Appeal No. 2006-0704 Page 38
Application No. 10/060,697
argument with regard to the teachings of the combination of O’Leary, Yim and Wironen
as it relates to the concentrations of calcium sulfate, demineralized bone matrix,
plasticizing substance or mixing solution as set forth in claim 23. Accordingly, I find that
appellants concede that the combination of O’Leary, Yim and Wironen teach
concentrations that fall within the scope of appellants’ claimed invention for these
ingredients.
Appellants’ only argument with regard to claim 23 is that Wironen “is completely
silent as to any particular weight percent or parts by weight of cancellous bone.” Brief,
page 10. In response, the examiner finds (Answer, page 23), Wironen teaches that
cancellous bone is included in the composition to fill larger bone voids. As I understand
the examiner’s argument (id.), depending on the particular void that requires filled, the
optimization of the particular amount of cancellous bone to fill a particular void is well
within the skill of the practitioner. In the examiner’s opinion (id.), “[i]t remains unclear as
to how the practitioner would not be able to determine the size of the void to be filled
and add as much cancellous bone as deemed necessary to fill the void.” I agree. In the
absence of evidence to the contrary, of which there is none, “it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, I disagree with appellants’ intimation that “[t]his is not a question of
optimization within a range taught in the prior art reference because there is no range
whatsoever in the prior art reference relied upon by the [e]xaminer.” Reply Brief, page
4. To the contrary, in my opinion this is a question of optimizing a results effective
variable. The prior art relied upon expressly states that the purpose of the cancellous
Page: Previous 31 32 33 34 35 36 37 38 39 40 41 42 43 44 45 Next
Last modified: November 3, 2007