Skip to main content

Full text of "USPTO Patents Application 08479810"

See other formats


2. (Amended) The [composition] superconducting apparatus of claim 1 , 
further including an alkaline earth element substituted for at least one atom of 

.said rare earth or rare earth-like element in said composition. 

— _ — . 

27. (Amended) A superconducting apparatus comprising a composition 
having a transition temperature in excess of 26°K, said composition being a 
^jy/ substituted Cu-oxide including a superconducting phase having a structure which 
? is structurally substantially [close] similar to the orthorhombic-tetragonal phase 
transition of said composition means for maintaining said composition at a 
temperature greater than said transition transition temperature to put said 
composition in a superconducting state; and means for passing current through 
said composition while in said superconducting state J 




32. (Amended) The [composition] superconducting apparatus of claim 31 , 
where said crystalline structure is layer-like, enhancing the number of 
Jahn-Teller polarons in said composite. 

/ 33. (Amended) A superconducting apparatus comprising a composition 
^/ having a superconducting onset temperature in excess of 26°K[.], the 

composition being comprised of a copper oxide doped with an alkaline earth 
element where the concentration of said alkaline earth element is near to the 
concentration of said alkaline earth element where the superconducting copper 



S.N. 08/479,810 



2 



Docket YO987-074BZ 





oxide phase in said composition undergoes an orthorhombic to tetragonal 
structural phase transition. 



48. (Amended) A superconductive apparatus comprising a superconductive 
composition comprised of a transition metal oxide having substitutions therein, 
the amount of said substitutions being sufficient to produce sufficient 
electron-phonon interactions in said composition that said composition exhibits a 
superconducting onset at temperatures greater than 26°K[. ]. and a source of 
current for passing a superconducting electric current through said 
superconductor. 




59 y (Amended) A combination, comprised of: 

a ceramic-like material having an onset of superconductivity at an 
onset temperature in excess of 26°K[.], 

means for passing a superconducting electric current through said 
ceramic-like material while said material is maintained at a 
temperature in excess of 26°K and less than said onset 
temperature, and 



S.N. 



means for cooling said superconducting ceramic-like material to a 
superconductive state at a temperature greater than 26°K and less 

08/479,810 3 Docket YO987-074BZ 



than said onset temperature, said material being superconductive 
at temperatures below said onset temperature and a ceramic at 
temperatures above said onset temperature. 

60. (Amended) [A superconductor] An apparatus comprised of a transition 
metal oxide, and at least one additional element, said superconductor having a 
distorted crystalline structure characterized by an oxygen deficiency and 
exhibiting a superconducting onset temperature in excess of 26°K[.] , a source of 
current for passing a superconducting electric current in said transition metal 
oxide, and a cooling apparatus for maintaining said transition metal oxide below 
said onset temperature and at a temperature in excess of 26 °K. 

61 . (Amended) The [superconductor] apparatus of claim 60, where said 
transition metal is Cu. 

62. (Amended) [A superconductor] An apparatus comprised of a transition 
metal oxide and at least one additional element, said superconductor having a 
distorted crystalline structure characterized by an oxygen excess and exhibiting a 
superconducting onset temperature in excess of 26°K [.] . a source of current for 
passing a superconducting electric current in said transition metal oxide, and a 
cooling apparatus for maintaining said transition metal oxide below said onset 
temperature and at a temperature in excess of 26 °K. 



S.N. 08/479,810 



4 



Docket YO987-074BZ 



63. (Amended) The [superconductor] apparatus of claim 62, where said 
transition metal is Cu. 




65. (Amended) [A superconducting] An apparatus composition exhibiting 
superconductivity at temperatures greater than 26°K, said composition being a 
ceramic-like material in the RE-AE-TM-0 system, where RE is a rare earth or 
near rare earth element, AE is an alkaline earth element, TM is a multivalent 
transition metal element having at least two valence states in said composition, 
and O is oxygen, the ratio of the amounts of said transition metal in said two 
valence states being determined by the ratio RE : AE [.] . a source of current for 
passing a superconducting electric current in said transition metal oxide, and a 
cooling apparatus for maintaining said transition metal oxide below said onset 
temperature and at a temperature in excess of 26 °K. 

66. (Amended) [A superconductive] An apparatus composition having a 
transition temperature greater than 26°K, the composition including a multivalent 
transition metal oxide and at least one additional element, said composition 
having a distorted orthorhombic crystalline structure^] , a source of current for 
passing a superconducting electric current in said transition metal oxide, and a 
cooling apparatus for maintaining said transition metal oxide below said onset 
temperature and at a temperature in excess of 26 °K. 



S.N. 08/479,810 



5 



Docket YO987-074BZ 



67. (Amended) The [composition] apparatus of claim 66, where said transition 
metal oxide is a mixed copper oxide. 

68. (Amended) The [composition] apparatus of claim 67, where said one 
additional element is an alkaline earth element. 



83. (Amended) The method of claim 82[.] , where said transition metal is 
copper. 




in a superconductive state at a temperature in excess of 26 K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition [consisting 
essentially of] comprising a copper-oxide compound having a 
layer-type perovskite-like crystal structure, the composition having 
a superconductor transition temperature T c of greater than 26 K; 

(b) means for maintaining the superconductor element at a 
temperature above 26 K and below the superconductor transition 
temperature T c of the superconductive composition; and 



S.N. 08/479,81 0 6 Docket YO987-074BZ 



(c) means for causing an electric current to flow in the 
superconductor element. 

97. (Amended) The superconductive [method] apparatus according to claim 

96 in which the copper-oxide compound of the superconductive composition 
includes at least one rare-earth or rare-earth-like element and at least one 
alkaline-earth element. 

98. (Amended) The superconductive [method] apparatus according to claim 

97 in which the rare-earth or rare-earth-like element is lanthanum. 

99. (Amended) The superconductive [method] apparatus according to claim 
97 in which the alkaline-earth element is barium. 

1 00. (Amended) The superconductive [method] apparatus according to claim 
96 in which the copper-oxide compound of the superconductive composition 
includes mixed valent copper ions. 

1 01 . (Amended) The superconductive [method] apparatus according to claim 
100 in which the copper-oxide compound includes at least one element in a 
nonstoichiometric atomic proportion. 



S.N. 08/479,810 



7 



Docket YO987-074BZ 



1 02. (Amended) The superconductive [method] apparatus according to claim 
101 in which oxygen is present in the copper-oxide compound in a 
nonstoichiometric atomic proportion. 



1 04. (Amended) The superconductive [method] apparatus according to claim 
103 in which the rare-earth or rare-earth-like element is lanthanum. 

1 05. (Amended) The superconductive [method] apparatus according to claim 
103 in which the alkaline-earth element is barium. 

1 06. (Amended) The superconductive [method] apparatus according to claim 
103 in which the copper-oxide compound of the superconductive composition 
includes mixed valent copper ions. 

1 07. (Amended) The superconductive [method] apparatus according to claim 

106 in which the copper-oxide compound includes at least one element in a 
nonstoichiometric atomic proportion. 

1 08. (Amended) The superconductive [method] apparatus according to claim 

107 in which oxygen is present in the copper-oxide compound in a 
nonstoichiometric atomic proportion. 



S.N. 08/479,810 



8 



Docket YO987-074BZ 



111. (Amended) A device comprising a superconducting transition metal oxide 
having a superconductive onset temperature greater than 26 °K, said 
superconducting transition metal oxide being at a temperature less than said 
superconducting onset temperature and having a [superconduting] 
superconducting current flowing therein. 




1 21 . (Amended) A [structure] device comprising a copper oxide having a T c 
greater than 26°K carrying a superconducting current. 



125. (Amended) [A structure] An apparatus comprising a composition of matter 
having a T c greater than 26°K carrying a superconducting current said 
composition comprising at least one each of a III B element, an alkaline earth, 
and copper oxide. 




[ 126. (Amended) A [structure] device comprising a composition of matter having 
a T c greater than 26°K carrying a superconducting current, said composition 
comprising at least one each of a rare earth, and copper oxide. 



127. (Amended) A [structure] device comprising a composition of matter having 
a T c greater than 26°K carrying a superconducting current, said composition 
comprising at least one each of a III B element, and copper oxide. 



S.N. 08/479,810 



9 



Docket YO987-074BZ 



1 28. (Amended) A transition metal oxide device comprising a T C >26°K and 
carrying a superconducting current. 



1 29. (Amended) A copper oxide device comprising a T C >26°K and carrying a 
superconducting current. . 



