Appeal No. 2003-0934 Page 4
Application No. 08/769,596
According to the examiner, Rosenthal “teach[es] that chondroitin sulfate and
animal protein are known to be useful for wound healing.” Paper no. 13, page 4. While
Rosenthal does teach that “all collagen types, tenascin, laminin, chondroitin sulfate,
hyaluronic acid, dermatan sulfate, heparin sulfate, heparin, elastin, fibrin, fibronectin,
vitronectin, dextran, or oxidized regenerated cellulose” are suitable materials “for use in
the repair of full and partial thickness defects of the skin,” the materials are used in the
form of a freeze-dried, bioabsorbable “fibrous mass,” “sponge” or “film” which “is readily
invaded by cells of the host organism,” and which is “strong and resilient enough to
resist collapse and may be cut and/or formed so as to conform to a wound shape so
that it protects and/or fills a wound bed.” Column 2, lines 37-48; and column 3, lines 1-
38. The examiner has not explained how or why Rosenthal’s teachings would have led
one skilled in the art to include chondroitin sulfate and animal protein as integral
components of a viscous, but flowable gel, and in a comparatively minor amount (about
0.1%).
As explained in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [ ] Close adherence
to this methodology is especially important in cases where the very ease
with which the invention can be understood may prompt one “to fall victim
to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.” [ ]
. . . to establish obviousness based on a combination of the elements
disclosed in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that was
made by the applicant. [citations omitted]
In other words, “there still must be evidence that ‘a skilled artisan, . . . with no
knowledge of the claimed invention, would select the elements from the cited prior art
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