Appeal No. 2006-2627 Page 47
Application No. 09/947,833
Contrary to the majority’s intimation, this is not a case where a person of ordinary
skill in the art is imbued with the knowledge of appellants’ invention where none of the
references of record convey that knowledge. Cf. W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983). To the contrary, as
discussed above, the evidence of record in this case clearly suggests that
demineralized bone and calcium sulfate have bone healing properties and that a person
of ordinary skill in the art would have found it prima facie obvious to combine them
together with hydroxypropyl methylcellulose and a mixing solution in the same bone
repair composition. Adding cancellous bone to this composition to fill large bone voids
is simply a matter of common sense. The level of skill in this art is consistent with, and
complementary to this analysis of the evidence on this record.
For the foregoing reasons, I find that the preponderance of the evidence on this
record clearly establishes that appellants’ claimed invention would have been prima
facie obvious to a person of ordinary skill in the art at the time the invention was made
in view of the combination of O’Leary, Yim and Wironen. In my opinion, the majority’s
assertion that the combination of O’Leary, Yim and Wironen is based on hindsight
reconstruction is inconsistent with the evidence on this record.
Conclusion:
On reflection, I find no error in the examiner’s rejection of under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings of O’Leary, Yim and
Wironen. Accordingly, I would affirm the rejection of claims 1, 23 and 25 under
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