1 37. (Amended) An apparatus comprising: 

[forming] a composition including a transition metal, a rare earth or 
Group III B element, an alkaline earth element, and oxygen, where 
said composition is a mixed transition metal oxide having a 
non-stoichimetric amount of oxygen therein and exhibiting a 
superconducting state at a temperature greater than 26°K, 

means for maintaining said composition in said superconducting 
state at a temperature greater than 26°K, and less than said 
superconducting onset temperature, and 

means for passing an electrical current through said composition 
while said composition is in said superconducting state. 




S.N. 08/479,81 0 1 0 Docket YO987-074BZ 



146. (Amended) [A method, including the steps of] An apparatus : 



a composition exhibiting a superconductive state at a temperature 
in excess of 26°K, 

a temperature controller maintaining said composition at a 
temperature in excess of 26°K at which temperature said 
composition exhibits said superconductive state, and 

a current source passing an electrical current through said 
composition while said composition is in said superconductive 
state. 

147. (Amended) The [method] apparatus of claim 146, where said composition 
is comprised of a metal oxide. 

148. (Amended) The [metal] apparatus of claim 146, where said composition is 
comprised of a transition metal oxide. 



S.N. 08/479,810 



11 



Docket YO987-074BZ 



163. (Amended) An apparatus comprising [the steps of]: 

a composition including copper, oxygen and any element selected 
/ from the group consisting of a Group II A element, a rare earth 
element and a Group III B element, where said composition is a 
mixed copper oxide having a non-stoichiometric amount of oxygen 
therein and exhibiting a superconducting state at a temperature 
greater than 26°K; 

a temperature controller maintaining said composition in said 
superconducting state at a temperature greater than 26°K; and 

a current source passing an electrical current through said 
composition while said composition is in said superconducting 
state. 



167. (Amended) An apparatus comprising: 

a copper oxide having a phase therein which exhibits a 
superconducting state at a critical temperature in excess of 26°K; 




S.N. 08/479,810 



12 



Docket YO987-074BZ 



a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature to 
produce said superconducting state in said phase; 

a current source passing an electrical supercurrent through said 
copper oxide while it is in said superconducting state; 



said copper oxide includes [at least one] an element selected from 
the group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth element 
and a Group III B element. 

173. (Amended) An apparatus comprising: 




a composition including a transition metal, oxygen and an element 
selected from the group consisting of [at least one] a Group II A 
element and at least one element selected from the group 
consisting of a rare earth element and a Group III B element, where 
said composition is a mixed transitional metal oxide formed from 
said transition metal and said oxygen, said mixed transition metal 
oxide having a non-stoichiometric amount of oxygen therein and 



S.N. 08/479,810 13 Docket YO987-074BZ 



exhibiting a superconducting state at a temperature greater than 
26°K; 



a temperature controller maintaining said composition in said 
superconducting state at a temperature greater than 26°K; and 

a current source passing an electrical current through said 
composition while said composition is in said superconducting 
state. 

1 74. (Amended) [A method including the steps of] An apparatus : 

forming a composition exhibiting a superconductive state at a 
temperature in excess of 26°K; 

a temperature controller maintaining said composition at a 
temperature in excess of 26°K at which temperature said 
composition exhibits said superconductive state; 

a current source passing an electrical current through said 
composition while said composition is in said superconductive 
state; and 



S.N. 08/479,810 



14 



Docket YO987-074BZ 



superconductor transition T c of the superconductive composition; 

& m 

(c) a current source causing an electric current to flow in the 
superconductor element. . 



1 77. (Amended) An apparatus comprising: 

a copper oxide having a phase therein which exhibits a 
superconducting state at a critical temperature in excess of 26°K; 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature to 
produce said superconducting state in said phase; 

a current source passing an electrical supercurrent through said 
copper oxide while it is in said superconducting state; 

said copper oxide includes at least one [element selected from 
group consisting of a] Group II A element, and at least one element 
selected from the group consisting of a rare earth element and [at 




S.N. 08/479,810 



16 



Docket YO987-074BZ 



least one element selected from the group consisting of] a Group III 
B element. 

1 78. (Amended) An apparatus comprising: 

a composition including copper, oxygen [and an element selected 
from the group consisting of at least onel^a Group II A element and 
at least one element selected from the group consisting of a rare 
earth element [at least one element selected from the group 
consisting of] and a Group III B element, where said composition is 
a mixed copper oxide having a non-stoichiometric amount of 
oxygen therein and exhibiting a superconducting state at a 
temperature greater than 26°K; 

a temperature controller maintaining said composition in said 
superconducting state at a temperature greater than 26°K; and 

a current source passing an electrical current through said 
composition while said composition is in said superconducting 
state. 



S.N. 08/479,810 



17 



Docket YO987-074BZ 



1 79. (Amended) A structure comprising: 

a composition exhibiting a superconductive state at a temperature 
in excess of 26°K; 

a temperature controller maintaining said composition at a 
temperature in excess of 26°K at which temperature said 
composition exhibits said superconductive state; 

a current source passing an electrical current through said 
composition while said composition is in said superconductive 
state; and 

said composition including a copper oxide [and at least one 
element selected from the group consisting of]^ Group II A 
element, at least one element selected from the group consisting of 
a rare earth element and [at least one element selected from the 
group consisting of] a Group III B element. 




S.N. 08/479,810 



18 



Docket YO987-074BZ 



1 80. (Amended) A superconductive apparatus for causing electric-current flow 
in a superconductive state at a temperature in excess of 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having a layer-type 
perovskite-like crystal structure, the composition having a 
superconductive transition temperature T c of greater than 26°K, 
said superconductive composition includes [at least one element 
selected from the group consisting of] a Group II A element, and at 
least one element selected from the group consisting of a rare 
earth element and [at least one element selected from the group 
consisting of] a Group III B element; 

(b) a temperature controller maintaining the superconductor 
element at a temperature above 26°K and below the 
superconductor transition temperature T c of the superconductive 
composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 



S.N. 08/479,810 



19 



Docket YO987-074BZ 



1 81 . (Amended) A superconductive apparatus for conducting an electric 
current essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having a layer-type 
perovskite-like crystal structure, the copper-oxide compound 
including [at least one element selected from the group consisting 
of a group] Group II A element, and at least one element selected 
from the group consisting of a rare earth element and [at least one 
element selected from the group consisting of] a Group III B 
element, the composition having a superconductive-resistive 
transition defining a superconductive/resistive-transition 
temperature range between an upper limit defined by a 
transition-onset temperature T c and a lower limit defined by an 
effectively-zero-bulk-resistivity intercept temperature T p = 0 , the 
transition-onset temperature T c being greater than 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bulk-resistivity 
intercept temperature T p = 0 of the superconductive composition; and 



S.N. 08/479,810 



20 



Docket YO987-074BZ 



(c) a current source causing an electric current to flow in the 
superconductor element. 




1 82. (Amended) An apparatus comprising [providing] a composition having a 
transition temperature greater than 26°K, the composition including a rare earth 
or alkaline earth element, a transition metal element capable of exhibiting 
multivalent states and oxygen, including at least one phase that exhibits 
superconductivity at temperature in excess of 26°K, a temperature controller 
maintaining said composition at said temperature to exhibit said 
superconductivity and a current source passing an electrical superconducting 
current through said composition with said phrase exhibiting said 
superconductivity. 



1 83. (Amended) An apparatus comprising [providing] a superconducting 
transition metal oxide having a superconductive onset temperature greater than 
26°K, a temperature controller maintaining said superconducting transition metal 
oxide at a temperature less than said superconducting onset temperature and a 
current source flowing a superconducting current therein. 



1 87. (Amended) An apparatus comprising [flowing] a superconducting 

n electrical current in a transition metal oxide having a T c greater than 26°K and 
L/y maintaining said transition metal oxide at a temperature less than said T c . 



S.N. 08/479,810 




199. (Amended) The superconductive apparatus according to claim 198 in 
which the copper-oxide compound of the superconductive composition includes 
at least one element selected from the group consisting of a rare-earth element 
[and] A a Group III B element and [at least one] an alkaline-earth element. 

200. (Amended) The superconductive apparatus according to claim 199 in 
which the rare-earth [or rare-earth-like element] is lanthanum. 



