Appeal No. 2006-0704 Page 9
Application No. 10/060,697
composition to “add improved handling, moldability and consistency.” Examiner’s
Answer, page 11. Appellants, however, correctly point out that Yim does not state that
calcium sulfate improves those characteristics when added to any composition, only
that it does so when added to a specific prior art composition.
O’Leary does not disclose that a composition of demineralized bone powder and
carrier (and optional thickener) suffers from problems of poor handling, moldability, or
consistency. Nor does O’Leary state that the disclosed composition has characteristics
that are comparable to a composition of osteogenic proteins, autogenous blood, and a
porous particulate polymer matrix, like the one Yim discloses to be improved by the
addition of calcium sulfate.
On the contrary, O’Leary discloses that demineralized bone powder can be
mixed with a carrier, and optionally a thickener, to form compositions that range from
runny to putty-like. See column 3, lines 30-35; column 4, lines 39-41 (“The bone
powder composition . . . can be applied to the bone defect in a variety of ways, e.g., by
packing the site with the composition provided in the form of a highly viscous paste”);
column 5, lines 10-14 (exemplary composition of “pastelike consistency” that can be
applied using a syringe or spatula). Thus, O’Leary does not disclose that its
composition is in need of improved handling properties, such that those skilled in the art
would have been led to modify it as taught by Yim.
The examiner has not adequately explained how the prior art would have
suggested modifying O’Leary’s composition by adding calcium sulfate to it. Nor has the
examiner provided a rationale based on the knowledge of those of skill in the art or the
nature of the problem to be solved. Cf. In re Dembiczak, 175 F.3d 994, 999,
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