Skip to main content

Full text of "USPTO Patents Application 08479810"

See other formats


/ 




UNITED STATES Q$ TTMENT OF COMMERCE 
Patent and Trademark Office 

Address: COMMISSIONER OF PATENTS AND TRADEMARKS 
Washington, D.C. 20231 



APPLICATION NO. | FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



r 



b •: C_-;'x! :,: »:..\ , AV^O;V 
: INTELLECT JA_ PROPERTY L*.\ 



EXAMINER 



ART UNIT 



PAPER NUMBER 



DATE MAILED: 



Please find below and/or attached an Office communication concerning this application or 
proceeding. 



Commissioner of Patents and Trademarks 



PTO-90C (R»v. 2/95) 

'U.S. GPO: 199&437-638/80022 



1- File Copy 



-4 

Office Action Summary 


Application No. 
08/479,810 


Applicant(s) 

Bednorz et al. 


Examiner 

Douglas J. McGlnty 


Group Art Unit 
1751 




i 



B Responsive to communication(s) filed on 5-14-98. 5-1-98. and 12-2-97 

B This action is FINAL 

□ Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed 
in accordance with the practice under Ex parte QuayV§35 CD. 11; 453 O.G. 213. 

A shortened statutory period for response to this action is set to expire 3_ month(s), or thirty days, whichever is 

longer, from the mailing date of this communication. Failure to respond within the period for response will cause the 
application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of 
37 CFR 1.136(a). 



Disposition of Claim 

IS Claim(s) 1-129 



is/are pending in the applicat 



Of the above, claim(s) 2-11.32. 39.47-54. 60-63. 65-68. 73-76. 82. 83. 87-90.97-102. is/are withdrawn from consideration 



B Claim(s) 123 



is/are allowed. 



//? izp 12. Y 

IS Claim(s) 1 12-31.33-38.40-46.55-59.64.69-72.77-81.84-86.91-96. 103.109.111-116. / ' is/are rejected. 
□ Claim(s) * is/are objected to. 



□ Claims. 



are subject to restriction or election requirement. 



Application Papers 

□ See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948. 

□ The drawing(s) filed on is/are objected to by the Examiner. 

□ The proposed drawing correction, filed on is □ approved Disapproved. 

□ The specification is objected to by the Examiner. 

□ The oath or declaration is objected to by the Examiner. 

Priority under 35 U.S.C. § 1 19 

(3 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d). 
B All Cgome* Elone of the CERTIFIED copies of the priority documents have been 

□ received. 

(3 received in Application No. (Series Code/Serial Number) 08/053.307 . 

□ received in this national stage application from the International Bureau (PCT Rule 17.2(a)). 
•Certified copies not received: 



□ Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 1 19(e). 

Attachment(s) 

S Notice of References Cited, PTO-892 

□ Information Disclosure Statement(s), PTO-1449, Paper No(s). 

□ Interview Summary, PTO-413 

□ Notice of Draftsperson's Patent Drawing Review, PTO-948 

□ Notice of Informal Patent Application, PTO-152 



— SEE OFFICE ACTION ON THE FOLLOWING PAGES — 



U. S. Patent and Trademark Office 

PTO-326 (Rev. 9-95) 



Office Action Summary 



Part of Paper No. 



20 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 2 



DETAILED ACTION 

1 . The text of those sections of Title 35, U.S. Code not included in this action can be found 
in a prior Office action. The rejections and objections, if any, from the previous Office Action 
have been withdrawn if not repeated in this Office Action. 

2. It is requested that this Examiner be notified of all pending, related applications. 1 That 
notice need not be in a PTO form - 1449, however. 2 

Status of the Claims 

3. Claims 1-129 are pending. 

a. The applicant previously elected Group I, claims 1, 12-31, 33-38, 40-46, 55-59, 
64, 69-72, 77-81, 84-86, 91-96, and 103 in paper no. 13, filed May 12, 1997. 

b. Newly added claims 109, 1 11-116, 1 19, 120, 123, and 124 also fall within Group I 
and therefore are examined at this time. 

c. Newly added claims 1 10, 1 17, 1 18, 121, 122, and 125-129 apparently 3 fall within 
Group II and therefore are withdrawn from further consideration. 

