Appeal No. 2000-1620
Application 08/507,326
The dispositive issue with respect to both grounds of rejection is the interpretation of the
claim language “said homopolymer polylactide is composed of L-lactide monomers” appearing
in appealed claim 24. We must interpret this claim language in light of the written description in
appellants’ specification as it would be interpreted by one of ordinary skill in this art, giving the
claim terms their broadest reasonable interpretation consistent with the written description in the
specification. See, e.g., In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir.
2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), In re
Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). With respect to the
ground of rejection under § 112, second paragraph, the examiner finds that it is “unclear whether
the claimed ‘homopolymer’ is intended to refer to a polymer formed from only one enantiomer,
e.g., L-lactide, or to lactide polymers which are mixtures of such comonomers (i.e. a copolymer
of lactide enantiomers),” and that the phrase we quoted above “is not considered to clearly limit
the homopolymer to only L-lactide monomer since ‘composed of’ is open language similar to
‘comprising’” (answer, pages 3-4).
Appellants submit that
they have demonstrably illustrated that the claims encompass polylactides [sic,
polylactide] homopolymers to the exclusion of lactide copolymers. Furthermore, by
the language “lactide copolymers” Appellants intend to refer to copolymers of lactide
monomers with other non-lactide monomers. Appellants do not intend to exclude
copolymers of L-lactide with, for example D-lactide. Appellants have merely entered
amendments of this nature in an attempt to satisfy the Examiner’s rejections
concerning 35 U.S.C. § 112, second paragraph. [Brief, page 7.]
The examiner responds that
for lactide polymers the terms “homopolymer” and “copolymer” must be clarified to
specify whether “homopolymer” means a polymer of only one lactide enantiomer, e.g.,
poly(L-lactide), and whether a polymer formed from mixtures of lactide monomers
(e.g. D-lactide, L-lactide and meso-lactide) is a “homopolymer” or “copolymer.”
Applicant’s {sic, Appellants’] general reference to having ‘demonstrably illustrated”
what is meant by “homopolymer” is noted, however, as noted above, none of the
examples of the specification evidently make use of this term and the specification
does not define what is meant by “homopolymer.” It is therefore not clear what basis is
relied upon to support the statement that “the claims encompass polylactides [sic]
homopolymers to the exclusion of lactide copolymers.” [Answer, page 6.]
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