Appeal No. 2000-1620
Application 08/507,326
We find that appellants disclose in the written description in the specification that
“[p]olylactide or polylactic acid . . . is most often prepared from lactic acid dimer, lactide” (page
1, lines 11-12), and that with respect to the claimed invention, “[t]he polylactide . . . can be made
from L-, D- or D,L-lactide or their blends with any polymerization method” (pages 4-5;
emphasis supplied), with poly-L-lactide used throughout the specification for illustration. The
interpretation of the transitional phrase “composed of” with respect to the extent that it opens the
scope of the claim must be determined “based on the specification and other evidence” in the
record. AFG Industries, Inc. v. Cardinal IG Company, Inc., 239 F.3d 1239, 1245-46,
57 USPQ2d 1776, 1780-81 (Fed. Cir. 2001).
Based on appellants’ specification and this record, considered in light of the positions
advanced by appellants and the examiner, we determine that the claimed phrase “said
homopolymer polylactide is composed of L-lactide monomers” limits the claimed “polylactide
homopolymer composition” to a polylactide prepared from a “homopolymer . . . composed of
L-lactide,” wherein the transitional phrase “composed of” opens the term “homopolymer” to
include monomers of the other possible lactides, D- and D,L-lactide, in addition to the L-lactide
monomer.
We recognize that, as pointed out by the examiner, the term “homopolymer” ordinarily
has the common dictionary meaning of “[a] natural or synthetic high polymer derived from a
single monomer,”3 and does not appear in the written description in the specification. However,
on the facts of this case, we find that the claim language complies with § 112, second paragraph,
because it sets out and circumscribes the particular area of the claimed invention with a
reasonable degree of precision and particularity, In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971), such that “those skilled in the art would understand what is claimed
when the claim is read in light of the specification.” See The Beachcombers, Int’l. v. WildeWood
Creative Prods., 31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994), quoting
Orthokinetics, Inc v. Safety Travel Chairs Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088
(Fed. Cir. 1986).
3 The Condensed Chemical Dictionary 535 (10th ed., Gessner G. Hawley, ed., New York, Van
Nostrand Reinhold Company, 1981)
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