Priority 

4. Acknowledgment is made of applicant's claim for priority under 35 U.S.C. § 1 19 in their 
paper filed May 1, 1998. The certified copy has been filed in parent application, Serial No. 
08/053,307, filed on April 23, 1993 as paper no. 28. 

a. However, a review of that certified copy, which is in English, indicates that it does 
not support the present assertion of priority. Support is not found in that certified copy for the 
invention as presently claimed. See MPEP 201.13 et seq. and 201.14 et seq. 



1 See MPEP 2001.06(b). 
2 See MPEP 901.03. 

3 To the extent these claims are understood they "apparently" fall within Group II. The 
term "structure" appears to only involve a composition. The term "invention" also fails to specify 
the statutory class of invention, with only a recitation of a composition. In light of the claim 
language as a whole, therefore, these claims are deemed to fall within Group II as directed only to 
compositions. 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 3 



b. Applicants' arguments filed May 14, 1998 (paper no. 19), May 1, 1998 (paper no. 
18.5), and December 2, 1997 (paper no. 16), as well as the Affidavits and Attachments, have been 
fully considered but they are not deemed to be persuasive. The applicants quote some passages 
out of the priority document and argue that the present claims are fully based that document. 
Nevertheless, that priority document is not deemed to provide basis for the limitations found in 
the present claims. For instance: 

i. The recitation of a "composition including a rare earth or rare earth-like 
element, a transition metal element capable of exhibiting multivalent states and oxygen", as found 
in claim 1 (lines 2-4). The certified priority document may provide basis for the formula 
RE 2 TM.0 4 at p. 2, para. 4, but the claimed composition is deemed to be much broader than that 
formula. 

ii. The limitation "non-stoichiometric amount of oxygen", as found in claims 
84 (lines 2 and 3) and 86 (line 6). Basis may be seen for an oxygen deficit at p. 2, para. 4, but no 
such basis is seen for the more general limitation of "a nonstoichiometric amount of oxygen". 

iii. The limitation "a transition metal oxide having a phase therein which 
exhibits a superconductive state" is found in present claim 24, line 2. The certified priority 
document may provide basis for compositions of the formula RE 2 TM.0 4 , as discussed above, but 
"transition metal oxide" and "superconductive state" are deemed to be much broader than the 
formula RE 2 TM.0 4 . 

iv. The limitation "a copper-oxide compound" is recited in claim 96 at line 4. 
The certified priority document may provide basis for compositions of the formula RE 2 TM.0 4 , as 
discussed above, but "a copper-oxide compound" is not deemed to be equivalent to a composition 
of the formula RE 2 TM.0 4 . Basis is not seen in the certified priority document for "a copper- 
oxide compound" with the breadth of the present claims. 

v. The limitation to the effect that "the copper oxide compound includes 
(including) at least one rare-earth or rare-earth-like element and at least one alkaline-earth 
element", as recited in claim 103 (lines 5 and 6). The certified priority document may provide 
basis for compositions of the formula RE 2 TM.0 4 , as discussed above, but basis is not seen for the 




Serial Number: 08/479,8 1 0 Page 4 

Art Unit: 1751 

more general limitation of "a copper-oxide compound" with a rare-earth (like) element and an 
alkaline earth element. 

vi. The limitation as to "the effectively-zero-bulk-resistivity intercept 
temperature T p=0 ", as found in claim 103 (lines 10 and 13). The critical temperature, T c , is 
discussed throughout that certified priority document, but not T p=0 . 

c. Applicants* arguments filed May 14, 1998 (paper no. 19), May 1, 1998 (paper no. 
18.5), and December 2, 1997 (paper no. 16), as well as the Affidavits and Attachments, have been 
fully considered but not found to be persuasive. This issue has been fully discussed at section 4 of 
the June 25, 1998 Office Action, paper no. 66, in 08/303,561, the discussion which is 
incorporated herein by reference. 

Claim Rejections - 35 USC § 112 
5. The specification is objected to under 35 U.S.C. § 112, first paragraph, as failing to 
provide an enabling disclosure commensurate with the scope of the claims. 

a. The present specification is deemed to be enabled only for compositions 
comprising BaxLa^CusOy. The 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. The amount and type of examples necessary to support broad 
claims increases as the predictability of the art decreases. 4 Claims broad enough to cover a large 
number of compositions that do not exhibit the desired properties fail to satisfy the requirements 
of 35 USC 1 12. 5 Merely reciting a desired result does not overcome this failure. 6 In particular, 
the question arises: Will any layered perovskite material containing copper exhibit 



See In re Fisher, 166 USPQ 18, 24; and In re Angst ad t and 
Griffon, 190 USPQ 214, 218. See also, In re Colianni . 195 USPQ 
150, 153, 154 (CCPA 1977) (J. Rich). 

