Appeal No. 2006-2627 Page 26
Application No. 09/947,833
The issue:
In my opinion, before the merits of claims 1, 23 and 25 can be reached, two more
general questions need to be resolved. First, would it be prima facie obvious to a
person of ordinary skill in the art at the time the invention was made to combine calcium
sulfate and demineralized bone in a composition comprising a core of ingredients that is
common to both O’Leary and Yim? Second, if the answer to the first question is yes,
would it be prima facie obvious to a person of ordinary skill in the art at the time the
invention was made to add cancellous bone to this composition?
In my opinion, when considered from the perspective of a person of ordinary skill
in the art at the time the invention was made 28, the evidence of record compels an
affirmative response to both questions.
Analysis:
“A prima facie case of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed subject matter to a person of
ordinary skill in the art.” Bell, 991 F.2d at 783, 26 USPQ2d at 1531. The evidence on
this record teaches that the formulation of a bone repair composition that comprises
both calcium sulfate and demineralized bone is not new to this art. As discussed above
a person of ordinary skill in this art would be familiar with a variety of bone repair
28 While the majority opines (supra, page 10) that “[d]etermining obviousness under § 103 is not a
completely objective analysis,” I propose that “[i]nstead of ascertaining what was subjectively obvious to
the inventor at the time of invention, [this panel] must ascertain what would have been objectively obvious
to one of ordinary skill in the art at such time. Hence, the level of ordinary skill in the art is a factual
question that must be resolved and considered.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718,
21 USPQ2d 1053, 1057 (Fed. Cir. 1991), footnote omitted.
Page: Previous 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 Next
Last modified: November 3, 2007