Appeal No. 2006-2627 Page 43
Application No. 09/947,833
According to appellants (Brief, page 12), nothing in Wironen “the only reference
that even mentions cancellous bone . . . direct[s] one of ordinary skill in the art to
[a]ppellants’ claimed . . . method . . . .” However, as discussed above, the only process
step required by the method of claim 25 does not require multiple separate portions of a
composition containing cancellous bone. To the contrary, the method simply requires
that a single portion of a composition comprising calcium sulfate, demineralized bone,
hydroxypropyl methylcellulose and cancellous bone be mixed with a mixing solution.
As discussed above, the combination of O’Leary, Yim and Wironen teach a method of
repairing bone injury wherein a composition comprising calcium sulfate, demineralized
bone, hydroxypropyl methylcellulose and cancellous bone within the scope of
appellants’ claim 25 is mixed with a mixing solution.
Accordingly, I would affirm the rejection of claim 25 under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of O’Leary, Yim and Wironen. As
discussed supra claim 26 falls together with claim 25.
Majority opinion:
Rigidly applying the suggestion test and failing to consider all the evidence of
record, the majority concludes (Supra, page 10), “[t]he examiner has not adequately
explained how the prior art would have suggested modifying O’Leary’s composition by
adding calcium sulfate to it.[ ]44 Nor has the examiner provided a rationale based on the
knowledge of those of skill in the art or the nature of the problem to be solved.”
44 While the majority recognizes (supra, bridging sentence, pages 7-8), “Yim’s compositions have two
required components: calcium sulfate hemihydrate-containing substance (CSHS) and an osteogenic
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