Appeal No. 2006-0704 Page 25
Application No. 10/060,697
In my opinion, when considered from the perspective of a person of ordinary skill
in the art at the time the invention was made 27, the evidence of record compels an
affirmative response to both parts of the issue before us on appeal.
Analysis:
“A prima facie case of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed subject matter to a person of
ordinary skill in the art.” Bell, 991 F.2d at 783, 26 USPQ2d at 1531. The evidence on
this record teaches that the formulation of a bone repair composition that comprises
both calcium sulfate and demineralized bone is not new to this art. As discussed above
a person of ordinary skill in this art would be familiar with a variety of bone repair
compositions comprising both demineralized bone and any one of a variety of reagents
that enhance the range of manipulative characteristics of strength and osteoconduction,
such as calcium sulfate. As discussed above, at the time of appellants’ invention, a
person of ordinary skill in the art would have combined both calcium sulfate and
demineralized bone in bone repair compositions to take advantage of their combined
effect on bone healing. See, e.g., Sottosanti, column 4, lines 10-17; and Snyders,
column 3, lines 51-54.
27 While the majority opines (supra, page 10) that “[d]etermining obviousness under § 103 is not a
completely objective analysis,” I propose that “[i]nstead of ascertaining what was subjectively obvious to
the inventor at the time of invention, [this panel] must ascertain what would have been objectively obvious
to one of ordinary skill in the art at such time. Hence, the level of ordinary skill in the art is a factual
question that must be resolved and considered.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718,
21 USPQ2d 1053, 1057 (Fed. Cir. 1991), footnote omitted.
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