5 See In re Cook , 169 USPQ 298, 302; and Cosden Oil v. 
American Hoechst . 214 USPQ 244, 262. 



6 See In re Corkill . 226 USPQ 105, 1009. 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 5 



superconductivity? Also, does any stoichiometric combination of rare earth, an alkaline earth, and 
copper elements result in an oxide superconductor? 

b. It 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. 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. A "patent is not a hunting license. It is not a reward 
for the search, but a reward for its successful conclusion". 7 

c. Claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 84-86, 91-96, 109, 111, 112, 
115, 116, 119, and 120 are rejected under 35 U.S.C. § 112, first paragraph, for the reasons 
set forth in the objection to the specification. 

d. Applicants' arguments filed May 14, 1998, May 1, 1998, and December 2, 1997, 
paper nos. 19, 18.5, and 16, as well as the Affidavits filed May 14, 1998, paper no. 18, and the 
Attachments, have been fixlly considered but not found to be persuasive. 

i. The additional caselaw and arguments by the applicants have been duly 
noted. For the reasons that follow, however, the record as a whole is deemed to support the 
initial determination that the originally filed disclosure would not have enabled one skilled in the 
art to make and use the invention to the scope that it is presently claimed. 

ii. The applicants quote several passages from their specification at pp. 12-15 
of their December 2, 1997 Amendment, but the issue is the scope of enablement, not support. 
The present disclosure may or may not provide support for particular embodiments, but the issue 
here is the scope to which that disclosure would have taught one skilled in the art how to make 
and use a composition which shows the onset of superconductivity at above 26°K. 

iii. Construed in light of that issue, the invention is not deemed to have been 
fully enabled by the disclosure to the extent presently claimed. 



7 See Brenner v. Manson . 383 US 519, 148 USPQ 689. 



Serial Number: 08/479,8 1 0 Page 6 

Art Unit: 1751 



(1) In their December 2, 1997 Amendment, the applicants appear to 
argue that their disclosure refers to the composition represented by the formula RE-TM-O, where 
RE is a rare earth or rare earth-like element, TM is a nonmagnetic transition metal, and O is 
oxygen, and list several species such as "La 2 . x Ba x Cu0 4 . y " which they indicate are found in the 
present disclosure. 

(2) Notwithstanding that argument, it still does not follow that the 
invention is fully enabled for the scope presently claimed. The claims include formulae which are 
much broader than the RE-TM-0 formula cited in the disclosure. 

(a) The present specification actually shows that known forms 
of "a transition metal oxide", "a composition", and "a copper-oxide compound" do not show the 
onset of superconductivity at above 26°K. At p. 3, line 20, through p. 4, line 9, of their 
disclosure, the applicants state that the prior art includes a "Li-Ti-0 system with superconducting 
onsets as high as 13.7°K." Official Notice is taken of the well-known fact that Ti is a transition 
metal. That disclosure also refers to "a second, non-conducting CuO phase" at p. 14, line 18. 

(b) Accordingly, the present disclosure is not deemed to have 
been fully enabling with respect to the "transition metal oxide", "composition", or "copper-oxide 
compound". 

(3) The examples at p. 18, lines 1-20, of the present specification 
further substantiates the finding that the invention is not fully enabled for the scope presently 
claimed. 

(a) With a 1 : 1 ratio of (Ba, La) to Cu and an x value of 0.02, 
the La-Ba-Cu-0 form (i.e., "RE-AE-TM-O", per p. 8, line 1 1) shows "no superconductivity". 

(b) With a 2 : 1 ratio of (Ba, La) to Cu and an x value of 0. 1 5, 
the La-Ba-Cu-0 form shows an onset of superconductivity at "T c = 26°K". It should be noted, 
however, that all of the claims in this application require the critical temperature (T c ) to be "in 
excess of 26°K" or "greater than 26°K". 



