Appeal No. 2006-0704 Page 35
Application No. 10/060,697
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997)), I find no
requirement in the law that requires limitations of appellants’ specification to be read
into the claim.
Further, relying on Baillie39 as an evidentiary document the examiner points out
(Answer, page 16) that prior to appellants’ filing date cellulose derivatives were known
in the art as set retardants for calcium sulfate. Stated differently, appellants have not
discovered, but instead have realized what was known to a person of ordinary skill in
the art for more than 30 years prior to their filing date. I am not persuaded by
appellants’ argument that Baillie “is directed to wall plasters and does not represent art
that would be considered by one of ordinary skill in the field of bone . . . [repair]
compositions.” Reply Brief, page 4. In my opinion, the question is what a person of
ordinary skill in the art knew about calcium sulfate and its combination with cellulose
derivatives. Baillie clearly informs a person of ordinary skill in the art using calcium
sulfate that cellulose derivatives are known as set retardants for calcium sulfate.40
Accordingly, I am not persuaded by appellants’ argument.
I am also not persuaded by appellants’ assertion (Brief, page 8), “there is no
motivation to combine the teachings of the Wironen reference with the teachings of
either O’Leary or Yim.” In this regard, appellants point out that Wironen “describes a
39 Baillie et al. (Baillie), GB 999,487, published July 28, 1965
40 In this regard, I direct attention to Snyders (column 2, lines 21-38), who provides evidence that a
person of ordinary skill in this art would have known that calcium sulfate hemihydrate “is quite similar to
plasters used in the building trade.”
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