Appeal No. 2006-2627 Page 32
Application No. 09/947,833
bone. The prior art of record teaches the use of calcium sulfate or demineralized bone
in a composition that comprises hydroxypropyl methylcellulose and a mixing solution.
As discussed above, the evidence of record is consistent with what a person of ordinary
skill in the art would have known and understood at the time of appellants’ invention.
Therefore, when the evidence is considered as a whole, a person of ordinary skill
in the art would have found it prima facie obvious at the time of appellants’ claimed
invention to include calcium sulfate in the bone repair composition taught by O’Leary,
which comprises demineralized bone, hydroxypropyl methylcellulose and a mixing
solution.34
As to whether a person of ordinary skill in the art at the time the invention was
made would have found it prima facie obvious to add cancellous bone to this
composition, e.g., the second question, as Wironen explains, it is a matter of common
sense to include cancellous bone in such a composition when one is intending to repair
large voids.35 Wironen, page 13, lines 11-14.
Having demonstrated that it would have been prima facie obvious to a person of
ordinary skill in the art to make and use a bone repair composition comprising calcium
34 The alternative combination wherein one includes demineralized bone in the bone graft composition
taught by Yim, which comprises calcium sulfate, hydroxypropyl methylcellulose and a mixing solution
results in the same conclusion.
35 See, e.g., In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969) (“Having established
that this knowledge was in the art, the examiner could then properly rely, . . . on a conclusion of
obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular reference.’ The test for obviousness is not whether
the features of one reference may be bodily incorporated into the other to produce the claimed subject
matter but simply what the combination of references makes obvious to one of ordinary skill in the
pertinent art.”).
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