Appeal No. 2006-0704 Page 16
Application No. 10/060,697
preponderance of the evidence10, yet they fail to consider all of the evidence of record,
and what this evidence suggests to a person of ordinary skill in the art.
For the reasons that follow, it is my opinion that the evidence of record supports
a prima facie case of obviousness under 35 U.S.C. § 103(a), and that this rejection
should be affirmed. Accordingly, I dissent from the majority’s decision to reverse the
rejection under 35 U.S.C. § 103(a).
Appellants’ claimed invention:
Appellants argue the claims according to two claim groupings: I. claims 16-22 and II.
claims 23-30. Accordingly, I limit my discussion to representative claims 16 and 23. Claims
17-22 will stand or fall together with claim 16. Claims 24-30 will stand or fall together with
claim 23. In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
Claim 16 is drawn to a composition which comprises five components:
1. calcium sulfate;
2. demineralized bone matrix;
3. cancellous bone;
4. a plasticizing substance (e.g., hydroxypropyl methylcellulose11); and
5. a mixing solution12.
10 See, e.g., supra, page 12, wherein the majority finds the “preponderance of the evidence” fails to
demonstrate “that the cited references would have suggested the instantly claimed composition to those
of ordinary skill in the art.”
11 See appellants’ specification, bridging sentence, pages 3-4.
12 While the majority points out (supra, page 3), that appellants’ specification states that a mixing solution
may “include water and phosphate buffered saline,” claims 16 and 23 are not so limited.
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