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Full text of "USPTO Patents Application 08479810"

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REMARKS 

Claims 1, 12-31,33-38,40-46,55-59,64,69-7277-81, 84-86,91-96, 103 and 109-129 are 
in the application. Changes have been made to claims 1, 12, 24 , 34, 36, 38, 39, 40, 
42, 46, 48, 55, 57, 58, 59, 64, 69, 77, 84 and 86. Claim 109-129 are added. 

A form 1449 listing all the art cited in the related parent application will be submitted 
shortly hereafter in a subsequent paper. 



Claim Rejections - 35 USC § 112 



The specification has been objected to under 35 U.S.C. § 1 12, first paragraph, as 
failing to provide an enabling disclosure commensurate with the scope of the claims. 

Applicants respectfully disagree for the reasons given below. 

The Examiner states that "[t]he present specification is deemed to be enabled only for 
apparatuses with compositions comprising at least one each of rare earth (or 1MB), an 
alkaline earth, and copper oxide." Applicants respectfully disagree. 

The Examiner further states that "[t]he art of high temperature (above 30°K) 
superconductors is an extremely unpredictable one. Small changes in composition 
can result in dramatic changes in or loss of superconducting properties." Applicants' 
claims are not directed to a composition of matter. Applicants' claims are directed to 
an apparatus , structure, device or invention having a superconducting current flowing 
therein or caarying a superconducting current. The superconducting component is a 
transition metal oxide. Applicants discovered that transition metal oxides have 
superconducting onset or transition temperatures greater than 26°K. Applicants have 
enabled what they have discovered and claimed. The Examiner's statement that 
"[s]mall changes in composition can result in dramatic changes in or loss of 
superconducting properties." has not been supported by any evidence not contained 
within applicants' teaching. Any teaching by applicants about the amounts of 
constituent and processing steeps is part of applicants 1 enabling discolosure. 



The Examiner further states that "[t]he amount and type of examples necessary to 
support broad claims increases as the predictability of the art decreases." Once 
applicants discovered that transition metal oxides were superconducting at 
temperatures greater than 26°K., it was within the skill of the art to apply applicants 
teaching to use other specific examples of transition metal oxide compounds for 
superconducting apparatus, devices structures and inventions. The Examiner has not 
shown by evidence not contained within applicants teaching that the art of high T c 
superconductors is unprdictable in view of applicants' teaching. 



12 



The Examiner further states that M [c]laims broad enough to cover a large number of 
compositions that do not exhibit the desired properties fail to satisfy the requirements of 
35 USC 112." The Examiner has not shown that the claims are broad enough to cover 
a large number of compositions that fail. Again the Examiner is applying an incorrect 
standard. The Examiner is applying a standard applicable to composition of matter. 
Applicants are not claiming a composition of matter. As shown below applicants have 
in fact fully enabled the composition of matter. Therefore, applicants have provided 
excess enablement for the claimed invention. The standard of enablement for an 
apparatus or device is not the same as the standard of enablement for a composition of 
matter. Notwithstanding, it is well settled law that claims to a composition of matter 
can encompass a number of inoperable species. Applicants' claims do not cover 
inoperable species. The claims only encompass apparatus, structures, devices and 
inventions that include transition metal oxides that are superconducting at temperatures 
in excess of 26°K and that show a zero resistance onset at temperatures in excess of 
30°K. Those transition metal oxides that are not superconducting at temperatures in 
excess of 26°K and that show a zero resistance onset at temperatures in excess of 
30°K are not encompassed by applicants claims reciting these limitations. Applicants 
note that a claim to a composition of matter is dominant to any use of that composition 
of matter and claims directed to a use of a composition of matter are necessarily of 
narrower scope than claims to the composition of matter. Applicants' claims do not 
encompass uses other than those to which the claims are limited to by the use 
limitations recited in the claims. Applicants' claims are directed to what they have 
discovered. Therefore, applicants' claims fully satisfy the requirements of 35 USC 112. 

The Examiner further states that "[m]erely reciting a desired result does not overcome 
this failure." Applicants' claims do not "merely recite a desired result". Some claims 
recite a means for passing a superconducting current through the material. Other 
claims recite "a superconducting current flowing " or "carrying a superconducting 
current" . This is not " a desired result", but an actual structural element or an atual 
action occuring. If an apparatus, structure, device ro invention is made with material 
that is not superconducting at temperatures in excess of 26°K , such apparatus, 
structure, device or invention will not be encompassed by the claims reciting this 
limitation. Again applicants' claims are not directed to a chemical composition. 

The Examiner further states "[i]n particular, the question arises: Will any layered 
perovskite material containing copper exhibit superconductivity?" The claims do not 
cover "any layered perovskite". The claims do not cover a material. The claims cover 
an apparatus, structure, device ro invention using a material. Only those apparatuses, 
structurers, devices or inventions using the recited elements of the claims are covered 
by the claims. The Examiner is again applying an incorrect standard, a standard 
applicable to a chemical composition which is dominant to all uses of the chemical 
composition. Applicants' note, hovever, that they have fully enabled the compositions. 



