Appeal No. 2006-2627 Page 34
Application No. 09/947,833
examiner’s argument (id.), depending on the particular void that requires filled, the
optimization of the particular amount of cancellous bone to fill a particular void is well
within the skill of the practitioner. In the examiner’s opinion (id.), “[i]t remains unclear as
to how the practitioner would not be able to determine the size of the void to be filled
and add as much cancellous bone as deemed necessary to fill the void.” I agree. In the
absence of evidence to the contrary, of which there is none, “it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, I disagree with appellants’ intimation that “[t]his is not a question of
optimization within a range taught in the prior art reference because there is no range
whatsoever in the prior art reference relied upon by the [e]xaminer.” Reply Brief,
received October 18, 2005, page 4. To the contrary, in my opinion this is a question of
optimizing a results effective variable. The prior art relied upon expressly states that the
purpose of the cancellous bone chips in the composition is to fill large voids in bone.
See, e.g., Wironen, page 13, lines 11-14. It would appear to be quite rational that one
looking at a large void in a bone, would select the appropriate size36 and quantity of
bone chips to fill the void. In my opinion, the prior art did not recite a particular
concentration of bone chips because it would appear that a person of ordinary skill in
the art would understand that it would depend on the size of the void to be filled. “[T]he
test of obviousness is not express suggestion of the claimed invention in any or all of
36 Appellants do not question the examiner’s reliance on Wironen as it applies to the particular size of
cancellous bone, relative to the sizes set forth in claim 1. To the contrary, appellants acknowledge (Brief,
page 11), that Wironen suggests a broad range of bone chip size. In this regard, I note that Wironen
teaches the use of cancellous bone in the range of about 80 µm to about 10 mm, which encompasses the
size set forth in appellants’ claim 1.
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