205. (Amended) A superconductive apparatus for conducting an electric 
current essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having a substantially 
layered perovskite crystal structure, the copper-oxide compound 
including at least one element selected from the group consisting of 
a rare-earth element [and] A a Group III B element and [at least one] 
an alkaline-earth element, the composition having a 
superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range between an 
upper limit defined by a transition-onset temperature T c and a 



S.N. 08/479,810 



22 



Docket YO987-074BZ 



lower limit defined by an effectively-zero-bulk-resistivity intercept 
temperature T p = 0 , the transition-onset temperature T c being greater 
than 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bulk-resistivity 
intercept temperature T 9 =o of the superconductive composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 



21 3. (Amended) A superconductive apparatus for causing electric-current flow 
in a superconductive state at a temperature in excess of 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having a substantially 
layered perovskite crystal structure, the composition having a 
superconductive transition temperature T c of greater than 26°K, 
said superconductive composition includes [at least one element 
selected from the group consisting of] a Group II A element and at 



S.N. 08/479,810 



23 



Docket YO987-074BZ 



least one element selected from the group consisting of a rare 
earth element and a Group III B element; 

(b) a temperature controller maintaining the superconductor 
element at a temperature above 26°K and below the 
superconductor transition temperature T c of the superconductive 
composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 

214. (Amended) A superconductive apparatus for conducting an electric 
current essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having a substantially 
layered perovskite crystal structure, the copper-oxide compound 
including [at least one element selected from the group consisting 
of] a Group II A element and at least one element selected from the 
group consisting of a rare earth element and a Group III B element, 
the composition having a superconductive/resistive transition 



S.N. 08/479,810 



24 



Docket YO987-074BZ 



defining a superconductive-resistive-transition temperature range 
between an upper limit defined by a transition-onset temperature T c 
and a lower limit defined by an effectively-zero-bulk-resistivity 
intercept temperature T p = 0 , the transition-onset temperature T c 
being greater than 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bulk-resistivity 
intercept temperature T p = 0 of the superconductive composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 

21 5. (Amended) A superconductive apparatus for causing electric-current flow 
in a superconductive state at a temperature in excess of 26 °K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a transition metal oxide compound having a 
substantially layered perovskite crystal structure, the composition 
having a superconductive transition temperature T c of greater than 
26°K, said superconductive composition includes [at least one 



S.N. 08/479,81 0 25 Docket YO987-074BZ 



element selected from the group consisting of a] Group II A 
element and at least one element selected from the group 
consisting of a rare earth element and a Group 1MB element; 

(b) a temperature controller maintaining the superconductor 
element at a temperature above 26°K and below the 
superconductor transition T c of the superconductive composition; 
and 

(c) a current source causing an electric current to flow in the 
superconductor element. 

21 6. (Amended) A superconductive apparatus for conducting an electric 
current essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a transition metal-oxide compound having a 
substantially layered perovskite crystal structure, the transition 
metal-oxide compound including [at least one element selected 
from the group consisting of] a Group II A element and at least one 
element selected from the group consisting of a rare earth element 



S.N. 08/479,810 



26 



Docket YO987-074BZ 



and a Group III B element, the composition having a 
superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range between an 
upper limit defined by a transition-onset temperature T c and a lower 
limit defined by an effectively-zero-bulk-resistivity intercept 
temperature T p = 0 , the transition-onset temperature T c being greater 
than 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bulk-resistivity 
intercept temperature T p=0 of the superconductive composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 



231 . (Added) An apparatus comprising a composition of matter having a T c 
greater than 26°K carrying a superconducting current, said composition 
comprising at least one each of a rare earth, an alkaline earth, and copper oxide. 





S.N. 08/479,810 



27 



Docket YO987-074BZ 



REMARKS 



Reconsideration is respectfully requested in view of any changes to the 
claims and the remarks herein. Please contact the undersigned to conduct a 
telephone interview in accordance with MPEP 713.01 to resolve any remaining 
requirements and/or issues prior to sending another Office Action. Relevant 
portions of MPEP 713.01 are included on the signature page of this amendment. 

Claims 1-230 are currently pending. The examiner states that "Claims 
2-11, 32, 39, 47-54, 60-63, 65-68, 73-76, 82, 83, 87-90, 97-102, 104-108, 110, 
117, 118, 121, 1 22 and 1 25-1 29 remain withdrawn from consideration as 
directed to non-elected inventions." Applicants respectfully disagree that all 
these claims should be nonelected. Some of the dependent clai ms have 
antecedent basis problems which have been corrected in this amendment. 
Claims 2-1 1 depend from claim 1 which is under examination. Claim 32 
depends from claim 31 which is under examination. Claim 39 depends from 
claim 36 which is under examination. Claim 47 depends from claim 46 which is 
under examination. Independent claims 48 is directed to an apparatus and 
applicants believe that this should be examined with the other claims under 
examination. Claims 49-54 depend from claim 48. Claims 60-63 and 65-68 
have been amended to be directed to an apparatus. Claims 97-1 02 depend 
from claims 96 which is under examination. Claims 104-108 depend from claim 



S.N. 08/479,810 



28 



Docket YO987-074BZ 



103 which is under examination. Claim 110 depends from claim 15 which is 
under examination. Claims 128-130 have been amended to be directed to a 
device. Claims 73-76, 82-83, 1 17, 118, and 126 have been amended to be 
directed to a device. Claims 146-148 and 1 74 are amended to be directed to an 
apparatus. 

Applicants acknowledge the withdrawal of the 112, 1st paragraph, rejection 
of claims 1 1 5, 1 1 6, 1 1 9, 1 20 and 1 24 in view of the amendments and remarks in 
applicants' prior response. 

CLAIM OF PRIORITY 

Since the examiner has not addressed applicants claim to priority from the 
priority document, applicants understand that the examiner has granted ~ 
applicants claim to priority. 

REJECTIONS UNDER 35 USC 102 AND 103 

Applicants acknowledge the withdrawal of the prior art rejection over 
Asahi Shinbum, International Satellite Edition (London), November 28, 1986 
(hereinafter, "the Asahi Shinbum article") in view of the remarks in applicants' 
prior response. The examiner states "Upon careful consideration, the examiner 

S.N. 08/479,810 29 Docket YO987-074BZ 

I 



agrees with applicant's position appearing at pages 34-39 of the supplemental 
response filed 8/5/99. Specifically, applicant has sufficiently demonstrated 
conception, diligence and reduction to practice of the instant invention before the 
publication date of the Asahi Shinbum article." Applicants disagree "that the 
withdrawn of the prior art rejection addresses each of applicant's remarks 
appearing at pages 1 -46 of the supplemental response filed 8/5/99 (paper #25). 
Applicants respectfully submit that the examiner has not withdrawn the rejection 
but has found the rejection moot in view of the fact that the examiner has agreed 
that applicant has sufficiently demonstrated conception before the publication 
date of the Asahi Shinbum article in the United States and diligence to a 
reduction to practice of the instant invention. 

The examiner has not commented on nor rebutted applicants' argument 
that in rejecting claims under 35 USC 102 and 103 over the Asahi Shinbum 
article, the examiner necessarily concludes that applicants' claims are fully 
enabled. The Asahi Shinbum article refers to applicants' work which was 
reported in their original article which is incorporated by reference in applicants' 
specification. Since applicants' original article is the only information enabling 
the Asahi Shinbum article, it logically follows that the examiner necessarily 
concludes that all applicants' claims are fully enabled. 



S.N. 08/479,810 



30 



Docket YO987-074BZ 



In the Office Action of 7-30-98 claims have been rejected as anticipated 
under 35 USC 102(a) by the Asahi Shinbum article, and claims have been 
rejected as obvious under 35 USC 103(a) in view of the Asahi Shinbum article. 
These rejections have not in fact been withdrawn, but, as stated above, have in 
fact been found to be moot. 

Thus in the Office Action of 7-30-98, the Examiner is stating that 
everything within applicants' non-allowed claims rejected under 35 USC 102 over 
this article, is found in the Asahi Shinbum article and a person of skill in the art 
can practice the invention of applicants' claims rejected under 35 USC 102 with 
what is taught in the Asahi Shinbum article alone. Moreover, in the Office 
Action, the examiner is stating that all the claims rejected under 35 USC 103 
over the Asahi Shinbum article alone can be practiced by a person of skill in the 
art with what is taught in the Asahi Shinbum article in combination with what is 
known to a person of skill in the art. All of applicants' claims rejected over the 
Asahi Shinbum article are dominant to (or generic to) the one claim, claim 1 23, 
allowed in the Office Action of 7-30-98. Thus by stating that all the non-allowed 
claims are anticipated or obvious over the Asahi Shinbum article alone, the 
Examiner is stating that a person of skill in the art needs nothing more that what 
is taught in the Asahi Shinbum article or what is taught therein in combination 
with what is known to a person of skill in the art to practice that part of each of 
applicants non-allowed claims which does not overlap allowed claim 123. Thus, 



S.N. 08/479,810 



31 



Docket YO987-074BZ 



it logically follows from the 35 USC 102/103 rejections that all of applicants' 
claims are fully enabled. 