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The Examiner further states "[i]t should be noted that at the time the invention was 
made, the theoretical mechanism of superconductivity in these materials was not well 
understood. That mechanism still is not understood." Whether or not this statement is 
true or not true is of no relevance to applicants claims which are directed to apparatus, 
structures, devices and inventions using the compostions. The mechanism does not 
have to be understood to use the material as claimed by applicants. Applicants have 
discovered that transition metal oxides are useful for apparatus, structures, devices 
and inventions that have elements that are superconducting at temperatures in excess 
of 26°K . The Examiners comments, if applicable, are applicable to claims directed to 
specific chemical compounds but not to applicants claims. Nor would they be 
applicable to gereric composition claims . 



The Examiner further states "[accordingly, there appears to be little factual or 
theoretical basis for extending the scope of the claims much beyond the proportions 
and materials actually demonstrated to exhibit high temperature superconductivity." 
Again this comment is not applicable to claims directed to apparatus, structures , 
devices and inventions as claimed. Applicants have discovered that transition metal 
oxides are superconducting at temperatures in excess of 26°K are useful for 
apparatus, structures, devices and inventions as claimed. 

The Examiner further states "[a] 'patent is not a hunting license. It is not a reward 
for the search, but a reward for its successful conclusion' ". Applicants are not claiming 
specific compounds that they have not described. Applicants are generically and 
specifically claiming what they have discovered. Thus applicants are not "hunting" for 
anything. Applicants successful conclusion is their discovery that transition metal 
oxides are superconducting at temperatures in excess of 26°K and can thus be used 
for apparatus, structures , devices and inventios as claimed. 



In the discussion herein applicants will frequently refer to the book "Copper Oxide 
Superconductors" by Charles P. Poole, Jr., Timir Datta and Horacio A. Farach, John 
Wiley & Sons (1988). This book shall be referred to herein as Poole et al.. The 
preface of this book says "[t]his valume reviews the experimental aspects of the field 
of oxide superconductivity with transition temperatures from 30 K to above 123 K, from 
the time of its discovery by Bednorz and Muller in April 1986 until a few months after 
the award of the Nobel Prize to them in October, 1987. " This passage is referring to 
applicants and their paper referred to at page 6 of applicants' specification. This 
book acknowledges that applicants are the discovers of the field of high temperature 
superconductivity. (See Attachment H) 



Applicants note that it is generally recognized that it is note difficult to fabricate 
transition metal oxides and in particular copper metal oxides that are superconductive 
after the discovery by applicants that transition metal oxides are high T c 



14 



superconductors. Chapter 5 of the Poole et al. book entitled Preparation and 
Characterization of Samples" states at page 59 M [c]opper oxide superconductors with a 
purity sufficient to exhibit zero resistivity or to demonstrate levitation (Early) are not 
difficult to synthesize. We believe that this is at least partially responsible for the 
explosive worldwide growth in these materials. " Poole et al. further states at page 61 
n [i]n this section three methods of preparation will be described, namely, the solid state, 
the coprecipitation , and the sol-gel techniques (Hatfi). The widely used solid-state 
technique permits off-the-shelf chemicals to be directly calcined into superconductors, 
and it requires little familiarity with the subtle physicochemical process involved in the 
transformation of a mixture of compounds into a superconductor." Poole et al. further 
states at pages 61-62 "[i]n the solid state reaction technique one starts with oxygen- 
rich compounds of the desired components such as oxides, nitrates or carbonates of 
Ba, Bi, La Sr, Tl, Y, or other elements. ... These compounds are mixed in the desired 
atomic ratios and ground to a fine powder to facilitate the calcination process. Then 
these room-temperature-stabile salts are reacted by calcination for an extended period 
(-20 hr) at elevated temperatures (~900°C ). This process may be repeated several 
times, with pulverizing and mixing of the partially calcined material at each step." This 
is generally the same as the specific examples provided by applicants and as 
generally described at pages 8, line 19, to page 9, line 5, of applicants' specification 
which states "The methods by which these superconductive compositions can be made 
can use known principles of ceramic fabrication, including the mixing of powders 
containing the rare earth or rare earth-like, alkaline earth, and transition metal 
elements, coprecipitation of these materials, and heating steps in oxygen or air. A 
particularly suitable superconducting material in accordance with this invention is one 
containing copper as the transition metal." ( See Attachment H) 

Consequently, applicants have fully enabled high T c transition metal oxides and their 
claims. 



Claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 84, 85, and 91-96 have been rejected 
under 3 5 U. S. C. § 1 12, first paragraph, for the reasons set forth in the objection to 
the specification. Applicants respectfully disagree for the reasons given above in 
response to the objection to the specification. 



Claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 77-81, 84-86, 91-96, and 103 
have been 

rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to 
particularly point out and distinctly claim the subject matter which applicant regards as 
the invention. 

The Examiner states that " Claim 1 , lines 2 and 3, is unclear with the term 'rare 
earth-like element*. The terms 'type' and 'like' are unclear." Applicants respectfully 
disagree. Attachment A is the results of a Lexis search done by the undersigned 



15 



attorney. This search shows the term "rare earth like" or "rare earth and the like" used 
in 68 US patents. The sections of the 68 patents where these terms appears are 
printed using the "KWICK" function of Lexis. Attachment B is the results of a Lexis 
search done by the undersigned attorney. This search shows the term "rare earth like" 

used in the claims of 4 issued US patents. The sections of the claims of the 4 patents 
where this term appears in the claims are printed using the "KWICK" function of Lexis. 

Consequently, the term "rare earth like" is a term use in the art, understood by a 
person of skill inthe art and recognized as a definite term by the USPTO for use in US 
patent claims. 

In Claim 1 , line 5, the term ".us on;," has been deleted. 

In Claim 1 , line 7, term "supercurrent" has been changed to "superconducting current". 

Claim 12, has been amended to include "and less than said transition temperature". 

Claim 17 is not unclear by using the term "rare earth-like element" as described above 
for claim 1 . 

The Examiner states that " Claim 19 is unclear with the term "perovskite-like 
superconducting phase". The term "perovskite-like" or "perovskite-type" is commonly 
used in the art. Attachment C is the results of a Lexis search done by the undersigned 
attorney. This search shows that the terms "perovskite like" and "supercond!" (the "!" 
represents any combination of letters) are used in 107 US patents. The sections of the 
107 patents where these terms appears are printed using the "KWICK" function of 
Lexis. Attachment D is the results of a Lexis search done by the undersigned attorney. 
This search shows the terms "perovskite like" or "perovskite type" used in the claims of 
two issued US patents. The sections of the claims of the 2 patents where this term 
appears in the claims are printed using the "KWICK" function of Lexis. Attachment E is 
a copy of the first page of Chapter 2 of the book "Perovskites and High T c 
Superconductors" by F. S. Galasso, Gordon and Breach Scientific Publishers, 1990. 
Chapter 2 is entitled "Structure of Perovskite-type Compounds " Attachment F is a 
copy of page 78 of the book by C. Poole, Jr. et aL Page 78 is the beginning of the 
section entitled "D. Perovskite-type Superconducting Structures". The first paragraph 
of the section states "[i]n their first report on high-temperature superconductors 
Bednorz and Muller (the applicants) referred to their samples as 'metallic, oxygen 
deficient ... perovskite like mixed valent copper compounds.' Subsequent work has 
confirmed that the new superconductors do indeed have these characteristics. In this 
section we will comment on their perovskite-like aspects" (inset added). Consequently, 
the terms "perovskite like" or "perovskite type" are terms used in the art and 
recognized as a definite by the USPTO for use in US patent claims. (It is noted that 
this passage also shows that the terminology "mixed valent copper compounds" is 
used and understood in the art. 



16 



The Examiner further states that "Claims 20-23 are unclear with the term 'substituted 
transition metal oxide'. That terminology is unclear as to what is the substitute for 
Cu-oxide and as to how much substitution occurs." This is a commonly used term in 
the art. This term is used throughout applicants specification, in particular, for example, 
in the sentence bridging pages 1 1 and 12 of applicants specification states " [i]n these 
compounds the RE portion can be partially substituted by one or more members of the 
alkaline earth group of elements." Applicants specification further teaches at page 12, 
lines 5 to page 12 line 1: 

" For example, one such compound that meets this general description is 
lanthanum copper oxide La2Clio4in which the lanthanum - which belongs to the 
1MB group of elements - is in part substituted by one member of tile neighboring 
HA group of elements, viz. by one of the alkaline earth metals (or by a 
combination of the members of the HA group), e.g., by barium. Also, the oxygen 
content of the compound can be incomplete such that the compound will have 
the general composition La 2-x BaxClio 4-y , wherein x < 0.3 and y < 0.5. 

