Appeal No. 2006-2627 Page 6
Application No. 09/947,833
Appellants argue that those skilled in the art would not have been led to combine
Yim and O’Leary as posited by the examiner:
[T]he Yim reference only suggests that a calcium sulfate hemihydrate-
containing substance (CSHS) provides [improved handling, moldability
and consistency] when combined with the formulation described in U.S.
Pat. No. 5,171,579 (see column 2, lines 51-65). Yim only suggests a
CSHS provides such advantages in the context of a formulation
comprising osteogenic proteins, autogenous blood, and a porous
particulate polymer matrix. . . . There is no suggestion in the Yim
reference that such improved properties would be expected in any other
formulation. . . . Further, there is nothing in the O’Leary reference to
suggest a problem with moldability, consistency, etc. . . . that might lead
one of ordinary skill in the art to seek an additive to address such a
problem.
Appeal Brief, page 8.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). “[T]o establish obviousness based on a
combination of the elements disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the specific combination that was
made by the applicant.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000). An adequate showing of motivation to combine requires “evidence
that ‘a skilled artisan, confronted with the same problems as the inventor and with no
knowledge of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif.
Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed. Cir. 2000).
In this case, we agree with Appellants that the examiner has not adequately
explained how the cited references would have suggested the composition of claim 1 to
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