The Asahi Shinbum article states in the first paragraph: 

A new ceramic with a very high T c of 30K of the 
superconducting transition has been found. The 
possibility of high T c - superconductivity has been 
reported by scientists in Switzerland this spring. The 
group of Prof. Shoji TANAKA, Dept. Appl. Phys. Faculty 
of Engineering at the University of Tokyo confirmed in 
November, that this is true. 

and in the second paragraph: 

The ceramic newly discovered, is an oxide compound 
of La and Cu with Barium which has a structure of the 
so-called perovskite and shows metal-like properties. 
Prof. Tanaka's laboratory confirmed that this material 
shows diamagnitism (Meisner effect) which is the most 
important indication of the existence of 
superconductivity. 

The Swiss scientist are the inventors of the present application. Thus this 
clearly refers to applicants work which was reported in applicants' article which is 
incorporated by reference in the present application. These passages say that 
Prof. Tanaka confirmed applicants work. The newly discovered ceramic referred 



S.N. 08/479,810 



32 



Docket YO987-074BZ 



to in the article is the ceramic reported on in applicants' article. It is thus clear 
that for the examiner to have rejected applicants claim over the Asahi Shinbum 
article under 35 USC 102 or 35 USC 103, the examiner necessarily had to find 
that applicants' article fully enabled their claims. 

In the Office Action the examiner has not commented on nor rebutted these 
arguments. In applicants' response dated 8-2-99 applicants apply these 
arguments in detail to the rejection of applicants claims under 35 USC 102 and 
35 USC 103, respectively. The examiner, therefore, must be taken to agree with 
applicants argument in the prior response that their teaching has fully enabled all 
of their claims. 

At the beginning of applicants' arguments in regard to the objections and 
rejection based on 35 USC 112, first paragraph, applicants' have repeated these 
arguments, that is that the 35 USC 102/103 rejections over the Asahi Shinbum 
article logically requires that all of applicants' claims are fully enabled by 
applicants' teaching. The examiner has again not responded nor rebutted them. 
The examiner, therefore, must be taken to agree with applicants argument in the 
response of 8-2-99 that their teaching has fully enabled all of their claims. 

The examiners rejections under 35 USC 102 and 103 over the Asahi 
Shinbum articles have been maintained since the Office Action dated August 26, 



S.N. 08/479,810 



33 



Docket YO987-074BZ 



1992 of the parent application. Thus the examiner has maintained the view that 
all of applicants' claims are fully enabled for about eight years. Thus the 
specification provides an enabling disclosure of all of applicants' claims . 

OBJECTION TO SPECIFICATION AND REJECTION OF CLAIMS 
UNDER 35 USC 112, FIRST PARAGRAPH 



The only support for the objection to the specification and rejection of 
claims as not enabled under 35 USC 112, first paragraph, is the examiner's 
unsupported statement that the field of high Tc superconductivity is 
unpredictable, the examiner's unsupported statement that the theoretical 
mechanism of superconductivity in these materials was not well understood, and 
examples in applicants' specification that show metal oxides having a Tc < 26°K. 
One of these examples has an onset at 26°K. The examiner provides no 
extrinsic evidence to support the examiner's position of nonenablement. 
Applicants have submitted five affidavits of experts rebutting the examiner's 
position of nonenablement, the article by Rao et al. and the book by Poole et al. 
which clearly states that it is easy to fabricate high Tc materials. Moreover, the 
book by Poole, the Affidavit of Duncombe and the article by Rao shows 
numerous examples of high Tc metal oxides fabricated according to app licants' 
teaching which do not fall within the scope of the claims allowed by the examiner 
but do fall within the scope of the claims which have not been allowed by the 



S.N. 08/479,810 



34 



Docket YO987-074BZ 



examiner. The examiner has not rebutted applicants' application of case law 
which holds that 35 USC 112, first paragraph, permits claims to read on 
inoperable species. Notwithstanding, applicant's claims do not read on any 
inoperative species. Under In re Angstadt 190 USPQ 219, to sustain a rejection 
under 35 USC 112, first paragraph, it is the examiner's burden to show that a 
person of skill in the art must engage in undue experimentation or require 
ingenuity beyond that expected of a person of skill in the art to practice the 
claimed invention. According to In re Wands 8 USPQ2d 1400, an application 
does not fail to meet the 35 USC 1 12 enablement requirement even though 
experimentation is needed to determine samples useful, to practice the claimed 
invention when the experimentation is not undue. The examiner has not meet 
his burden under 35 USC 112, first paragraph, as articulated in In re Angstadt 
and In re Wands. Moreover under In re Angstadt, providing the examples in 
applicants' specification with a Tc < 26°K is commendable frankness and part of 
applicants' teaching on how to select a high Tc material. In re Angstadt and In re 
Wands hold that a claim is enabled if undue experimentation is not needed to 
determine if a particular species with in the scope of the claim is effective to 
practice the claimed invention. This is the situation in the present application 
and the examiner has not rebutted applicants' showing that only routine 
experimentation is needed to fabricate materials useful to practice applicants' 
invention. It is applicants' view that there can be no question that the record as a 
whole supports applicants' view that all the claims are fully enabled. Thus, 



S.N. 08/479,810 



35 



Docket YO987-074BZ 



applicants request the examiner to withdraw the objection to the specification / 
and the rejection of claims under 35 USC 112, first paragraph. 

The examiner states: 

The specification is 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. 

In support of this statement the examiner states: 

The present specification is deemed to be enabled only for I 

compositions comprising a transition metal oxide containing at least 

a) an alkaline earth element and b) a rare-earth element or Group 

III B element. 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. Claims broad enough to cover a large number 

of compositions that do not exhibit the desired properties fail to 

satisfy the requirements of 35 U.S.C. 1 1 2. Merely reciting a 

desired result does not overcome this failure. In particular, the 

S.N. 08/479,810 36 Docket YO987-074BZ 



question arises: Will any layered perovskite material exhibit 
superconductivity. 

A large number of examples are needed to support a broad claim in an 
unpredictable art only if a person of skill in the art has to engage in undue 
experimentation to determine embodiments not specifically recited in applicants' 
teachings. It is the examiner's burden to show that undue experimentation is 
necessary. The examiner has presented no extrinsic evidence that a person of 
skill in the art would have to engage in undue experimentation. The examiner 
has stated without support that the art of high temperative superconductivity is 
an extremely unpredictable one. Applicants have not merely stated a desired 
result as clearly shown by the five affidavits submitted by experts in the field, the 
Poole book and the Rao article (Attachment C). And it is not necessary for any 
layered perovskite to work to satisfy 35 USC 1 1 2, first paragraph, it is only 
necessary that they can be determined without undue experimentation. 

The examiner restates without support that "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." Applicants note that the theory of superconductivity has been 
understood for some time. For example, the book by Von Lau e entitled 
"Superconductivity", published in English in 1952, presents a comprehensive 



S.N. 08/479,810 



37 



Docket YO987-074BZ 



theory of superconductivity. The entire text of this book is included in 
Attachment A. Notwithstanding, for a claim to be enabled under section 112, it 
does not require an understanding of the theory. The examiner then conclusorily 
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". This 
statement is clearly inconsistent with In re Angstadt 190 USPQ 219 and In re 
Wands 8 USPQ2d 1400 which hold that to satisfy the first paragraph of 35 USC 
1 12 it is only necessary that a person of skill in the art not exercise undue 
experimentation to make samples that come within the scope of the applicants ' 
claims. Applicants have clearly shown that only routine experimentation is 
needed to fabricate samples to practice applicants claimed invention. The 
examiner has not denied, nor rebutted this. The examiner again incorrectly cites 
Brenner v. Manson, 383 US 519, 148 USPQ 689. stating a "patent is not a 
hunting license. It is not a reward for the search, but a reward for its successful 
conclusion". As stated in the applicants' prior response, this quote applies to 
utility (a requirement under 35 USC 101) not to enablement (a requirement under 
35 USC 112) and is thus incorrectly cited by the examiner. 

Claims 1 , 12-31 , 33-38, 40-46, 55-59, 64, 69-72, 84-86, 91 , 96, 109, 1 1 1 , 
112, 115, 116, 119, 120, 130-133, 137-139, 141-144, 149, 153-155, 162-169, 
172-173, 175-184, 187-188, 192-196, 198-219, 222-223 and 227-230 have been 



S.N. 08/479,810 



38 



Docket YO987-074BZ 



rejected under 35 U.S.C. § 1 12, first paragraph, for the reasons set forth in the 
objection to the specification. In view of the changes to the claims and the 
remarks herein the examiner is respectfully requested to withdraw this rejection. 