Another example of a compound meeting this general formula is lanthanum 
nickel oxide wherein the lanthanum is partially substituted by strontium, yielding 
the general formula La 2 _ x Sr x Ni0 4 _ y ' Still another example is cerium nickel oxide 
wherein the cerium is partially substituted by calcium, resulting in Ce 2 _ x Ca x NiO 

4-y * 

The following description will mainly refer to barium as a partial replacement for 
lanthanum in a La CuO as a partial replacement for lanthanum in a La2Clio4 
compound because it is in the Ba-La-Cu-0 system that many laboratory tests 
have been conducted. " 

Moreover the book "Copper Oxide Superconductors" by Poole et al., cited above , has 
at page 122 a section entitled "Substitutions" ( See Attachment G) which states "[a]n 
important question that arises concerns which of the constituent atoms are essential 
and which can be replaced by related or perhaps not so related atoms" Sections 1 and 
2 deal with rare earth substitutions; Section 3 with alkaline earth substitutions; Section 
4 with paramagnetic substitutions; Section 5 with nonmagnetic substitutions; and, 
Section 6 with substitutions for oxygen . Thus "substituted transition metal oxide" has 
been extensively described by applicants and is well understood in the art. 



The Examiner further states that " Claim 24, line 6, is unclear with the term 
"supercurrent" It is suggested that the same term be changed to - current 
Applicants have changed this to "current" 

The Examiner further states "Claim 27, line 2, has the terminology 'substituted 
Cu-oxide' but that terminology is unclear as to what is the substitute for Cu-oxide and 



17 



as to how much substitution occurs." This is not unclear for the same reason as given 
above. 

The Examiner further states : 

"Claim 27, lines 2-4, has the language 'said composition being a substituted 
Cu-oxide including a superconducting phase having a structure substantially 
close to the orthorhombic-tetragonal phase transition of said composition 1 . That 
language is found to be indefinite because it is unclear how close is 
Substantially close'. Relative terminology in a claim is indefinite when one of 
ordinary skill in the art would not be apprised of the scope of the claim.' In this 
case, one skilled in the art would not be able to determine whether the 
superconducting phase is physically close to the orthorhombic-tetragonal phase 
transition or whether that phase is 'like' that transition." 

Applicants respectfully disagree. The language "orthorhombic-tetragonal phase 
transition" is generally used in the art and in particular is used by applicants in the 
sentence bridging pages 25 and 26 which states "[t]he highest Tc for each of the 
dopant ions investigated occurred for those concentrations where, at room 
temperature, the RE 2 _ x TM x 0 4 . y structure is close to the orthorhombic-tetragonal 
structural phase transition, which may be related to the substantial electron-phonon 
interaction enhanced by the substitution." 

The Poole et al. in Chapter VI on "Crystallographic Structures" state states page 73 
"[m]uch has been said about the oxide superconductor compounds being perovskite 
types , so we will begin with a description of the perovskite structure." (emphasis 
added) Poole further states at page 74 in Section 4 entitled "Tetragonal Form" that 
"[a]t room temperature barium titanate is tetragonal ... which is close to cubic." Poole 
further states at page 74 in Section 3 entitled "Orthorhombic Form" that "[w]hen barium 
titanate is cooled below 5°C it undergoes a transition with a further lowering of the 
symmetry to the orthorhombic space group." It is thus clear that the 
orthorhombic-tetragonal structural phase transition is understood by a person of skill in 
the art. (See Attachment I.) 



The Examiner further states that "Claim 28 is unclear with the language 'rare earth-like' 
", Applicants respectfully disagree for the reasons given above. 

The Examiner further states that "Claim 29 is unclear with the language 'substituted 
Cu-oxide"'. Applicants respectfully disagree for the reasons given above. 

The Examiner further states that "Claim 30 is indefinite with the limitation that 'said 
alkaline earth element is atomically large with respect to Cu"\ That limitation is unclear 
as to how the alkaline earth element is 'large', i.e., whether size is measured according 
to covalent radius, metallic radius, or atomic volume. The term 'large' also is unclear as 
to how large is 'large'." This terminology is understood by a person of skill in the art. 



18 



f tipd "Atornic Siz6S . 

2=ffi=ssar«— 

0th6 v n of alkaline-earth metals from Hawley 
definition of aiwaww 



19 



language is unclear because it is not possible to 'create' copper through the choice of 
dopants." In this claim "create" has been changed to "to result in". 

The Examiner further states "Claim 36, line 4, is unclear with the language 'substituted 
copper oxide' ". As explained above "substituted transition metal oxide" or "substitutes 
copper oxide " is a term used in the art and thus is understood by a person of skill in 
the art . 



The Examiner further states "Claim 36, lines 7-12, provides the means for passing an 
electrical current and cooling the composition 'while said composition is at a 
temperature in excess of 26°K\ 

However, superconductivity does not occur when the temperature is > 26°K, but rather, 
that 

superconductivity occurs when the temperature is — at or below said superconducting 
onset 

temperature --." Claim 36 has been amended to recite "less than said supercondutive 
onset temperature." 



The Examiner further states "Claim 38, lines 2 and 3, is indefinite with the language " 
at least one other element is an element which creates Cu 3+ ions" .... That language is 
unclear because no other element "creates" copper." This claim has been amended to 
change "create" to " result in ". 



