Appeal No. 2006-2627 Page 10
Application No. 09/947,833
composition is in need of improved handling properties, such that those skilled in the art
would have been led to modify it as taught by Yim.
The examiner has not adequately explained how the prior art would have
suggested modifying O’Leary’s composition by adding calcium sulfate to it. 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. Cf. In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (“[E]vidence of a suggestion, teaching, or
motivation to combine may flow from the prior art references themselves, the knowledge
of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be
solved.”). Thus, the examiner has not made out a case of prima facie obviousness. We
therefore reverse the rejection of claims 1-26 under 35 U.S.C. § 103.
Our dissenting colleague would affirm the rejection. Determining obviousness
under § 103 is not a completely objective analysis. Reasonable people can differ on
whether a given product would have been obvious to a hypothetical person at a
particular time in the past. In our view, though, the analysis set out in the dissent relies
on impermissible hindsight in combining the teachings of the cited references.
As we understand it, the dissent argues that a person of ordinary skill in the art
would have been led to combine the cited references because Yim teaches that calcium
sulfate hemihydrate-containing substances have osteoconductive properties, O’Leary
teaches that bone powder has osteoconductive properties, and Wironen teaches that
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