Appeal No. 2006-0704 Page 6
Application No. 10/060,697
formulation. . . . Further, there is nothing in the O’Leary reference to
suggest a problem with moldability, consistency, etc. . . . that might lead
one of ordinary skill in the art to seek an additive to address such a
problem.
Appeal Brief, pages 6-7.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “[T]o 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.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000). An adequate showing of motivation to combine requires “evidence
that ‘a skilled artisan, confronted with the same problems as the inventor and with no
knowledge of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif.
Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed. Cir. 2000).
In this case, we agree with Appellants that the examiner has not adequately
explained how the cited references would have suggested the composition of claim 16
to those of ordinary skill in the art. As recognized by the examiner, the composition of
claim 16 has five components: calcium sulfate, a mixing solution, a plasticizing
substance (e.g., hydroxypropyl methylcellulose), demineralized bone matrix, and
cancellous bone.
O’Leary discloses a composition for use in bone repair that has two required
ingredients: demineralized bone powder and a “biocompatible liquid synthetic organic
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