The Examiner further states "Claim 40, lines 2-4, is unclear with the language 'said 
superconductor being comprised of at least four elements, none of which is itself 
superconducting'. Included with this Office Action are pp. E-84 and E-85 of the 
Handbook of Chemistry and Physics (82-83), which show that rare earth and HUB 
metals (La, Ce, Lu) will superconduct, as well as a MA metal (Ba)." Claim 40 has been 
amended to recite "none of which is itself superconducting at a temperature in excess 
of 26* K. " 



The Examiner further states "Claim 42 is incomplete because it involves '(a) 
superconducting apparatus' but comprises only a composition. Means are not provided 
for cooling the composition and for passing an electrical current through it." Claim 42 
has been amended to recite "means for passing a current". 



The Examiner further states "Claim 42, line 3, is unclear because the term 'doped 
transition metal oxide' does not indicate what the dopant is." Applicants respectfully 
submit that "doped transition metal oxide" is used generically since applicants teaching 



20 



is generic, specific examples of which are given in applicants specification". See 
applicants' specification: 



page 


line 


15 


6-7 


21 


14 


25 


9, 19 


27 


13-23 



The Examiner further states "Claim 43 is indefinite with the requirement that the 'doped 
transition metal oxide is multivalent". A metallic element may be "multivalent" but it is 
unclear how an oxide may be 'multivalent* as well." This is a term used and well 
understood in the art. Applicants' specification at page 7, line 5, teaches multivalent 
metal oxides." Attachment K is a Lexis search performed by the undersigned attorney 
printed out using KWIC feature showing 68 issued US patents using the terminology 
"mixed valent metal oxide". This shows that this term is understood by a person of skill 
in the art and thus definite. 



The Examiner further states "Claim 46 is incomplete because it involves '(a)n 
apparatus' but comprises only a composition. Means are not provided for cooling the 
composition or for passing an electrical current through it is incomplete because it 
involves '(a) superconducting apparatus' but comprises only a composition. Means 
are not provided for cooling the composition or for passing an electrical current 
through it." Claim 46 has been amended to recite "a means for passing a current". 

The Examiner further states "Claim 55, lines 3-5, are indefinite with the language 'said 
transition metal being non-superconducting and said oxide having multivalent states'. 
Presumably the transition metal is superconducting when in the appropriate oxide 
form. Also, the oxide itself does not have ' multivalent states', while the metallic 
elements may." Claim 55 has been amended to recite "said transition metal oxide 
being non-superconducting at said superconducting onset temperature ". The 
terminology "oxide having multivalent states" is as indicated above understood in the 
art and thus definite. 



The Examiner further states "Claim 55 also does not provide for a - superconducting 
onset temperature in excess of 26°K nor does it provide for a means of cooling the 
composition and passing an electrical current - at a temperature at or below said 
superconducting onset temperature -." Claims 55 has been amended to recite a 
"superconducting onset temperature". 



21 



The Examiner further states "Claim 57, lines 3 and 4, is unclear with the language 
'containing at least 3 non-superconducting elements'. Those elements are not 
'non-superconducting elements' when they form part of the 'superconducting oxide'." 
Claim 57 has been amended to state that the 3 elements are non-superconducting at 
the onset temperature (that is as single elements) . 



The Examiner further states " Claim 57, line 5, is unclear with the term 'supercurrent'." 
The term "supercurrent" has been changed to "superconducting current". 



The Examiner further states " Claim 57 does not provide for a means of cooling the 
composition and passing an electrical current at a temperature at or below said 
superconducting onset temperature The claim has been amended to recite "and 
less than said superconductive onset temperature" 



The Examiner further states "Claim 58, lines 2 and 3, is unclear with the language 'an 
element which creates a mixed valent state in said oxide'. The element itself does not 
'create' that state, and that mixed valent state is found in the metals instead of the 
oxide itself." The term "create" has been changed to "results in". 



The Examiner further states "Claim 58, line 4, is unclear with the term "layer-like 
structure". 

The Poole et al. book states at page 20 "[a] great deal has been said about the layering 
characteristics of the newer oxide materials. Layered-type superconductors with 
transitions temperatures in the reasonably high range from 4 to 7 K have been known 
for some time. " 

From this it is clear that the term "layered-type" or "layer-like" are understood to a 
person of skill in the art". ( See Attachment L.) 



The Examiner further states " Claim 58, line 5, is unclear with the term 'supercurrent'." 
This term has been changed to "superconducting current". 



The Examiner further states "Claim 58, lines 5-9, does not provide for a -- 
superconducting onset temperature in excess of 26°K -- nor does it provide for a 
means of cooling the composition and passing an electrical current -- at a temperature 



22 



at or below said superconducting onset temperature." Claim 59 has been amended to 
recite "less than said onset temperature". 



The Examiner further states "Claim 59, lines 2, 6, 7, and 9, is unclear with the term 
'ceramic-like'. 

