Appeal No. 2006-2627 Page 41
Application No. 09/947,833
under 35 U.S.C. § 103 as being unpatentable over the combination of O’Leary, Yim and
Wironen. As discussed above, claims 2-22 fall together with claim 1.
Claim 23
As discussed above, the combination of O’Leary, Yim and Wironen teach all of
the required components of appellants’ claimed kit, as well as packaging the
components of a bone repair composition into a kit. The difference between appellants’
claim 23 and the combination of O’Leary, Yim and Wironen lies in the manner in which
the components are packaged in the kit.
For their part, appellants point out that nothing in Wironen “the only reference
that even mentions cancellous bone . . . direct[s] one of ordinary skill in the art to
[a]ppellants’ claimed . . . kit . . . .” Brief, page 12. Appellants are correct in that the
combination of O’Leary, Yim and Wironen does not expressly teach a kit that separates
the cancellous bone into two separate portions. However, in my opinion, the evidence
of record establishes that a person of ordinary skill in the art would have found it prima
facie obvious to package the enumerated ingredients into the form of a kit, wherein the
ingredients would be placed into separate containers, divided into separate portions,
and/or pre-mixed in a manner that is most convenient for its use, or for that matter most
convenient to the purchaser. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1309, 79 USPQ2d 1931, 1939 (Fed. Cir. 2006).
On reflection, it is my opinion that separating the components of the
composition taught by O’Leary, Yim and Wironen into three different portions as
opposed to a single portion or two portions is an obvious modification of the combined
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