(c) Consequently, the present disclosure is not-deemed to 
adequately enable the full scope of the present claims. Independent claims 86 and 103 niay 




Serial Number: 08/479,8 10 Page 7 

Art Unit: 1751 



require the presence of rare earth, alkaline earth, and transition metals, but the aforementioned 
examples show that superconductivity is still very unpredictable. Those claims cannot be deemed 
to be fully enabled. 

iv. The applicants also have submitted three affidavits attesting to the 
applicants 1 status as the discoverers of materials that superconduct > 26°K. Each of the affidavits 
further states that "all the high temperature superconductors which have been developed based on 
the work of Bednorz and Muller behave in a similar manner (way)". Each of the affidavits add 
"(t)hat once a person of skill in the art knows of a specific transition metal oxide composition 
which is superconducting above 26°K, such a person of skill in the art, using the techniques 
described in the (present) application, which includes all known principles of ceramic fabrication, 
can make the transition metal oxide compositions encompassed by (the present) claims ...without 
undue experimentation or without requiring ingenuity beyond that expected of a person of skill in 
the art." All three affiants apparently are the employees of the assignee of the present application. 

(1) Those affidavits do not set forth particular facts to support the 
conclusions that all superconductors based on the applicants' work behave in the same way and 
that one skilled in the art can make those superconductors without undue experimentation. 
Conclusory statements in an affidavit or specification do not provide the factual evidence needed 
for patentability. 8 

(2) Those affidavits do not overcome the non-enablement rejection. 
The present specification discloses on its face that only certain oxide compositions of rare earth, 
alkaline earth, and transition metals made according to certain steps will superconduct at > 26°K. 

(3) Those affidavits are not deemed to shed light on the state of the art 
and enablement at the time the invention was made. One may know now of a material that 
superconducts at more than 26°K, but the affidavits do not establish the existence of that 
knowledge on the filing date for the present application. Even if the present application "includes 
all known principles of ceramic fabrication", those affidavits do not establish the level of skill in 



See In re Lindner . 173 USPQ 356, 358 (CCPA 1972) 



Serial Number: 08/479,8 1 0 Page 8 

Art Unit: 1751 

the ceramic art as of the filing date of that application. Moreover, that additional indication is 
considered to be a conclusory statement unsupported by particular evidence. 

(4) It is fully understood that the applicants are the pioneers in high 
temperature metal oxide superconductivity. The finding remains, nonetheless, that the disclosure 
is not fully enabling for the scope of the present claims. 

v. The applicants argue that the "standard of enablement for an apparatus or 
device is not the same as the standard of enablement for a composition of matter" and that their 
claimed invention is enabling because it is directed to an apparatus rather than a composition. 
Basis is not seen for that argument, to the extent that it is understood. It is noted that 35 USC 

1 12, first paragraph, reads as follows: 

The specification shall contain a written description of the invention, and of the manner 
and process of making and using it, in such full, clear, concise, and exact terms as to 
enable any person skilled in the art to which it pertains, or with which it is most nearly 
connected, to make and use the same, and shall set forth the best mode contemplated by 
the inventor of carrying out his invention. 

Apparatus or device claims also would be subject to the statutory provisions of 35 USC 1 12, first 

paragraph. 

vi. The applicants assert that the "Examiner has not shown by evidence not 
contained within applicants' teaching that the art of high T c superconductors is unpredictable in 
view of applicants' teaching" (spelling and punctuation errors corrected). To the extent that the 
same assertion is understood, the rejection is maintained for the reasons of record. 

vii. The applicants point to "Copper Oxide Superconductors" by Charles P. 
Poole, Jr., et al., (hereinafter, "the Poole article") as supporting their position that higher 
temperature superconductors were not that difficult to make after their original discovery. 

(1) Initially, however, it should be noted that the Poole article was 
published after the priority date presently claimed. As such, it does not provide evidence of the 
state of the art at the time the presently claimed invention was made. 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 9 



(2) Moreover, the present claims are directed to metal oxide 
superconductors devices, not processes of making them. Even if the Poole article provided direct 
evidence of the state of the art at the time the invention was made, which it apparently does not, 
that evidence still does not pertain to the issue at hand, namely, an apparatus for using metal oxide 
superconductors to conduct electricity under superconducting conditions. 

(3) Finally, the Preface states in part at A3: "The unprecedented 
worldwide effort in superconductivity research that has taken place over the past two years has 
produced an enormous amount of experimental data on the properties of the copper oxide type 
materials that exhibit superconductivity above the temperature of liquid nitrogen. ... During this 
period a consistent experimental description of many of the properties of the principal 
superconducting compounds such as BiSrCaCuO, LaSrCuO, TIBaCaCuO, and YBaCuO has 
emerged. ... The field of high-temperature superconductivity is still evolving ..." That preface is 
deemed to show that the field of high-temperature superconductivity continued to grow, on the 
basis of on-going basic research, after the Bednorz and Meuller article was published. 

viii. This Office Action is deemed to be a complete discussion of all relevant 
issues raised by the applicants. 