This is a term commonly used in the art. Attachment M is the results of a Lexis search 
performed by the undersigned attorney using the search criteria "ceramic" within one 
word of "like" and "copper" within one word of "oxide" and " rare" within one word of 
"earth". This search identified 23 issued US patents. These patents are listed in the 
attachment using the Lexis KWICK feature which list only those portion s of the patents 
where these terms appear. The search was limited to this criteria since a search on 
"ceramic" within one word of "like" identified more than 1 ,000 issued US patents and a 
search on "ceramic" within one word of "like" in the same document as "copper" within 
one word of "oxide" identified more than 1000 US patents. It is clear that the term 
"ceramic like" is well understood in the art and is thus definite. 



The Examiner further states " claim 59, lines 5-1 1 , does not provide for a means of 
cooling the composition and passing an electrical current - at a temperature at or 
below said superconducting onset temperature --." Claim 59 has been amended to 
recite "less than said onset temperature". 



The Examiner further states "Claim 64 is indefinite, i. The term "mixed copper oxide" 
is unclear as to whether metals other than copper must be present." Attachment N is 
the results of a Lexis search performed by the undersigned attorney using the search 
criteria "Mixed w/1 copper w/1 oxide" and "supercond!" in the same patent, (w/1 means 
within one word). This search identified 13 issued US patents. These patents are listed 
in the attachment using the Lexis KWICK feature which list only those portions of the 
patents where these terms appear. Moreover, Attachment O is'the same type search 
and listing limited to finding the terms "mixed w/1 copper w/1 oxide" in the claims and 
the term "supercond!" any where in the patent. The search identified 2 patents. It is 
thus clear that the "term mixed copper oxide" is a term well understood in the art and 
by a person of skill in the art and recognized by the USPTO as definite term for use in a 
claim. 

The Examiner further states "Claim 64 is indefinite, ii. The term 'element' is unclear 
as to whether it involves an element other than copper and oxide." The term "element 
" is clear, it is a "chemical element". 



The Examiner further states "Claim 64 is indefinite, iii. The language 'distorted 
octahedral oxygen environment' is unclear as to what the 'environment' is or how it is 
related to the composition." In Attachment P there is a copy of pages 75-76 of the book 



23 




by Poole et al. which states in Section 4 entitled "Atomic Arrangements" "The ionic 
radius of Ba 2+ and O 2 " (1.32 A)are almost the same, and together they form a 
face-centered cubic (fee) close-packed lattice with the smaller Ti 4+ ions (0.68 A) located 
in octahedral holes. The octahedral holes of a close-packed oxygen lattice have a 
radius of 0.545 A, and if these holes were empty the lattice parameter would be 
a=3.73, as shown on Fig. Vl-4a. If each titanium were to move the surrounding 
oxygens apart to its ionic radius when occupuing the hole, as shown on Fig. Vl-4b, the 
lattice parameter a would be 4.00 A. The observed cubic (a=4.012 A) and the 
tetragonal (a=3.995A, c=4.034 A) lattice parameters are close to these values, 
indicating a pushing apart of the oxygens. The tetragonal distortions illustrated on 
Fig. VI-2 and the orthorhombic distortion of Eq. (VI-3) constitute attempts to achieve 
this through an enlarged but distorted octahedral site. This same mechanism is 
operative in the oxide superconductors. (Emphasis added). Thus the language 
"'distorted octahedral oxygen environment" is a term used in the art, well understood 
by a person of skill in the art and thus definite. 



The Examiner further states " Claim 64 is indefinite iv. That claim does not provide 
for a -- superconducting onset temperature in excess of 26°K --, nor does it provide for 
a means of cooling the composition and passing an electrical current -- at a 
temperature at or below said superconducting onset temperature. " Claim 64 has been 
amended to recite "and less than said T c ." 

The Examiner further states "Claim 64 is indefinite V. The term 'supercurrent' is 
unclear." 

This term has been changed to "superconducting current". 



The examiner further states "Claim 69 does not provide for a -- superconducting onset 
temperature in excess of 26°K -- nor does it provide for a means of cooling the 
composition and passing an electrical current -- at a temperature at or below said 
superconducting transition temperature" Claim 69 has been amended to recite " and 
less than said superconducting transition temperature." 

The Examiner further states " Claim 72 is unclear with the term "rare earth-like element" 
. This term is clear for the reasons given above. 

The examiner further states " Claim 77 is unclear with the terms "rare earth-like 
element" and "layer-like crystalline structure". These terms are clear for the reasons 
given above. 

The Examiner further states "Claim 77 also is unclear with the recitation 'said 
composition having ... multi- valent oxidation states'. The metallic elements have those 



24 




states, not the composition per se." As noted above this is commonly used terminology 
in the art and is understood by a person of skill in the art and is thus clear. 