Applicants acknowledge that the above 112, first paragraph, rejection has 
been modified in scope from the last Office Action. 

The examiner states: 

Upon careful consideration of the evidence as a whole, including 
the specification teachings and examples, and applicant's affidavits 
and remarks, the examiner has determined that the instant 
specification is enabled for compositions comprising a copper oxide 
containing an alkaline earth element and a rare-earth or Group III B 
element (as opposed to only compositions comprising 
BaxLasxCusOv- as stated in the last Office action). Applicant has 
provided guidance throughout the instant specification that various 
copper oxides containing an alkaline earth element and a 
rare-earth or Group 1MB element result in superconductive 
compounds which may in turn be utilized in the instantly claimed 
apparatus. 



S.N. 08/479,810 



39 



Docket YO987-074BZ 



Applicants disagree that they have only enabled compositions containing 
an alkaline earth element and a rare earth or Group III B element to result in 
superconductive compounds which may in turn be utilized in the instantly 
claimed methods. There are numerous examples of high Tc superconductors 
made using the general principals of ceramic science as taught by applicants. 
There principals that existed prior to applicants' earliest filing date. 

The examiner further states: 

With respect to the remaining claims, applicant's remarks filed 
8/5/99 have been fully considered. It is believed that applicant's 
position has been fully addressed in the previous office actions, 
however, the examiner would like to reiterate the following. 

Applicants have submitted three affidavits attesting to the 
applicants' status as the discoverers of materials that superconduct 
> 26°K. Each of the affidavits 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 



S.N. 08/479,810 



40 



Docket YO987-074BZ 



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. 

The examiner has incorrectly stated that applicants have produced three 
affidavits. Applicants have produced five affidavits of affiants who are employed 
at the IBM, Thomas J. Watson Research Center. The affidavits of Shaw and 
Duncombe were referred to in applicants previous amendment. The affidavits of 
Mitzi, Dinger, Tsuei, Shaw and Duncombe and the book of Poole et al. state it is 
straight forward to use the general principles of ceramic science to make high T c 
transition metal oxide superconductors following applicants' teaching. The book 
of Poole et al. and the affidavit of Duncombe show numerous example of high Tc 
superconductors produced according to applicants' teaching. The affidavits of 
Shaw and Duncombe cites numerous books and articles which provide the 
general teaching of ceramic science at the time of and prior to the filing date of 
the present application. The affidavit of Duncombe also provides several 
hundred pages copied from Mr. Duncombe 's notebooks starting from before 
applicants 1 filing date showing the fabrication of numerous samples. In regards 
to these pages, Mr. Duncombe states "I have recorded research notes relating to 
superconductor oxide (perovskite) compounds in technical notebook IV with 



S.N. 08/479,810 



41 



Docket YO987-074BZ 



entries from November 12, 1987 to June 14, 1998 and in tech nical notebook V 
with entries continuing from June 7, 1988 to May 1989." Mr. Duncombe's 
affidavit list some of the compounds prepared using the general principles of 
ceramic science: Yi Ba 2 Cu 3 O x ; Yi Ba 2 Cu 3 0 3 ; Bi 2 .i 5 Sn.gaCai.? Cu 2 0, +8 ; Ca (2 - X ) 

Sr x Cu Ox and Bi 2 Sr 2 Cu O x . Applicants note that the last three examples do not 
come within the scope of the claims allowed by the examiner since they do not 
contain a rare earth or group III B element. The examiner has not commented 
on the data in Mr. Duncombe's affidavit. Mr. Duncombe's affidavit provides 
direct evidence that these examples were made following applicants' teaching 
without undue experimentation. Moreover, the preface of the Poole article 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 first and third of these 
compositions does not come within the scope of the claims allowed by the 
examiner since they do not contain a rare earth or group 1MB element, even 
though Poole states that they are easy to make following the general principals 
of ceramic science as taught by applicants. Other data supporting applicants 
view is reported in the Review Article "Synthesis of Cuprate Superconductors" by 

S.N. 08/479,810 42 Docket YO987-074BZ 



Raoetal., IOP Publishing Ltd. 1993. A copy of this article is in Attachment C. 
This article lists in Table 1 the properties of 29 superconductors made according 
to applicants teaching. Twelve (#'s 1,8-13, 16, 17, 20, 21, 27 and 28) of those 
listed do not come within the scope of the claims allowed by the examiner. Only 
three of the 29 have a Tc < 26 °K. Those twelve do not contain one or more of a 
rare earth, a group III B element or an alkaline earth element. It is thus clear that 
broader claims than allowed should be allowed since it is clear that the allowed 
claims can be avoided following applicants teaching without undue 
experimentation. Applicants are entitled to claims which encompass these 
materials since they were made following applicants' teaching. 

The article of Rao et al. in the first sentence of the introduction citing 
applicants' article - which is incorporated by reference in their application - 
acknowledges that applicants initiated the field of high Tc superconductivity. 
Applicants further note that the Rao article acknowledges that "a large variety of 
oxides" are prepared by the general principles of ceramic science and that 
applicants discovered that metal oxides are high Tc superconductors. 
Citing reference 5 therein - the book "New Directions in Solid State Chemistry", 
Rao et al. 1989 (Cambridge; Cambridge University Press) for which there is a 
1986 edition which predates applicants' filing date (See Attachment B), Rao et 
al. states: 

S.N. 08/479,81 0 43 Docket YO987-074BZ 



Several methods of synthesis have been employed for preparing 
cuprates, with the objective of obtaining pure monophasic products 
with good superconducting characteristics [3, 4]. The most 
common method of synthesis of cuprate superconductors is the 
traditional ceramic method which has been employed for the 
preparation of a large variety of oxide materials [5]. Although the 
ceramic method has yielded many of the cuprates with satisfactory 
characteristics, different synthetic strategies have become 
necessary in order to control factors such as the cation 
composition, oxygen stoichiometry, cation oxidation states and 
carrier concentration. Specifically noteworthy amongst these 
methods are chemical or solution routes which permit better mixing 
of the constituent cations in order to reduce the diffusion distance 
in the solid state [5, 6]. Such methods include coprecipitation, use 
of precursors, the sol-gel method and the use of alkali fluxes. The 
combustion method or self-propagating high-temperature synthesis 
(SHS) has also been employed. 

Reference 5 is another example of a reference to the general principles of 
ceramic science incorporated into applicants' teaching. The Rao et al. article 
states that the 29 materials reported on in the article and listed in Table 1 are 
fabricated using the general principles of ceramic science. Moreover, the Rao 

S.N. 08/479,810 44 Docket YO987-074BZ 



article states that these materials are fabricated by what the Rao article calls the 
"ceramic method" which is the preferred embodiment in applicants' specification, 
yet 12 of the 29 materials in Table 1 do not come within the scope of the claims 
allowed by the examiner. Thus known examples fabricated according to 
applicants' teaching will not be literally infringed by the Rao, Duncombe and 
Poole examples. 

The examiner disagrees with applicant's position regarding enablement of 
the instant application stating: 

The present specification discloses on its face that only certain 
copper oxide compositions of rare earth and alkaline earth metals 
made according to certain steps will superconduct at > 26°K. 
Those affidavits are not deemed to shed light on the state of the art 
and enablement at the time the invention was made. 

It is not relevant that applicants disclosed specific compositions. There is 
no evidence in the record to indicate that anything more is needed to fabricate 
compositions which can be used to practice applicants 1 invention to the full scope 
that it is claimed in the present invention. To the contrary, applicants have 
shown numerous examples in the affidavits and references of samples 
fabricated according to applicants 1 teaching useful to practice their claimed 

S.N. 08/479,81 0 45 Docket YO987-074BZ 



invention. Notwithstanding, since the claims are apparatus and device claims, 
applicants do not believe that they are required to provide a teaching of how to 
fabricate all compositions which may be used within the full scope of applicants 1 
claimed invention. 

The examiner further states: 

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 that the level of skill in 
the superconducting art as of the filing date of that application 
would enable the skilled artisan to produce superconductive 
ceramic oxides other than copper oxide compositions of rare earth 
or Group III B element and alkaline earth metals. 

There is no evidence in the record to indicate that anything more is 
needed to fabricate compositions which can be used to practice applicants' 
invention to the full scope that it is claimed in the present invention. To the 
contrary, applicants have shown numerous examples in the affidavits and 
references, of samples fabricated according to applicants' teaching useful to 



S.N. 08/479,810 



46 



Docket YO987-074BZ 



practice their claimed invention. Notwithstanding, since the claims are apparatus 
and device claims, applicants do not believe that they are required to provide a 
teaching of how to fabricate all compositions which may be used within the full 
scope of applicants' claimed invention. 

