Appeal No. 2003-0837 Page ~ PAGE ~9~
Application No. 09/078,531
type of injection including injection made through an arthroscope, thereby
anticipating the claim.” The examiner also finds (Answer, bridging sentence,
pages 5-6), Grande’s “disclosure of treatment of … joints is deemed to inherently
disclose an injection into the synovial cavity of these joints, thereby anticipating
the claim.” In addition, the examiner finds (Answer, page 6), Grande’s
“disclosure is deemed to inherently disclose a conventional pharmaceutical
ingredient, phosphate buffered saline (PBS), thereby anticipating the claims.”
Without reaching the merits of this new list of “inherent disclosures,” we
find it sufficient to state, this rejection suffers from the same deficiency as was
discussed above with regard to claims 33-35, 40, 41, 43, 44, 47-49, 50 and 51.
Accordingly, we reverse the rejection of claims 42, 45 and 46 under 35 U.S.C.
§ 102(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
obvious over Grande.
THE REJECTIONS UNDER 35 U.S.C. § 103:
Claims 36 and 37
According to the examiner (Answer, page 7), “[c]laim 36 recites the further
administration of a chondrogenesis promoting factor, specifically TGF-3 in [c]laim
37.” While not expressly stated by the examiner, Grande does not teach this
subject matter. To make up for this deficiency in Grande, the examiner relies on
Bruder and Joyce. Id.
Bruder and Joyce, however, fail to make up for the deficiency in Grande.
See supra. Accordingly, we reverse the rejection of claims 36 and 37 under 35
U.S.C. § 103 as being unpatentable over Grande in view of Joyce and Bruder.
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