6. Claims 115, 116, 119, 120, and 124 are rejected under 35 U.S.C. 111, first 
paragraph, as based on a disclosure which is not enabling. 

a. Each of claims 115, 116, 119, 120, and 124 provide for a superconductor "having 
a T c greater than 26°K", but those claims do not provide for a step of — maintaining said 
(superconductor) at a temperature less than said T c — . 

b. Those claims are not enabled because they lack the critical step of maintaining the 
appropriate temperature for superconductivity. 9 

7. Claims 1, 17, 19, 20-23, 27-31, 33, 36-38, 40-45, 55, 56, 58, 59, 64, 72, 77-81, 86, 93- 
96, 103, and 111 are rejected under 35 U.S.C. § 112, second paragraph* as being indefinite 



9 See In re Mavhew . 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). 





Serial Number: 08/479,810 
Art Unit: 1751 



Page 10 



for failing to particularly point out and distinctly claim the subject matter which applicant 
regards as the invention. 

a: Claim 1, lines 2 and 3, is unclear with the term "rare earth-like element". The 
terms "type" and "like" are unclear. 10 It is suggested that the same term be changed to — or 
Group IIIB element 

b. Claim 17 is unclear with the term "rare earth-like element". 

c. Claim 19 is unclear with the term "perovskite-like superconducting phase". 

d. 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. 

e. Claim 27 has the terminology "substituted Cu-oxide" but that terminology is 
unclear as to what is the substitute for Cu-oxide and as to how much substitution occurs. 

f. Claim 27 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". 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. 11 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. 

g. Claim 28 is unclear with the language "rare earth-like". 

h. Claim 29 is unclear with the language "substituted Cu-oxide". 

i. 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 



10 



See MPEP 2173.05(b), part (e) . 



See 2173.05(b) . 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 1 1 



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". 12 

j. Claim 33 is unclear as to whether the alkaline earth element is concentrated "near" 
to the copper oxide concentration or whether the degree of alkaline earth element concentration is 
"near" to the amount of copper oxide concentration. If the latter is the case, then it is unclear if 
the degree of concentration is in molar or weight percentages. 

k. Claim 33 is unclear as to the "superconducting copper oxide phase" changes into 
the tetragonal structural phase or whether that "superconducting copper oxide phase" is found in 
a composition at the boundary between orthorhombic and tetragonal phases. 

1. Claim 36 is unclear with the language "substituted copper oxide". 

m. Claim 40 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 IIIB metals (La, Ce, Lu) will superconduct, as well as a IIA metal (Ba). 

n. Claim 42 is unclear because the term "doped transition metal oxide" does not 
indicate what the dopant is. 

o. 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. 

p. Claim 55 is 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. 

q. Claim 58 is unclear with the term "layer-like structure". 

r. Claim 59 is unclear with the term "ceramic-like", 

s. Claim 64 is indefinite. 



See MPEP 2173.05(b), subpart (f ) . 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 12 



i. The term "mixed copper oxide" is unclear as to whether metals other than 
copper must be present. 

ii. The term "element" is unclear as to whether it involves an element other 
than copper and oxide. 

iii. The language "distorted octahedral oxygen environment" is unclear as to 
what the "environment" is or how it is related to the composition. 

t. Claim 72 is unclear with the term "rare earth-like element". 

u. Claim 77 is unclear with the terms "rare earth-like element" and "layer-like 
crystalline structure". 

v. Claim 80 is unclear with the term "perovskite-like". 

w. Claim 86 is unclear with the term "rare earth-like" element. 

x. Claim 93 is indefinite. That claim is unclear with the term "mixed copper oxide" 
because it does not indicate with what the copper oxide is "mixed". 

y. Claim 94 is unclear with the term "layer-like". 

z. 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". 

aa. Claim 96 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. 

bb. Claim 103 is unclear with the terms "layer-type", "perovskite-type", and "rare- 
earth-like". 

