Appeal No. 2000-1620
Application 08/507,326
Accordingly, we reverse the ground of rejection under § 112, second paragraph.
In the explanation of the ground of rejection under § 103(a), the examiner advances three
reasons for holding the claimed invention to be prima facie obvious over Sinclair ‘158 and
Sinclair ‘418 and ‘537 (answer, page 5). The first reason is that it would have been prima facie
obvious to crosslink polylactides based solely on the alleged disclosure in Sinclair ‘418 and ‘537
of using peroxides, such as dibenzoyl peroxide, as “crosslinking agents” for polylactides. We
fail to find any basis in either of these references for the examiner’s position because both
references disclose a copolymer of epsilon caprolactone and either D,L-lactide or L-lactide,
respectively, which is not a “polylactide” encompassed by appealed claim 24 as we have
interpreted it above, and the peroxide is used as a “curing agent” as opposed to a “crosslinking
agent.” In any event, the examiner has not explained why one of ordinary skill in this art would
have been motivated by the disclosure in Sinclair ‘418 and ‘537 with respect to curing a
copolymer of epsilon caprolactone and either D,L-lactide or L-lactide with a peroxide, to cure a
polylactide in the same manner.
The second reason is that in view of the use of t-butyl peroxide in each of the three
Sinclair references and the teachings of the equivalence of t-butyl peroxide and benzoyl peroxide
in Sinclair ‘418 and ‘537, it would have been prima facie obvious to use benzoyl peroxide as a
crosslinker for polylactide. The difficulty that we have with the examiner’s position is that, as
pointed out by appellants in the brief, the disclosure at col. 41, lines 48-60, of Sinclair ‘158 sets
forth a failed experiment wherein a polylactide falling within appealed claim 24 as we have
interpreted it above, is soaked at 110°C with the result that “[n]o swelling was observed and this
experiment was terminated.” The examiner has not explained why one of ordinary skill in the art
would have been motivated to combine the failed experiment of Sinclair ‘158, which in any
event involves a polylactide, with the use of a peroxide as a curing agent for a copolymer of
epsilon caprolactone and either D,L-lactide or L-lactide in Sinclair ‘418 and ‘537.
The third and last reason with respect to prima facie obviousness is the bare allegation
that “[i]n view of the level of skill in the art, it would have been obvious to one of ordinary skill
in the art to vary the amount of the added peroxide in order to control the amount or degree of
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