The examiner further states: 

Although 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, the examiner respectfully maintains that the instant 
claims must be enabled not only for apparatus limitations, but also 
for the superconductive ceramic compositions at the time of filing. 

Applicants discovered that metal oxides had Tc > 26°K. This was not known 
prior to applicants' discovery. Once this is realized, the only enablement 
required for applicants' claims are to cool a metal oxide below the Tc and to 
provides a superconducting current. It is not necessary for applicants to provide 
a detailed method of making every composition which can be used within the 
scope of their claims. Applicants' claims are not directed to the composition of 
matter. They are directed only to the use of the metal oxide as a superconductor 

S.N. 08/479,81 0 47 Docket YO987-074BZ 



with a Tc>26°K, that is, as a circuit element in operation. It was within the skill of 
the art to fabricate metal oxides using the applicants teaching and test them for a 
Tc > 26°K using techniques well known prior to applicants filing date. 

Applicants agree that apparatus or device claims are subject to the 
statutory provisions of 35 U.S.C. 1 12, first paragraph. However, those provisions 
are directed to the claimed apparatus or device invention and not to a 
composition of matter claim. It is not relevant how a composition, which can be 
used to practice applicants' claims, is made since the invention is how the 
composition is used in an apparatus or device. Thus the type of enablement is 
different. For example, if a circuit containing a resister is claimed, the applicant 
does not have to teach all known methods to fabricate the resistor and the claim 
will read on circuits including resistors made by methods discovered after the 
filing date of the application. Here applicants are claiming a high Tc 
superconductor (a type of resistor) that carries a current below a temperature of 
Tc > 26°K. This is a circuit element in operation. 



The examiner further states: 



As acknowledged by applicant, no such high Tc materials (greater 
than 26K) were known to the skilled artisan at the time of filing, and 
for the skilled artisan to make such materials outside the scope of 

S.N. 08/479,81 0 48 Docket YO987-074BZ 



i 



copper oxide compositions of rare earth or Group NIB element and 
alkaline earth metals would require experimentation beyond what is 
routine. 

Although it was not known that the materials taught by applicants were 
superconducting as taught by applicants, these types of materials were known 
prior to applicants discovery. For example, the affidavits of Shaw and 
Duncombe refer to Glasso "Structures, Properties and Preparation of 
Perovskite-Type Compounds" which was published about 18 years before 
applicants' filing date. Moreover, in the specification at page 13, lines 1-10, two 
articles are referred to and incorporated by reference. These articles report on 
perovskite-like layered oxides of mixed valent transition metals and methods of 
preparation. They did not find or try to find superconductivity. 

Applicants have extensively referred to "Copper Oxide Superconductors" 
by Charles P. Poole, Jr., et al., (hereinafter, "the Poole book" or "the Poole 
article") as supporting their position that higher temperature superconductors 
were not that difficult to make after their original discovery. This is because 
methods of making metal oxides which could be used to practice applicants' 
claimed invention were well known prior to applicants discovery that metal oxides 
had a To > 26°K. In response the examiner states "Initially, however, it should be 
noted that the Poole article was published after the priority date presently 



S.N. 08/479,810 



49 



Docket YO987-074BZ 



claimed". It is not relevant that the Poole article was published after the priority 
date since it is clear evidence -that only routine experimentation was needed to 
practice applicants' claimed invention and there is no indication that anything 
more than applicants' teaching is needed. The two articles referred to at page 
18, lines 1-10, of the specification, the Galasso book cited in the affidavits of 
Duncombe and Shaw and the book by Rao "New Direction In Solid State 
Chemistry" were published prior to applicants filing date. The examiner further 
comments on the Poole book stating, "[a]s such, it does not provide evidence of 
the state of the art at the time the presently claimed invention was made" . As 
noted in applicants' prior response, Poole clearly states that the materials that 
can be used within the scope of applicants claims were easily made. Moreover, 
in copending divisional application 08/303,561 , paper 77E the examiner has 
acknowledged that the fabrication techniques were well known prior to 
applicants' invention. Poole states that is why so much work was done in so 
short a period of time. This is clear and convincing evidence that persons of skill 
in the art were fully enabled by applicants teaching to practice applicants' 
claimed invention. It is not necessary for applicants to show that the data was 
generated prior to applicants' filing date. The examiner has not stated, nor is 
there any evidence presented by the examiner, nor is there any indication in the 
Poole book that anything more than what applicants taught was necessary to 
practice applicants' claimed invention. It is only necessary that persons of skill in 
the art can practice applicants' claimed invention from applicants' teaching 



S.N. 08/479,810 



50 



Docket YO987-074BZ 



without undue experimentation. As stated in In re Angstadt there is no 
requirement of no experimentation to practice the claimed invention which is the 
standard the examiner is apparently applying. 

As noted in applicants' prior response In re Angstadt states at 190 USPQ 

219: 

We note that the PTO has the burden of giving reasons, supported 
by the record as a whole, why the specification is not enabling. In 
re Armbruster, 512 F.2d 676, 185 USPQ 152 (CCPA 1975). 
Showing that the disclosure entails undue experimentation is part 
of the PTO's initial burden under Armbruster; this court has never 
held that evidence of the necessity for any experimentation, 
however slight, is sufficient to require the applicant to prove that the 
type and amount of experimentation needed is not undue. 

The examiner has not commented on applicants' arguments rebutting the 
examinees reasons for non-enablement. The examiner has not satisfied his 
burden of giving reasons, supported by the record as a whole, why the 
specification is not enabling. Applicants have provided extensive evidence that 
to practice applicants claimed invention does not require undue experimentation 
but only requires routine experimentation. That only routine experimentation is 
needed to practice applicants claimed invention is shown for example by the 
affidavits of Mitzi, Dinger, Tsuei, Shaw and Duncombe, the articles referred to at 



S.N. 08/479,810 



51 



Docket YO987-074BZ 



page 1 3, lines 1 -1 0 of the specification, the article of Rao et al. and the book of 
Poole et al. all of which state or show it is straight forward to use the general 
principles of ceramic science to make high T c transition metal oxide 
superconductors which is applicants' teaching. 

According to In re Angstadt 190 USPQ 214, 218 in an unpredictable art, 
§112 does not require disclosure of a test with every species covered by a claim. 
The CCPA states: 

To require such a complete disclosure would apparently 
necessitate a patent application or applications with 
"thousands" of examples or the disclosure of "thousands" 
of catalysts along with information as to whether each 
exhibits catalytic behavior resulting in the production of 
hydroperoxides. More importantly, such a requirement 
would force an inventor seeking adequate patent 
protection to carry out a prohibitive number of actual 
experiments. This would tend to discourage inventors 
from filing patent applications in an unpredictable area 
since the patent claims would have to be limited to those 
embodiments which are expressly disclosed. A potential 
infringer could readily avoid "literal" infringement of such 
claims by merely finding another analogous catalyst 
complex which could be used in "forming 
hydroperoxides." 



S.N. 08/479,810 



52 



Docket YO987-074BZ 



This is exactly the situation in the present application. If applicants are 
limited to the claims that are allowed by the examiner, a potential infringer could 
readily avoid "literal" infringement of such claims by merely finding, through 
routine experimentation, other transition metal oxides having a high Tc. As 
shown below there are numerous materials made according to applicants' 
teaching which do not come within the scope of the claims allowed by the 
examiner in the answer. As noted herein, the Poole book, the Duncombe 
affidavit, the Rao article and the Hand Book of Chemistry and Physics list 
numerous examples of materials fabricated according to applicants' teaching 
which do not fall within the scope of the allowed claims but do fall within the 
scope of the non-allowed claims. 



What the Examiner " seems to be obsessed with is the thought 
of ftransition metal oxides] which won't work to produce the 
intended result. Applicants have enabled those of skill in the 
art to see that this is a real possibility which is commendable 
frankness in a disclosure " In re Angstadt, Supra. (Emphasis 
Added) 



The examiner has not commented on applicants citation of In re Ang stadt 
in support of their position which has been presented as bolded and underlined 
above. The examiner seams to be of the view that the first paragraph of 35 USC 



S.N. 08/479,810 



53 



Docket YO987-074BZ 



112 requires absolute certainty. As stated in applicants' prior response dated 
8-2-99 according to In re Angstadt 190 USPQ 214, 218 in an unpredictable art, 
§1 1 2 does not require disclosure of a test with every species covered by a claim. 
In the office action the examiner has not responded nor rebutted applicants' 
argument. 

