Appeal 2007-1526
Application 11/035,534
found in Haruyuki, as they would be understood by one of ordinary skill in
the art?; (2) If not, have Appellants established unexpected results for the
representative claim 79 process or otherwise furnished secondary indicia of
unobviousness of such character and weight as to warrant reversal of the
Examiner’s obviousness holding of representative claim 79?
We answer both questions in the negative and affirm the Examiner’s
obviousness rejection of representative claim 79 and the rejected claims
grouped together therewith.
Appellants argue to the effect that one of ordinary skill in the art
would have had no reason to employ a lower acid concentration in the HF
solution treatment of Haruyuki, because Haruyuki teaches or would have led
one of ordinary skill in the art to the conclusion that using an acid
concentration of less than 1% will result in inadequate bonding of the
implant to bone tissue. This line of argument is not persuasive and is
undercut not only by a full reading of Haruyuki, but also by the admitted
background prior art information provided in Appellants’ Specification.2
For example, Haruyuki discloses that forming ultrafine pores in the
implant is beneficial even though the cell bonding force is not always
adequate (Haruyuki 3, col. 1, ll. 14-23). Moreover, Appellants acknowledge
that titanium implants have been available since 1950, and that the force of
the bond between titanium and bone tissue is relatively strong albeit
2 It is axiomatic that admitted prior art, including prior art found in an
applicant’s specification, may be used in determining the patentability of a
claimed invention, and that consideration of the prior art cited by the
Examiner may include consideration of the admitted prior art found in the
Specification. In re Nomiya, 509 F.2d 566, 570-571, 184 USPQ 607, 611-
612 (CCPA 1975); In re Davis, 305 F.2d 501, 503, 134 USPQ 256, 258
(CCPA 1962).
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