Appeal No. 2006-2797 Page 12
Application No. 09/341,821
Claims 9, 19, and 20
For claims 9, 19, and 20, which require a sterilizing step, we concur with the
Examiner that such claims are obvious over Jass and Sperry, but for different reasons
than stated by the Examiner.
In making an obviousness determination, it is necessary to consider the
differences between the claimed invention and the prior art in the context of the level of
the person of ordinary skill in the art. Graham v. John Deere Co., 383 U.S. 1, 13-14,
148 USPQ 459, 465 (1966). In this case, the difference between the claimed subject
matter and Jass is that the Jass does not teach or expressly suggest a step in which the
vessel and gel are sterilized as required by the claims.
As observed by the Examiner, this deficiency is met by Sperry. Sperry teaches
that wounds are normally cleaned and irrigated with sterile solutions. Sperry, column 1,
lines 10-25 and 60-63. The compositions can be sterilized prior to introduction into the
container, or when already loaded into the container as described by Sperry (column 2,
lines 60-68; column 5, lines 7-21).
In order to combine references, there must be some teaching, suggestion, or
motivation found in the prior art or from the general knowledge available to the skilled
worker. “[T]he teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. The test for an implicit showing is
what the combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those of
ordinary skill in the art.” In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336
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