Appeal No. 2006-2627 Page 44
Application No. 09/947,833
As I understand it, the majority’s concern is one of motivation, or the suggestion
to combine the references of record. The majority, however, limits their review of Yim
and O’Leary, and looking solely to the references themselves concludes that the
references themselves fail to provide a suggestion for their combination. See, e.g.,
supra, bridging paragraph, pages 9-10, “O’Leary does not disclose that its composition
is in need of improved handling properties, such that those skilled in the art would have
been led to modify it as taught by Yim.” In this regard, I remind the majority that all the
evidence of record must be considered for what it suggests to a person of ordinary skill
in the art.45 Further, “there is no requirement [under 35 U.S.C. § 103] that the prior art
contain an express suggestion to combine known elements to achieve the claimed
invention. Rather, the suggestion to combine may come from the prior art, as filtered
through the knowledge of one skilled in the art.” Motorola, Inc. v. Interdigital Tech.
Corp., 121 F.3d 1461, 1472, 43 USPQ2d 1481, 1489 (Fed. Cir. 1997).
That said, I note that when the evidence on this record is considered as a whole,
it establishes that a person of ordinary skill in the art at the time the invention was made
protein [(BMP)]”, the majority ignores Yim’s disclosure that in this embodiment “CSHS provides a
structural matrix function, an osteoconductive matrix, and a protein sequestering function.” Yim,
column 8, lines 25-28. As the subject matter before this panel is directed to a bone graft composition it
would appear, at a minimum, that the osteoconductive matrix function of CSHS would be relevant to the
majority’s analysis of the evidence of record. Unfortunately, the majority either overlooked this teaching
in Yim, or was of the opinion that Yim is solely directed to improving the handling characteristics of a bone
graft composition that comprises blood. See, e.g., supra, page 8, wherein the majority finds that Yim
teaches that the inclusion of CSHS improves the handling characteristics of a formulation comprising
blood.
45 “[A]ll of the relevant teachings of the cited references must be considered in determining what they
fairly teach to one having ordinary skill in the art.” In re Mercier, 515 F.2d 1161, 1165, 185 USPQ 774,
778 (CCPA 1975).
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