Appeal No. 2006-2627 Page 28
Application No. 09/947,833
read, process and combine the teachings of the prior art relied upon.29 On this point,
our appellate review court has provided guidance to assist the fact-finder in evaluating
the prior art as a person of ordinary skill in the art and determining what this
hypothetical person would glean from a full and fair reading of the prior art.
For example, our appellate reviewing court and its predecessor have explained
that when the prior art recognizes two components to be equivalent, an express
suggestion to substitute one for another need not be present in order to render such
substitution obvious. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA
1982).30 In In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980),
the court stated that “[i]t is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose. In re Susi, 440 F.2d 442,
445, 169 USPQ 423, 426 (1971); In re Crockett, 279 F.2d 274, 276-77, 126 USPQ 186,
188 (1960).” As the Kerkhoven court explained “[i]n the case at bar, [the] appealed
claims . . . require no more than the mixing together of two conventional spray-dried
detergents.” Id.
29 The issue of obviousness is not determined by what the references expressly state but by what they
would reasonably suggest to one of ordinary skill in the art. In re Siebentritt, 372 F.2d 566, 568, 152
USPQ 618, 619 (CCPA 1967).
30 On this record, Wironen teaches a composition comprising cancellous bone, BMP and a reagent that
“enhances the range of manipulable characteristics of strength and osteoinduction exhibited by the
composition.” Wironen, page 5 line 21 to page 6, line 9. Yim discloses that calcium sulfate has both a
structural matrix function and an osteoinductive function. Yim, column 8, lines 25-28. Accordingly, a
person of ordinary skill in the art would have recognized that it would have been prima facie obvious at
the time appellants’ invention was made to substitute calcium sulfate for any one of the reagents
identified in Wironen that enhance the strength and osteoinduction of the bone repair composition.
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