cc. Claim 111, last line, is unclear with the term "superconduting". 
8. Applicants' arguments filed May 14, 1998, May 1, 1998, and December 2, 1997, paper 
nos. 19, 18.5, and 16, as well as the Affidavits filed May 14, 1998, paper no. 18, and the 
Attachments, have been fully considered but not found to be persuasive. 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 13 



a. The applicants argue that the terms "rare-earth like", "perovskite-like", and 
"perovskite-type" are definite. Those arguments are not found to be persuasive. 

i. The applicants point to Attachments A-D, L, and M with LEXIS™ 
searches which supposedly show that the terms "rare-earth like", "perovskite-like", "perovskite- 
type", "layer-like", and "ceramic-like" found in various US patents. That evidence is not 
considered to be persuasive. Each patent application is considered on its own merits. In some 
contexts it may have been clear in the art to use the term "like", such as when the "like" term is 
sufficiently defined. In the present case, however, the terms "rare-earth like" and "perovskite- 
like" are unclear. As suggested above, "rare-earth like" should be changed to - rare earth or 
Group IIIB element --. The terms "like" or "type" also should be removed from "perovskite-like" 
or "perovskite-type". 

ii. The applicants further point to Attachments E and F, but those attachments 
are not considered to be persuasive. Both were published after the priority date afforded to the 
presently claimed invention and therefore does not reflect on the knowledge of one skilled in the 
art at the time the invention was made. Those articles also apparently do not reflect on the degree 
of precision required for patent claims. The crystalline structure itself should be identified as 

- perovskite --. 

b. The applicants argue that limitations directed to "substituted", "doped", or 
"mixed" copper or metal oxides are definite. In support of that argument, the applicants mention 
Attachments G, K, and O, but those attachments appear to have been published after the priority 
date afforded to the presently claimed invention and therefore does not reflect on the knowledge 
of one skilled in the art at the time the invention was made. Regardless of what else is found in 
the Poole et al. source, moreover, the question still remains: Substituted with what and with how 
much? 

c. The applicants assert that the other terminology discussed above is definite, but 
those assertions are not found to be persuasive for the reasons that follow. It is suggested that 
the claims be rewritten to comport with the basic rules of standard patent practice. 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 14 



I 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" is still unclear as to whether "close" means physically "close" or 
structurally similar. 

ii. The language "said alkaline earth element is atomically large with respect 
to Cu" still is unclear as to how the radius is measured and the degree of largeness. 

iii. Claim 33 still is unclear as to whether the alkaline earth element is 
concentrated "near" to the copper oxide concentration or whether the degree of alkaline earth 
element concentration is "near" to the amount of copper oxide concentration. If the latter is the 
case, then it is unclear if the degree of concentration is in molar or weight percentages. The 
applicants purportedly "do not understand" this rejection, but the point remains that it is unclear 
whether "near" refers to spatial distance or relative amounts. 

iv. Claim 33 also still is unclear as to the "superconducting copper oxide 
phase" changes into the tetragonal structural phase or whether that "superconducting copper 
oxide phase" is found in a composition at the boundary between orthorhombic and tetragonal 
phases. The applicants purportedly "do not understand" this rejection, but the point remains that 
it is unclear how the composition "undergoes .... (a) phase transition". 

v. It still is unclear to refer to metal oxide as being "multivalent" or as having 
"multivalent states". The claims involved should be rewritten to more clearly set forth the fact 
that the metal, not the oxide, is multivalent or has multivalent states. 

vi. Claim 64 still is indefinite because the term "element" is unclear as to 
whether it involves an element other than copper and oxide. Both copper and oxygen are 
"elements". 

vii. The language "distorted octahedral oxygen environment" also still is 
unclear as to what the "environment" is or how it is related to the composition. The applicants 
point to Attachment P which was published after the priority date afforded to the presently 
claimed invention and therefore does not reflect on the knowledge of one skilled in the art at the 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 15 



time the invention was made. Moreover, the term "environment" is unclear as to whether or not 
it is a crystalline lattice. 

viii. Further with respect to claim 96, that claim still is unclear as to whether the 
"copper-oxide compound having a layer-type perovskite-like crystal structure" contains elements 
other than copper and oxygen. It is noted, moreover, that perovskite has the general formula 
AB0 3 , wherein A and B represent metal atoms. 

d. This Office Action is deemed to be a complete discussion of all relevant issues 
raised by the applicants, in view of all the affidavits and attachments in the record. 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 16 



Claim Rejections - 35 USC§103 
9. Claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 77-81, 84-86, 91-96, 103, 109, 111- 
116, 119, 120, and 124 are rejected under 35 ILS.C. § 103(a) as being unpatentable over 
Asahi Shinbum . International Satellite Edition (London), November 11, 1986 (hereinafter, 
"the Asahi Shinbum article"). 

