ligamentous structure, and reduced occurrence of
ankylosis and root resorption. We remind the examiner that “[w]hen prima facie
obviousness is established and evidence is submitted in rebuttal, the decision-maker
must start over.” In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976). “If a prima facie case is made in the first instance, and if the applicant comes
forward with reasonable rebuttal, whether buttressed by experiment, prior art
references, or argument, the entire merits of the matter are to be reweighed.” In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986). In our opinion,
the examiner has not carried his burden in response to rebuttal evidence.
In addition, appellants separately argue (Brief, page 8) that claims 6, 17, and 28
require “a combination of osteogenic proteins.” We note that these claims require the
specific combination of recombinant human BMPs 2 and 12. The examiner, however,
fails to identify any teaching or suggestion in Bentz that would lead one of ordinary skill
to this particular combination. Therefore, in our opinion, for claims 6, 17, and 28, the
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