As stated by applicants in the response dated 8-2-99 according to In re 
Angstadt all that is necessary is that the experimentation required to determine 
which combinations have the desired result (i.e. Tc greater than 26 Q K) can be 
produced without undue experimentation and would not "require ingenuity 
beyond that to be expected of one of ordinary skill in the art". 190 USPQ, 214, 
218 in re Field v. Connover 170 USPQ, 276, 279 (1971). Applicants have 
provided extensive evidence that metal oxides can be made according to 
applicants' teaching without undue experimentation and without requiring 
"ingenuity beyond that to be expected of one of ordinary skill in the art". In the 
office action, the examiner has not responded to nor rebutted applicants' 
arguments. 

The examiner further states: 

The "amount of guidance or direction" refers to that information in 
the application, as originally filed, that teaches exactly how to make 



S.N. 08/479,810 



54 



Docket YO987-074BZ 



or use the invention. The more that is known in the prior art about 
the nature of the invention, how to make, and how to use the 
invention, and the more predictable the art is, the less information 
needs to be explicitly stated in the specification. In contrast, if little 
is known in the prior art about the nature of the invention and the 
art is unpredictable, the specification would need more detail as to 
how to make and use the invention in order to be enabling. See 
O'Reilly v. Morse, 56 US (1 5 How.) 62, 1 1 1 -1 1 3 (1 853). 

Applicants note as stated above, prior to applicants' discovery it was well 
known how to make metal oxides useful to practice applicants' invention. What 
was not known was that metal oxides where superconductors above 26°K. The 
MPEP SECTION— 2164.01(a) entitled "Undue Experimentation Factors" citing 
In re Wands 8USPQ2d 1400 states: 

There are many factors to be considered when determining 
whether there is sufficient evidence to support a determination that 
a disclosure does not satisfy the enablement requirement and 
whether any necessary experimentation is "undue." These factors 
include, but are not limited to: 

(A) The breadth of the claims; 

(B) The nature of the invention; 

(C) The state of the prior art; 



S.N. 08/479,810 



55 



Docket YO987-074BZ 



(D) The level of one of ordinary skill; 

(E) The level of predictability in the art; 

(F) The amount of direction provided by the inventor; 

(G) The existence of working examples; and 

(H) The quantity of experimentation needed to make or use the 
invention based on the content of the disclosure. 

The examiner has not applied these factors. Applicants have shown that: 

(A) Their claims are as broad as their discovery which is that metal 
oxides can carry a superconductive current for a Tc > 26- K; 

(B) The invention is easily practiced by a person of skill in the art; 

(C) The state of the prior art clearly shows how to fabricate 
materials which can be used to practice applicants' invention; 

(D) The level of one of ordinary skill in the are is not high since as 
sated in the Poole et al. book materials to practice applicants 
invention are easily made and all that is needed to practice 
applicants' claimed invention is to cool the material below the Tc 
and to provide a current which will be a superconductive current. It 
has been well known how to do this since the discovery of 
superconductivity in 1911. (See page 1 of "Superconductivity" by 
M. Von Laue) 

(E) There is no unpredictability in how to make materials to practice 
applicants' invention and there is no unpredictability in how to 
practice applicants' invention. The only unpredictability is which 



S.N. 08/479,810 



56 



Docket YO987-074BZ 



particular metal oxide will have a Tc >26°K. As extensively shown 
by applicants this is a matter of routine experimentation. The 
examiner has not denied not rebutted this; 

(F) Applicants have provided extensive direction to make materials 
to practice their claimed invention. They have included all known 
principles of ceramic science. Also, as stated in the Poole book 
these materials are easily made. The examiner has not denied nor 
rebutted this. The examiner has made no comment on the amount 
of direction provided by the applicants; 

(G) Applicants have provided sufficient working examples and 
examples of metal oxides that have Tc > 26°K for a person of skill 
in the art to fabricate materials that can be used to practice 
applicants' claimed invention; and 

(H) Applicants have shown that the quantity of experimentation 
needed to make samples to use the invention based on the content 
of the disclosure in the specification is routine experimentation. 

The MPEP SECTION— 2164.01(a) further states: 

The fact that experimentation may be complex does not 
necessarily make it undue, if the art typically engages in such 
experimentation. In re Certain Limited-Charge Cell Culture 
Microcarriers, 221 USPQ 1 165, 1 174 (Int'l Trade Comm'n 1983), 
aff'd. sub nom., Massachusetts Institute of Technology v. A.B. 
Fortia, 774 F.2d 1 104, 227 USPQ 428 (Fed. Cir. 1985). 



S.N. 08/479,810 



57 



Docket YO987-074BZ 



See also In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The 
test of enablement is not whether any experimentation is 
necessary, but whether, if experimentation is necessary, it is 
undue. In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 
(CCPA1976). MPEP2164 

There is no statement by the examiner nor any evidence in the record that 
the experimentation to make materials to practice applicants' claimed invention is 
complex or undue. But it is clear that even if the experimentation was complex 
to make samples to practice applicants' claimed invention it would not render 
applicants' claims not enabled since the art typically engages in the type of 
experimentation taught by applicants to make samples to practice their claimed 
invention. 

The facts of In re Wands have similarity to the facts of the present 
application under appeal. The Court at 8 USPQ2d 1406 held that: 

The nature of monoclonal antibody technology is that it involves 
screening hybridomas to determine which ones secrete antibody 
with desired characteristics. Practitioners of this art are prepared 
to screen negative hybridomas in order to find one that makes the 
desired antibody. 

Correspondingly applicants have shown that the nature of high Tc 
technology is that it involves preparing samples to determine which ones have 



S.N. 08/479,810 



58 



Docket YO987-074BZ 



Tc > 26°K - the desired characteristic. Practitioners of this art are prepared to 
prepare samples in order to find one that have the desired Tc. Nothing more is 
required under In re Wands. 

Applicants have shown that their specification is enabling with respect to 
the claims at issue and that there is considerable direction and guidance in the 
specification; with respect to applicants' claimed invention there was a high level 
of skill in the art to fabricate samples at the time the application was filed; and all 
of the methods needed to practice the invention were well known. Thus 
applicants have shown that after considering all the factors related to the 
enablement issue, it would not require undue experimentation to obtain the 
materials needed to practice the claimed invention. The examiner has not 
denied nor rebutted this. 

A conclusion of lack of enablement means that, based on the evidence 
regarding each of the above factors, the specification, at the time the application 
was filed, would not have taught one skilled in the art how to make and/or use 
the full scope of the claimed invention without undue experimentation. In re 
Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). It is the 
examiner's burden to show this and the examiner has clearly not done so. 



S.N. 08/479,810 



59 



Docket YO987-074BZ 



The breadth of the claims was a factor considered in Amgen v. Chugai 
Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir.), cert, denied, 
502 U.S. 856 (1991 ). In the Amgen case, the patent claims were directed to a 
purified DNA sequence encoding polypeptides which are analogs of 
erythropoietin (EPO). The Court stated that: 

Amgen has not enabled preparation of DNA sequences sufficient 
to support its all-encompassing claims. . . . [D]espite extensive 
statements in the specification concerning all the analogs of the 
EPO gene that can be made, there is little enabling disclosure of 
particular analogs and how to make them. Details for preparing 
only a few EPO analog genes are disclosed. . . . This disclosure 
might well justify a generic claim encompassing these and similar 
analogs, but it represents inadequate support for Amgen's desire to 
claim all EPO gene analogs. There may be many other genetic 
sequences that code for EPO-type products. Amgen has told how 
to make and use only a few of them and is therefore not entitled to 
claim all of them. 927 F.2d at 1213-14, 18 USPQ2d at 1027. 

In the present application applicants have provided a teaching (and proof 
thereof) of how to make all known high Tc materials useful to practice their 
claimed invention. As the Amgen court states this type of disclosure justifies a 
generic claim. As the In re Angstadt court states the disclosure does not have to 
provide examples of all species within applicants claims where it is within the skill 
of the art to make them. There is no evidence to the contrary. 



S.N. 08/479,810 



60 



Docket YO987-074BZ 



Even though applicants' claims do not cover inoperable species, In re 
Angstadt clearly permits a claim to include inoperable species where to 
determine which species works does not require undue experimentation. The 
examiner has not presented any substantial evidence that undue 
experimentation is required to practice applicants' claim. This is the examiner's 
burden. On the other hand, applicants have presented five affidavits of experts, 
the book of Poole and the article of Rao all of which agree that once a person of 
skill in the art knows of applicants' invention, it is straight forward to fabricate 
other sample. Also, in response to the examiner's inquiry, "if the applicants 
could not show superconductivity with a T c > 26°K for certain compositions falling 
within the scope of the present claims, it is unclear how someone else skilled in 
the art would have been enabled to do so at the time the invention was made", it 
is clear that a person of skill in the art would have been enabled by routine ' 
experimentation following applicants teaching to determine other samples with T c 
> 26°K. This is all that is required, and there is no evidence in the record to the 
contrary. 