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 folly 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. 13 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. 14 

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 

13 See MPEP 715 et seq. 



"See m re Brown, 173 uspq 685 , 688; in re Best, 195 uspq 
430; and I n r e M arosi, 218 USPQ 289, 293. 





Serial Number: 08/479,810 
Art Unit: 1751 



Page 17 



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



phase transitions, doping, mixed valence states, non-stoichiometric oxygen, layered perovskite 
crystalline structures, electron-phonon interactions, substituted copper oxide, Cu 3+ 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. 15 

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. 

d. Applicants' arguments filed May 14, 1998, May 1, 1998, and December 2, 1997, 
paper nos. 19, 18.5, and 16, as well as the Affidavits filed May 14, 1998, paper no. 18, and 
Attachments have been fully considered but not found to be persuasive. The applicants argue that 
the reference is not a proper reference because it was essentially their own work, they were 
entitled to a one year grace period, and the evidence shows that they introduced the invention in 
the United States prior to the publication date of the reference. Those arguments have been fully 
discussed in the ancestral applications, including the Office Actions in 08/303,561. The reference 
is found to be prior art because it was the work of another before the earliest priority date for the 
presently claimed invention. The one year grace period applies to prior art under 35 USC 102(b), 



in. 



The reference also may not specifically teach orthorhombic-tetragonal 



15 See In re Pest, 195 USPQ 430, 433, 434 (CCPA 1977) 




Serial Number: 08/479,810 
Art Unit: 1751 



Page 18 



whereas the reference is prior art in this case under 35 USC 102(a). The record also does not 
establish an early enough reduction to practice in this country. 



10. It is noted that the applicants were awarded the Nobel Prize for their work in this area. 
The record is not deemed to indicate, however, that the Asahi Shinbum article was predated by 
the applicants' earlier conception and/or reduction to practice in this country. The presently 
claimed invention also is non-enabling and indefinite for the reasons set forth above. 

11. To overcome the above rejections, it is suggested that claims 1-122 and 124 be canceled. 

12. The following is an Examinees statement of reasons for the indication of possibly 
allowable subject matter: 

a. The Asahi Shinbum article teaches in general that perovskite-like compounds of 
La, Cu, and Ba have a T c of 30°K, but that article apparently does not teach apparatuses with the 
particular formula in the amendment suggested above. The examples in the present specification 
are deemed to show criticality for that formula in that suggested amendment. 

b. Support for the proposed amendment is found at p. 20, line 1, through p. 25, line 
5, and in Figure 3. 

c. This indication of possibly allowable subject matter is subject to further 
consideration and review. 



13. THIS ACTION IS MADE FINAL. The new grounds of rejection, if any, were 
necessitated by an Amendment. 16 Applicant is reminded of the extension of time policy as set 
forth in 37 C.F.R. § 1.136(a). 

A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION 
IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE 
EVENT A FIRST RESPONSE IS FILED WITHIN TWO MONTHS OF THE MAILING DATE 
OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL 
AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN 
THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE 



Possibly Allowable Subject Matter 



Conclusion 



16 See MPEP 706.07(a). 



Serial Number: 08/479,810 
Art Unit: 1751 



Page 19 



ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 C.F.R. 
§ 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY 
ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE EXPIRE 
LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION. 

14. The following website may be consulted for general information: http://www.uspto.gov/ 

15. Any inquiry concerning this communication or earlier communications from the examiner 
should be directed to Douglas J. McGinty, whose telephone number is (703) 308-3805. The 
examiner normally can be reached on Monday through Friday from 8:30 A.M. to 5:00 P.M., 
Eastern time. If reasonable attempts to reach the examiner by telephone are unsuccessful, 
however, the examiner's supervisor, Mr. Paul Lieberman, can be reached at (703) 308-2523. Any 
inquiry of a general nature or relating to the status of this application should be directed to the 
Technology Center receptionist whose telephone number is (703) 308-0661 . The fax number for 
this Technology Center is (703) 305-7718. 



July 29, 1998 
479810.4 




Douglas J. McGinty 
Primary Examiner 
Group 1700