Appeal No. 2006-0704 Page 31
Application No. 10/060,697
which comprises demineralized bone, hydroxypropyl methylcellulose and a mixing
solution.33
As to whether a person of ordinary skill in the art at the time the invention was
made would have found it prima facie obvious to add cancellous bone to this
composition, e.g., the second part of the issue before this panel for review, as Wironen
explains, it is a matter of common sense to include cancellous bone in such a
composition when one is intending to repair large voids.34 Wironen, page 13,
lines 11-14.
Claim 16
For the foregoing reasons, it is my opinion that the evidence on this record
clearly establishes that at the time of appellants’ invention a person of ordinary skill in
the art interested in repairing a large bone void would have found it prima facie obvious
to formulate a bone repair composition comprising calcium sulfate; demineralized bone
matrix; cancellous bone; hydroxypropyl methylcellulose (a plasticizing substance); and a
mixing solution.
33 The alternative combination wherein one includes demineralized bone in the bone graft composition
taught by Yim, which comprises calcium sulfate, hydroxypropyl methylcellulose and a mixing solution
results in the same conclusion.
34 See, e.g., In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969) (“Having established
that this knowledge was in the art, the examiner could then properly rely, . . . on a conclusion of
obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular reference.’ The test for obviousness is not whether
the features of one reference may be bodily incorporated into the other to produce the claimed subject
matter but simply what the combination of references makes obvious to one of ordinary skill in the
pertinent art.”).
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