Appeal 2007-1526
Application 11/035,534
In addition, we note that the argued “obvious to try” is not inimical to
an obviousness determination.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under §103.
KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d 1382,
1397 (2007).
As a further point, we are aware that the representative claim includes
the transition “consisting essentially of” (Claim 79). However, this term
does not render the process of representative claim 79 closed to other steps
or the use of other treatment materials for the implant. In this regard, the
“phrase ‘consisting essentially of’ limits the scope of a claim to the specified
ingredients and those that do not materially affect the basic and novel
characteristic(s) of a composition.” In re Herz, 537 F.2d 549, 551-52,
190 USPQ 461, 463 (CCPA 1976); see also PPG Indus., Inc. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir.
1998) (“By using the term ’consisting essentially of,’ the drafter signals that
the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention”).
However, it is also the case that during examination, "claims ... are to
be given their broadest reasonable interpretation consistent with the
specification, and ... claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."
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