Appeal No. 2006-0704 Page 11
Application No. 10/060,697
simply takes the inventor’s disclosure as a blueprint for piecing together the prior art to
defeat patentability—the essence of hindsight.”).
The cited references, viewed without the benefit of the present disclosure, teach
three different approaches to solving the same problem: making a composition that can
be put (and will stay) in a bone defect and that promotes growth of new bone. O’Leary
provides these properties by combining demineralized bone powder with glycerol. Yim
provides these properties by combining bone morphogenic protein(s) with calcium
sulfate hemihydrate. Wironen provides these properties by combining gelatin with an
osteogenic component (e.g., demineralized bone).
Each of the prior art compositions is disclosed as a complete bone graft
substitute composition having bone growth promoting properties. No doubt none of
them was perfect, and each of them could have been further modified. But viewed
without the benefit of hindsight, the references would not have suggested modifying the
prior art compositions in a way that would produce the composition claimed here.
Patentability is determined based on a preponderance of the evidence. See In re
Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443,1445 (Fed. Cir. 1992) (“[T]he
conclusion of obviousness vel non is based on the preponderance of evidence and
argument in the record.”). While the suggestion test may be flexible, it still requires
evidence to show that modifying the prior art product would have been obvious. See
Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
1366, 80 USPQ2d 1641, 1649 (Fed. Cir. 2006) (“When not from the prior art references,
the ‘evidence’ of motive will likely consist of an explanation of the well-known principle
or problem-solving strategy to be applied.”).
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007