Appeal No. 2006-0704 Page 39
Application No. 10/060,697
bone chips in the composition is to fill large voids in bone. See, e.g., Wironen, page 13,
lines 11-14. It would appear to be quite rational that one looking at a large void in a
bone, would select the appropriate size and quantity of bone chips to fill the void. In my
opinion, the prior art did not recite a particular concentration of bone chips because it
would appear that a person of ordinary skill in the art would understand that it would
depend on the size of the void to be filled. “[T]he test of obviousness is not express
suggestion of the claimed invention in any or all of the references but rather what the
references taken collectively would suggest to those of ordinary skill in the art presumed
to be familiar with them.” In re Rosselet, 347 F.2d 847, 851, 146 USPQ 183, 186
(CCPA 1965). Accordingly, I do not find appellants’ argument persuasive.
For the foregoing reasons, I would affirm the rejection of claim 23 under
35 U.S.C. § 103(a) as being unpatentable over the combination of O’Leary, Yim and
Wironen. As discussed supra claims 24-30 fall together with claim 23.
Majority opinion:
Rigidly applying the suggestion test and failing to consider all the evidence of
record, the majority concludes (Supra, page 9), “[t]he examiner has not adequately
explained how the prior art would have suggested modifying O’Leary’s composition by
adding calcium sulfate to it.[ ]42 Nor has the examiner provided a rationale based on the
knowledge of those of skill in the art or the nature of the problem to be solved.”
42 While the majority recognizes (supra, bridging sentence, pages 7), “Yim’s compositions have two
required components: calcium sulfate hemihydrate-containing substance (CSHS) and an osteogenic
protein [(BMP)]”, the majority ignores Yim’s disclosure that in this embodiment “CSHS provides a
structural matrix function, an osteoconductive matrix, and a protein sequestering function.” Yim,
column 8, lines 25-28. As the subject matter before this panel is directed to a bone graft composition it
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