Appeal No. 2006-0704 Page 27
Application No. 10/060,697
For example, our appellate reviewing court and its predecessor have explained
that when the prior art recognizes two components to be equivalent, an express
suggestion to substitute one for another need not be present in order to render such
substitution obvious. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA
1982).29 In In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980),
the court stated that “[i]t is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose. In re Susi, 440 F.2d 442,
445, 169 USPQ 423, 426 (1971); In re Crockett, 279 F.2d 274, 276-77, 126 USPQ 186,
188 (1960).” As the Kerkhoven court explained “[i]n the case at bar, [the] appealed
claims . . . require no more than the mixing together of two conventional spray-dried
detergents.” Id.
There can be no doubt that each of these cases is dependent on its own facts.30
However, each case exemplifies the flexibility implicit in a fact-based reasoned analysis
of obviousness, and provides insight on what a person of ordinary skill in the art would
glean from a full and fair reading of the prior art. As discussed above, on this record
one need only read the evidence as would a person of ordinary skill in the art.
29 On this record, Wironen teaches a composition comprising cancellous bone, BMP and a reagent that
“enhances the range of manipulable characteristics of strength and osteoinduction exhibited by the
composition.” Wironen, page 5 line 21 to page 6, line 9. Yim discloses that calcium sulfate has both a
structural matrix function and an osteoinductive function. Yim, column 8, lines 25-28. Accordingly, a
person of ordinary skill in the art would have recognized that it would have been prima facie obvious at
the time appellants’ invention to substitute calcium sulfate for any one of the reagents identified in
Wironen that enhance the strength and osteoinduction of the bone repair composition.
30 In re Cofer, 354 F.2d 664, 667, 148 USPQ 268, 271 (CCPA 1966) (“[n]ecessarily it is facts appearing in
the record, rather than prior decisions in and of themselves, which must support the legal conclusion of
obviousness under 35 U.S.C. § 103”).
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