Appeal No. 2006-2627 Page 38
Application No. 09/947,833
reaction, [and that] this effect is not appreciated in the prior art.” As discussed above,
the combination of prior art relied upon by the examiner teaches a bone repair
composition that comprises, inter alia, a “plasticizing substance” – hydroxypropyl
methylcellulose. Appellants’ claim 1 does not require that the composition exhibit any
particular form or characteristic, such as an extended “set-up” time. While there is no
doubt that the claims shall be read in light of the specification (see, e.g., In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997)), I find no
requirement in the law that requires limitations of appellants’ specification to be read
into the claim.
Further, relying on Baillie41 as an evidentiary document the examiner points out
(Answer, page 21) that prior to appellants’ filing date cellulose derivatives were known
in the art as set retardants for calcium sulfate. Stated differently, appellants have not
discovered, but instead have realized what was known to a person of ordinary skill in
the art for more than 30 years prior to their filing date. I am not persuaded by
appellants’ argument that Baillie “is directed to wall plasters and does not represent art
that would be considered by one of ordinary skill in the field of bone . . . [repair]
compositions.” Reply Brief, received October 18, 2004, page 4. In my opinion, the
question is what a person of ordinary skill in the art knew about calcium sulfate and its
combination with cellulose derivatives. Baillie clearly informs a person of ordinary skill
41 Baillie et al. (Baillie), GB 999,487, published July 28, 1965
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