Appeal No. 2006-0704 Page 34
Application No. 10/060,697
consistent with the evidence of record. First, O’Leary’s compositions are not limited to a
liquid state. As discussed above, O’Leary defines flowable as including compositions
that are “shape-sustaining”, “e.g., those which behave like putty.” O’Leary, column 3,
lines 30-36. Further contrary to appellants’ suggestion, Table 2 of Yim is consistent with
O’Leary’s “shape-sustaining but readily deformable”38 composition, for Table 2 of Yim
describes compositions that are “shapable”, “remoldable” and “malleable” after 15
minutes. Yim, column 10, Table 2, Key #5. Accordingly, I am not persuaded by
appellants’ argument.
Furthermore, nothing in appellants’ claim 16 requires that the claimed
composition exhibit a particular physical state (e.g., runny, moldable or hard), nor does
appellants’ claim 16 require a particular “set-up” time (e.g., slow, fast or within 15
minutes). In my opinion, appellants’ arguments relating to the physical state or set-up
time of the composition are not commensurate in scope with their claimed invention.
For these same reasons, I am not persuaded by appellants’ assertion (Brief,
page 6) that they “have discovered that the claimed plasticizing substance [e.g.,
hydroxypropyl methylcellulose] can forestall the calcium sulfate hemihydrate hardening
reaction, [and that] this effect is not appreciated in the prior art.” As discussed above,
the combination of prior art relied upon by the examiner teaches a bone repair
composition that comprises, inter alia, a “plasticizing substance” – hydroxypropyl
methylcellulose. Appellants’ claim 16 does not require that the composition exhibit any
particular form or characteristic, such as an extended “set-up” time. While there is no
doubt that the claims shall be read in light of the specification (see, e.g., In re Morris,
38 O’Leary, column 3, lines 30-36.
Page: Previous 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 Next
Last modified: November 3, 2007