Ex Parte SODERGARD et al - Page 4


               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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