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 Next
Last modified: November 3, 2007