Appeal No. 2006-0704 Page 28
Application No. 10/060,697
On this record, O’Leary and Yim teach two bone repair compositions that share a
common core of ingredients that comprise hydroxypropyl methylcellulose and a mixing
solution. These two compositions differ only with regard to the presence of
demineralized bone in one (O’Leary), and calcium sulfate in the other (Yim). Adding to
this body of evidence is a third reference (Wironen) which expressly teaches the
combination of demineralized bone together with any one of a variety of agents that
“enhance the manipulable characteristics of strength and osteoinduction exhibited by
the composition,” comprising demineralized bone and cancellous bone. While Wironen
provides a listing of agents that fulfill this requirement, there can be no doubt that this
listing is not exhaustive.31 The evidence on this record, in addition to the knowledge of
a person of ordinary skill in this art at the time the invention was made, establishes
that calcium sulfate exhibits the same properties as those agents listed in Wironen.
See, e.g., Yim, column 8, lines 25-28.
Therefore, in my opinion, it would have been prima facie obvious to a person of
ordinary skill in the art at the time of appellants’ invention to combine calcium sulfate,
and demineralized bone together with a common core of ingredients that comprises
hydroxypropyl methylcellulose and a mixing solution to aid in bone healing. To do so
would require nothing more than mixing two conventional bone repair compositions.
Kerkhoven, 626 F.2d at 850, 205 USPQ at 1072.32 As discussed above, this is exactly
31 See, e.g., Wironen, page 6, lines 1-3, where Wironen provides a listing of specific agents, in addition to,
“like material[s]”.
32 There is no doubt that neither Yim nor O’Leary speak to detergents (as in Kerkhoven), or reagents that
stabilize plastics against the oxidative and deteriorative effects of ultraviolet light (as in Susi), or
magnesium oxide and calcium carbide (as in Crockett) or amiloride and hydrochlorothiazide (as in Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 808-09, 10 USPQ2d 1843, 1847 (Fed. Cir. 1989)). What Yim
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