The Examiner further states "Claim 77 further does not provide for a superconducting 
onset temperature in excess of 26°K --, nor does it provide for a means of cooling the 
composition and passing an electrical current - at a temperature at or below said 
superconducting transition temperature." Claim 77 has been amended to recite "said 
mixed copper oxide having a superconducting onset temperature greater than 26°K" 
and to recite "and less than said onset temperature." 



The Examiner further states "Claim 80 is unclear with the term "perovskite-like". As 
note above this is a term used in the art and understood by a person of skill in the art 
and is thus clear. 



The Examiner further states "Claim 84 does not provide for a -- superconducting onset 
temperature in excess of 26°K », nor does it provide for a means of cooling the 
composition and passing an electrical current -- at a temperature at or below said 
superconducting transition temperature." Claim 84 has been amended to recite "said 
transition metal oxide has a superconducting onset temperature in excess of 26°K." 
and to recite " and less than said superconducting onset temperature" and to recite 
"passing an electrical superconducting current". It is not necessary to recite a means 
for cooling. 



The Examiner further states "Claim 86, line 2, is unclear with the term "rare earth-like" 
element." 

As described above this term is a well know term used in the art and understood by a 
person of skill in the art. 



The Examiner further states "Claim 86, line 3, should have - metal -- instead of '"metla" 
". This change has been made. 



The Examiner further states "Claim 86 does it provide for a means of cooling the 
composition and passing an electrical current at a temperature at or below the 
temperature for said superconducting state «." Claim 86 has been amended to 
include "and less than said superconducting onset temperature". 



25 



The Examiner further states "Claim 91 is unclear with the language "exhibiting the 
onset of a DC substantially zero resistance state" because the term "DC" has not been 
defined. "DC" is a well know term used in the electrical arts (to which an electrically 
conducting invention part) for "direct current". Sine the present invention is derected to 
a device, structrure , apparatus or invention carrying, passing, transmitting , eta. a 
current it is part of the electrical arts. ( See the description of applicant's Fig. 1 on 
page 10 of their specification and the first paragraph on page 20 and applicants" 
resistivity measurements in applicants' Figs. 2-4) 



The Examiner further states "Claim 91 does not provide for a - superconducting onset 
temperature in excess of 26°K --, nor does it provide for a means of cooling the 
composition and passing an electrical current — at a temperature at or below said 
superconducting transition temperature." The claim recites the onset of the zero 
resistance state which is shown in applicants' Figs. 2-4. This is an alternate description 
to "superconducting onset temperature". "Mean for cooling" does not have to be 
recited. The claim recites "means for passing current while it is in said substantially 
zero resistance state." 



The Examiner further states " Claim 93 is indefinite, i. That claim is unclear with the 
term 'mixed copper oxide' because it does not indicate with what the copper oxide is 
'mixed'." As noted above this term is a term well known in the art and understood by a 
person of skill in the art and thus not indefinite. 



The Examiner further states " Claim 93 is indefinite. ii. That claim does not 
provide fora means of cooling the composition and passing an electrical current - at a 
temperature at or below said onset temperature." The claim recites "while it is in a 
superconductive state". What the Examiner is suggesting is encompassed by this 
language. 

The Examiner further states " Claim 94 is unclear with the term "layer-like". As 
described above this is a term well known in the art and understood by a person of skill 
in the art and therefore, the claim is not indefinite. 



The Examiner further states " Claim 95 is unclear with the requirement that 'said copper 
oxide material exhibits a mixed valence state'. The copper element, not the oxide 
material, exhibits that 'mixed valence state'." As described above this is a term well 
know in the art and is understood by a person of skill in the art and therefore, is clear. 



26 



The Examiner further states "Claim 96, lines 3-5, has the language "the 
superconductive composition consisting essentially of a copper-oxide compound 
having a layer-type perovskite-like crystal structure, i. The terms "type" and "like" are 
unclear, ii. That language also is unclear as to whether other elements must be 
present as well." As described above the terms "copper-oxide compound having a 
layer-type perovskite-like crystal structure" are well known in the art, are understood by 
a person of skill in the art and are thus clear 



The Examiner further states " Claim 103, lines 5 and 6, is unclear with the terms 
'layer-type' 

'perovskite-type', and 'rare-earth-like'. As note above these terms are well known in 
the art and understood by a person of skill in the art and are therefore, clear. 



In view of the changes to the claims and the remarks herein the Examiner is 
respectfully requested to widthdraw the rejection of claims 1 , 1 2-31 , 33-38, 40-46, 
55-59, 64, 69-72, 77-81, 84-86, 91-96, and 103 under 35 U.S.C. 112, second 
paragraph, as being indefinite for failing to particularly point out and distinctly claim the 
subject matter which applicant regards as the invention. 



