Appeal No. 2004-2129
Application No. 09/923,118
adhesive for tissue repair comprising a thermoplastic lactide-containing terpolymer of
monomer units derived from lactic acid, glycolic acid and either caprolactone or
valerolactone. The adhesive is said to be useful for treating or repairing bone or
cartilage. Specification, p. 2. According to the specification (page 2), the
adhesives of this invention can be applied to the bone-contacting surfaces of
prosthetic appliances (as a cement), or they can be inserted into and around
bone defects and cavities or cartilage surfaces (such as filler). The ... adhesive
biodegrades gradually. As it biodegrades, it is replaced by developing bone or
cartilage tissue in a manner which permits a natural healing of the tissue.
The biodegradability of the claimed adhesive is said to be advantageous because
a patient need not undergo a second surgery to remove it.
I. 35 U.S.C. § 112, second paragraph
We note that the examiner first raises the issue of whether the claimed invention
is patentable pursuant to 35 U.S.C. § 102(b). However, we point out that the first
inquiry should be whether the claims “set out and circumscribe a particular area with a
reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971). Since it is erroneous to analyze claims based on
“speculation as to the meaning of terms employed and assumptions as to the scope of
the claims” (In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962)), we
begin by addressing the issues raised under § 112.
To that end, the examiner argues that claims 13-18 are indefinite in the recitation
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