Appeal No. 2006-0704 Page 10 Application No. 10/060,697 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (“[E]vidence of a suggestion, teaching, or motivation to combine may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.”). Thus, the examiner has not made out a case of prima facie obviousness. We therefore reverse the rejection of claims 16-30 under 35 U.S.C. § 103. Our dissenting colleague would affirm the rejection. Determining obviousness under § 103 is not a completely objective analysis. Reasonable people can differ on whether a given product would have been obvious to a hypothetical person at a particular time in the past. In our view, though, the analysis set out in the dissent relies on impermissible hindsight in combining the teachings of the cited references. As we understand it, the dissent argues that a person of ordinary skill in the art would have been led to combine the cited references because Yim teaches that calcium sulfate hemihydrate-containing substances have osteoconductive properties, O’Leary teaches that bone powder has osteoconductive properties, and Wironen teaches that various ceramics, hydroxyapatites, and “like material[s]” are osteoconductive and useful in bone repair compositions.5 In our view, this reasoning relies on the hindsight reconstruction that the courts have condemned. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617 (“Combining prior art references without evidence of such a suggestion, teaching, or motivation 5 The dissent also cites three patents that are of record but not relied on by the examiner. We will not further lengthen this opinion with a discussion of those references. The rejection on appeal is the one made by the examiner, not one that hypothetically could have been made. If the examiner concludes that the prior art supports a different rejection from the one reversed today, she is of course free to reject the claims on that basis.Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 NextLast modified: November 3, 2007