Appeal No. 2003-0837 Page ~ PAGE ~8~
Application No. 09/078,531
prior art references for combination in the manner claimed.’” Ecolochem Inc. v.
Southern California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000). On this record, we find no evidence that a person of ordinary
skill in the art, with no knowledge of appellants’ claimed invention, would have
selected the elements required to reach appellants’ claimed invention from the
genus of choices provided in Grande.
Accordingly, we reverse the rejection of claims 33-35, 40, 41, 43, 44, 47-
49, 50 and 51 under 35 U.S.C. § 102(e) as being anticipated by or, in the
alternative, under 35 U.S.C. § 103 as being obvious over Grande.
Claims 42, 45 and 46
Claims 42, and 45-46 stand rejected under 35 U.S.C. § 102(e) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over
Grande. Claim 42 depends ultimately from claim 33 and further requires that the
cartilage defect comprises an articular cartilage injury, wherein the mesenchymal
stem cells are administered through arthroscopic injection. Claim 45 depends
from, and further limits, claim 44 to administering by injection directly into a
synovial cavity in proximity to a lesion. Claim 46 depends from, and further
limits, claim 44 the liquid suspension to further comprise serum or buffered
saline.
To reach these additional limitations, the examiner finds a new set of
inherent disclosures in Grande. Specifically, the examiner finds (Answer, page
5), “it is deemed inherent in the disclosure of the treatment of cartilage defects
that the phrase [sic] ‘injection’, as used in the [Grande] patent, encompasses any
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