Appeal No. 2004-2129
Application No. 09/923,118
,-caprolactone and valerolactone.” Answer, p. 4, Paper No. 8, Final rejection, p. 2,
relying on Brine, col. 3, lines 28-32 and col. 4, lines 60-64. The examiner further argues
that Brine teaches glass transition temperatures of 26°C to about -65°C. Paper No. 8,
p. 2, relying on Brine, the abstract and col. 3, lines 52-53.
It is well established that anticipation requires that each and every limitation set
forth in a claim be present, either expressly or inherently, in a single prior art reference.
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999); Celeritas
Techs. Ltd v. Rockwell Int’l Corp., 150 F.3d 1354, 1360, 47 USPQ2d 1516, 1522 (Fed.
Cir. 1998); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051,
1053 (Fed. Cir. 1987); Lindemann Maschinenfabrik GMBH v. American Hoist and
Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
Here, we find no difference between the subject matter set forth in claims 1-12
and that which is set forth in claims 13-18.2 That is, claims 1-12 are directed to an
adhesive comprising a “terpolymer consisting of monomer units . . .”, and claims 13-18
are directed to an adhesive comprising a “terpolymer of monomer units . . .” The phrase
“consisting of” only modifies the phrase “monomer units.” Therefore, the lack of the
phrase in claims 13-18 does not change the meaning of the term “terpolymer.”
As to whether the phrase “comprising a thermoplastic lactide-containing
terpolymer” opens the claims to additional monomers as the examiner appears to allege
2 We point out that the following are duplicative in scope: claims 5 and 13; claims
6 and 14; claims 7 and 15; claims 8 and 16; claims 9 and 17; claims 10 and 18.
5
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