Appeal No. 2006-2627 Page 15
Application No. 09/947,833
(Wironen) which teaches a bone repair composition comprising demineralized bone and
any one of a variety of reagents that “enhance the range of manipulative characteristics
of strength and osteoinduction,”8 e.g., the properties Yim attributes to calcium sulfate.9
Both O’Leary (column 1, lines 15-17) and Yim (column 8, lines 25-28) compliment
Wironen by teaching, inter alia, that demineralized bone and calcium sulfate aid in the
development of new bone. In this regard, I note that Wironen teaches that it is desirable
for a bone repair composition to be both osteoconductive and osteoinductive. The
evidence of record establishes that a composition comprising demineralized bone and
calcium sulfate fulfills this objective. Lastly, Wironen explains that when one intends to
repair large bone voids it is a matter of common sense to add cancellous bone, in the
size range of about 80 µm to about 10 mm, to a bone repair composition. Wironen,
page 13, lines 11-17.
For their part, the majority is determined to find that the evidence of record in this
case is not sufficient to support a prima facie case of obviousness. In their rush to
reverse the rejection under 35 U.S.C. § 103(a), the majority speaks of the
preponderance of the evidence10, yet they fail to consider all of the evidence of record,
and what this evidence suggests to a person of ordinary skill in the art.
For the reasons that follow, it is my opinion that the evidence of record supports
a prima facie case of obviousness under 35 U.S.C. § 103(a), and that this rejection
8 See Wironen, page 6, lines 8-9.
9 Yim, column 8, lines 25-28, calcium sulfate provides, inter alia, “a structural matrix function [and] an
osteoconductive matrix. . . .”
10 See, e.g., supra, page 12, wherein the majority finds the “preponderance of the evidence” fails to
demonstrate “that the cited references would have suggested the instantly claimed composition to those
of ordinary skill in the art.”
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