Appeal No. 2006-2627 Page 11
Application No. 09/947,833
various ceramics, hydroxyapatites, and “like material[s]” are osteoconductive and useful
in bone repair compositions.5
In our view, this reasoning relies on the hindsight reconstruction that the courts
have condemned. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617 (“Combining
prior art references without evidence of such a suggestion, teaching, or motivation
simply takes the inventor’s disclosure as a blueprint for piecing together the prior art to
defeat patentability—the essence of hindsight.”).
The cited references, viewed without the benefit of the present disclosure, teach
three different approaches to solving the same problem: making a composition that can
be put (and will stay) in a bone defect and that promotes growth of new bone. O’Leary
provides these properties by combining demineralized bone powder with glycerol. Yim
provides these properties by combining bone morphogenic protein(s) with calcium
sulfate hemihydrate. Wironen provides these properties by combining gelatin with an
osteogenic component (e.g., demineralized bone).
Each of the prior art compositions is disclosed as a complete bone graft
substitute composition having bone growth promoting properties. No doubt none of
them was perfect, and each of them could have been further modified. But viewed
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.
5 The dissent also cites three patents that are of record but not relied on by the examiner. We will not
further lengthen this opinion with a discussion of those references. The rejection on appeal is the one
made by the examiner, not one that hypothetically could have been made. If the examiner concludes that
the prior art supports a different rejection from the one reversed today, she is of course free to reject the
claims on that basis.
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