Appeal No. 2006-0704 Page 26
Application No. 10/060,697
Accordingly, the first part of the issue before this panel distills down to whether a
person of ordinary skill in the art would have combined calcium sulfate and
demineralized bone in a bone repair composition that comprises (1) hydroxypropyl
methylcellulose (a cellulose derivative); and (2) a mixing solution.
As discussed above, both Yim and O’Leary teach bone repair compositions
comprising hydroxypropyl methylcellulose and a mixing solution. It is true that neither of
these references teach both calcium sulfate and demineralized bone in the same
composition. However, Yim and O’Leary teach that calcium sulfate and demineralized
bone, respectively, aid in bone healing when they are a part of a bone repair
composition comprising hydroxypropyl methylcellulose and a mixing solution.
There can be no doubt that “[o]bviousness is a complicated subject requiring
sophisticated analysis, and no single case lays out all facets of the legal test.” Dystar,
464 F.3d at 1367, 80 USPQ2d at 1650. Perhaps, what complicates this analysis is
getting inside the mind of a person of ordinary skill in the art at the time the invention
was made, to understand how this hypothetical person of ordinary skill in the art would
read, process and combine the teachings of the prior art relied upon.28 On this point,
our appellate review court has provided guidance to assist the fact-finder in evaluating
the prior art as a person of ordinary skill in the art and determining what this
hypothetical person would glean from a full and fair reading of the prior art.
28 The issue of obviousness is not determined by what the references expressly state but by what they
would reasonably suggest to one of ordinary skill in the art. In re Siebentritt, 372 F.2d 566, 568,
152 USPQ 618, 619 (CCPA 1967).
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