Appeal No. 2006-0704 Page 41
Application No. 10/060,697
a person of ordinary skill in this art to combine calcium sulfate with demineralized bone
in a composition comprising hydroxypropyl methylcellulose and a mixing solution as
taught by both O’Leary and Yim.
I also disagree with the majority’s assertion that “without the benefit of hindsight,
the references would not have suggested modifying the prior art compositions in a way
that would produce the composition claimed here” because “[e]ach of the prior art
compositions is disclosed as a complete bone . . . [repair] composition having bone
growth promoting properties. . . .” Supra, page 11, emphasis added. Contrary to the
majority’s assertions it is not hindsight to combine the teachings of prior art references
where the references themselves, in addition to the knowledge and common sense of a
person of ordinary skill in the art suggest they be combined.44 Despite the majority’s
assertion to the contrary (supra, page 1145), this is true even when each prior art
reference teaches a “complete invention”. Contrary to the majority’s assertion, while a
person of ordinary skill in the art may build upon prior accomplishments, and modify the
prior art to improve on what has come before, it does not necessarily follow under our
law that any such modification of the prior art is a nonobvious modification. See, e.g.,
Pro-Mold & Tool Co., Inc. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir.
1996) (“[w]e start from the self-evident proposition that mankind, in particular, inventors,
strive to improve that which already exists”.) As the court in Dystar explains
44 See, e.g., In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
45 According to the majority (supra, page 11, emphasis added), it is only with the benefit of hindsight that
the references could be combined, because “[e]ach of the prior art compositions is disclosed as a
complete bone graft substitute composition having bone growth promoting properties.”
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