Ex Parte Petersen - Page 10


             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.                                                                                  





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