Appeal No. 2004-2129
Application No. 09/923,118
(Answer, p. 4), we point out that claims 1-12 contain the same claim language. Thus, if
claims 1-12 are not anticipated by Brine, than neither are claims 13-18.
In addition, we point out that polymers comprising lactone and up to seven
additional monomers (Answer, p. 4), is not a terpolymer as required by claims 13-18.
We construe the term “comprising” to mean that the adhesive comprises a terpolymer
as set forth in the claims as well as other components such as a filler, a bioactive agent,
etc.
In any event, we find that the issue of anticipation is resolved on the basis of
whether or not Brine discloses a terpolymer derived from monomer units as set forth in
the claims; viz., a lactic acid/glycolic acid/caprolactone or a lactic acid/glycolic
acid/valerolactone. As pointed out by the appellants, a terpolymer is made from three
different monomers. Brief, p. 3. We have carefully considered Brine’s disclosure and
we agree with the appellants that it does not teach a terpolymer. Rather, Brine
discloses that
To make copolymers of the above with glycolic acid, valerolactone,
decalactone, or the like the same procedures are employed using the appropriate
mixture of ingredients, such as, racemic lactic acid with glycolic acid, or 1(+)-
lactic acid with valerolactone [emphasis added]. Brine, col. 4, lines 60-64.
While it may appear at first blush that Brine discloses a terpolymer of glycolic
acid, lactic acid and valerolactone; we find that when the quoted sentence is read in the
context of the Brine patent as a whole, it [the quoted sentence] refers to (i) copolymers -
a polymer made from two monomer units; and (ii) the copolymers of “glycolic acid,
valerolactone, ,-caprolactone, ,-decalactone, hydroxybutyric acid, $-hydroxyvaleric
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