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Claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 77-81, 84-86, 91-96, and 103 have 
been 

rejected under 35 U.S.C. § 103(a) as being unpatentable over Asahi Shinbum, 
International 

Satellite Edition (London), November 11, 1986 (hereinafter, "the Asahi Shinbum 
article"). 



The Examiner states: 

a. The scope and contents of the prior art are determined 
as follows: 

i. As discussed in paper no. 20 of the ancestral 
application, 07/053,307, it is not fully clear to what exact date 
applicants are entitled. Based on the record, nonetheless, that date 
would appear to be no later than around December 13, 1986, the date 
samples were tested in the US to show superconductivity." The 
Asahi Shinbum article was published on November 28, 1986. 

ii. The reference confirms superconductivity in an oxide 
compound of La and Cu with Ba having a structure of the so-called 
perovskite structure. 

b. The differences between the prior art and the claims at 
issue are ascertained as follows: 

i. Although the reference may not teach use of the 
testing of zero resistance for confirming superconductivity, it prima 
facie must have been used because it is one of two methods used 
for testing for superconductivity (the other being diamagnetism). 
Accordingly, the burden of proof is upon the applicants to show that 
the instantly claimed subject matter is different from and unobvious 
over that taught by this reference." 

ii. The reference may not teach specifically teach a 
means of cooling the composition to a temperature at or below the 
onset of superconductivity and the means for passing an electrical 
current through that composition under superconducting 
conditions. Nevertheless, the reference did teach testing at 
temperatures of up to 30° K. Since temperatures on the Earth's 
surface are much greater than 30°K, it would have been obvious to 
use a cooling means to attain that colder temperature. Moreover, 
the reference discusses superconductivity, which connotes the 
passing of electricity through an object under superconducting 
conditions. Passing electricity under those conditions also would 



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have been obvious because the reference discusses certain 
applications, such as very strong magnets, NMR machines, linear 
motorcars, electricity transport systems, etc. 

Hi. The reference also may not specifically teach 
orthorhombic-tetragonal phase transitions, doping, mixed valence 
states, non-stoichiometric oxygen, layered perovskite crystalline 
structures, electron-phonon interactions, substituted copper oxide, 
CU3, ions, ceramic materials, enhanced polaron formation, distorted 
octahedral oxygen environment, or distorted orthorhombic 
crystalline structure. Nevertheless, the reference is deemed to teach 
the claimed composition; the applicant or applicants need to show 
that his, her, or their invention is actually 
different from and unexpectedly better than the prior art." 

C. The level of ordinary skill in the relevant art is resolved 
with the finding that, based on the teachings of the Asahi Shinbum 
article as a whole, it would have been obvious to one of such skill 
because that reference teaches superconductivity in an oxide 
compound of La and Cu with Ba having a structure of the so-called 
perovskite structure. 



This rejection is essentially the same as the rejection in the parent application 
07/053,307 filed 05/22/87. Applicants respectfully disagree. The Asahi Sinbum article 
report applicants work. 

The Asahi Sinbum article was published November 28, 1986. At page 6, lines 7-10 of 
applicants" specification applicants state M [t]he basis for our invention has been 
described by us in the following previously published article : J.G. Bednorz and K.A. 
Muller, Zeitschrift fur Physik B - Condensed Matter, 64, pp. 189-193, September 1986." 
The parent application of the present application was filed within one year of this article 
and thus within one year of the Asahi Sinbum article. 

The Asahi Shinbum article reports on applicants' work and says that it has been 
reproduced by Professor Tanaka. It is, therefore, not a proper reference, since it is 
essentially applicants' work. 

To find the Asahi Sinbum article a valid reference would effectively take away from 
applicants the one year grace period given an inventor under 35 USC 102 . Anyone 
could cut off the inventors one year grace period by redoing the inventors work and 
publishing it. This would result in the one year grace period being essentially 
meaningless. 

Moreover, applicants have shown by a series of affidavits in the ancestral application 
that they introduced the invention into the United States prior to the Asahi Sinbum 
article .. 



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• 




In view of the changes to the claims and the remarks herein, the Examiner is 
respectfully requested to reconsider the above-identified application. If the Examiner 
wishes to discuss the application further, or if additional information would be required, 
the undersigned will cooperate fully to assist in the prosecution of this application. 

Please charge any fee necessary to enter this paper to deposit account 09-0468. 

If the above-identified Examiner's Action is a final Action, and if the above-identified 
application will be abandoned without further action by applicants, applicants file a 
Notice of Appeal to the Board of Appeals and Interferences appealing the final rejection 
of the claims in the above-identified Examiner's Action. Please charge deposit account 
09-0468 any fee necessary to enter such Notice of Appeal. 



IBM Corporation 

Intellectual Property Law Dept. 

P.O. Box 218 

Yorktown Heights, N Y. 10598 
(914) 945-3216 




Daniel P. Morris 
Reg. No. 32,053 



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