In the prosecution, applicants have noted that the examiner has taken a 
contrary view to applicants' five affiants each of whom has qualified himself as 
an expert in the field of ceramic technology and in superconductivity. Also, the 
examiners' argument for nonenablement is primarily based on the examiner 

S.N. 08/479,810 61 Docket YO987-074BZ 



"deeming" the rejected claims nonenabled based in the unsupported assertion 
that the art of high Tc is unpredictable and not theoretically understood, that is, 
the examiner's opinion or belief that the claims are not enabled . In the 
prosecution, applicants requested the examiner to submit an affidavit to qualify 
himself as an expert to conslusorily "deem" the rejected claims nonenabled and 
to substantiate the unsupported assertions. The examiner has not submitted an 
affidavit. 37 CFR 104(d)(2) states "[w]hen a rejection in an application is based 
on facts within the personal knowledge of an employee of the office ... the 
reference must be supported when called for by the applicants, by an affidavit of 
such employee." (Emphasis Added) 

The examiner incorrectly states "The 'amount of guidance or direction' 
refers to that information in the application, as originally filed, that teaches 
exactly how to make or use the invention." The application only has to provide 
enough guidance and direction for a person of skill in the art to practice the 
claimed invention. Applicants do not have to include what is know to a person of 
skill in the art at the time the application was filed. Applicants have provided 
extensive evidence that persons of skill in that art at the time the application was 
filed knew how to make metal oxides useful to practice applicants' claimed 
invention. There is no evidence to the contrary in the record. There is no 
evidence in the record that the art of high Tc superconductivity is sufficiently 
unpredictable that a person of skill in the art cannot practice applicants' claimed 



S.N. 08/479,810 



62 



Docket YO987-074BZ 



invention with applicants' teaching and what is known in the art. The only thing 
which was not known is that metal oxides have a Tc greater than 26 K - this is 
applicants' s discovery. How to make these materials was well known prior to 
applicants' discovery. This art is not so unpredictable that more than applicants' 
teaching is needed to practice applicants' claimed invention. 

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, 111, 137, 144-145, 149-152, 156-161, 163, 165-168, 
1 70-1 71 , 1 73, 1 75-1 83, 1 87, 1 89, 1 99-201 , 205-21 0, 21 2-21 6 and 224 have 
been rejected under 35 U.S.C. § 1 12, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject matter which 
applicant regards as the invention. In view of the changes to the claims and the 
remarks herein withdrawal of this rejection is respectfully requested. 

The examiner states as to "claim 1 , lines 2 and 3., it is unclear with the 
term "rare earth-like element" In applicants' response dated 8-2-99, in particular 
for example at page 100, applicants show by substantial evidence that it is 
patent office practice to issue claims having terminology which is a combination 
of "-like" and "-type". Applicants explain the meaning of "rare-earth-like" at page 
7, lines 8-25, "[a] rare earth-like element (sometimes termed a near rare earth 
element) is one whose properties make it essentially a rare earth element 
Thus applicants disagree with the examiner that the terms "type" and "like" are 



S.N. 08/479,810 



63 



Docket YO987-074BZ 



unclear. In addition in the amendments incorporated by reference below from 
copending divisional application 08/303,561 filed on 09/09/94, which cite 
numerous non patent literature from prior to the earliest filing date of the present 
application. 

Applicants disagree that "Claim 17 is unclear with the term "rare earth-like 
element" for the reasons given above. 

The examiner states "Claim 19 is unclear with the term 'perovskite-like 
superconducting phase'". Applicants respectfully disagree. Applicant's published 
their publication in Z. Phys. B - Condensed Matter 64 (1986) 189-193 (Sept. 
1986) which is incorporated by reference in the present specification at page 6, 
lines 7-10. (This article is referred to here in as a applicants' article.) Applicants 
filed the first application in the lineage for the present application on May 22, 
1987. To the extent that the terminology "perovskite-type", "perovskite-like", etc. 
were not know prior to applicants discovery, it was placed into the vernacular of 
persons of skill in the art in the approximately eight months between the 
publication of applicants' article the earliest filing date of the present application . 
Applicants' article was published in a highly regarded physics journal. The 
referees for the article apparently understood what applicants meant by this 
terminology. The applicants were awarded a Nobel Prize based on this article. 
The Nobel committee apparently understood what applicants were referring to. 



S.N. 08/479,810 



64 



Docket YO987-074BZ 



Applicants 1 article at page 189, fourth line of the abstract, refers to "a 
perovskite-like mixed-valent copper compound"; at page 189, lines 14-15 of the 
right column, refers to "perovskite-type or related metallic oxides"; at page 192, 
line 12 of the left column, refers to "layer-like phases"; and the 8th line of the 
conclusion at page 192 refers to "a metallic perovskite-type layer-like structure". 
As stated in the brief at pages 106-107 the book by Poole uses this terminology 
attributing it to applicants article. Chapter VI, Section D, of the Poole Book is 
entitled "Pervoskite-type Superconducting Structures" pp. 78-81 . It is thus clear 
that the objected to terminology is understood by persons of skill in the art as of 
the earliest filing date of the present application. Moreover, as shown in the prior 
response 102 issued United States Patents uses the terminology "pervoskite 
like", two of which use this term in the claims. It is thus accepted USPTO 
practice to accept this term as definite. Also, as shown in the brief there are 
many issued patents using combinations of "-type" and "-like" with claims. Thus 
it is accepted USPTO practice to accept such terminology as definite. 

Moreover, in applicants' response dated 8-2-99, applicants extensively 
discuss the terminology of the present application which incorporates by 
reference applicants' article. 

Moreover, the affidavits of Duncombe and Shaw refer to a number of 
articles and texts on the general principles of ceramic science. One of these 



S.N. 08/479,810 



65 



Docket YO987-074BZ 



texts is "Structures, Properties and Preparation of Peroskite-type Compounds", 
F. S. Galasso (1969). This book was published about eighteen years before 
applicants' filing date. A copy of the complete text of this book was provided with 
the affidavits. The examiner does not comment on why a person of skill in the 
art would not know what a perovskite-type compound was in view of this book 
and the teaching of applicants' article. 

The examiner further states: 

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 La2Cu0 4 in which the 



S.N. 08/479,810 



66 



Docket YO987-074BZ 



lanthanum - which belongs to the III B group of elements - is in part 
substituted by one member of tile neighboring MA group of 
elements, viz. by one of the alkaline earth metals (or by a 
combination of the members of the IIA 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 -xBaxCu04- 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 
SrxNiO 4-y' Still another example is cerium nickel oxide wherein 
the cerium is partially substituted by calcium, resulting in Ce2-x 
Ca x Ni0 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 La 2 Cu0 4 compound because it is in the 
Ba-La-Cu-0 system that many laboratory tests have been 
conducted." 



S.N. 08/479,810 



67 



Docket YO987-074BZ 



Moreover the book "Copper Oxide Superconductors" by Poole et al., cited 
above, has at page 122 a section entitled "Substitutions" ( See Attachment G of 
applicants' response dated 1 1-28-97) 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: 

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. 

This is clear for the same reason as given above. 

The examiner further states: 

Claim 27 has the language "said composition being a 
substituted Cu-oxide including a superconducting phase having 



S.N. 08/479,810 



68 



Docket YO987-074BZ 



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. 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 TMx04.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." CI aim 27 
has been amended to recite "structurally substantially similar" by which 
applicants "substantially close". 

The Poole et al. book in Chapter VI on "Crystallographic Structures" state 
states page 73 "[m]uch has been said about the oxide superconductor 



S.N. 08/479,810 



69 



Docket YO987-074BZ 



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 of applicants response dated Nov. 28, 1997.) 

The examiner further states claim 28 is unclear with the language "rare 
earth-like". Applicants respectfully disagree for the reasons given above. 

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

The examiner further states: 

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., 



S.N. 08/479,810 



70 



Docket YO987-074BZ 



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". 

Applicants respectfully disagree. The language clearly means that the 
alkaline earth is larger than the Cu. Any one of the measurements of size listed 
by the examiner would be means to make such a determination. This 
terminology is understood by a person of skill in the art. At page 78 of the book 
by Poole et al. there is a section entitled "Atomic Sizes". Pages 79-80 of Poole 
et al. has a table of ionic radii of selected elements. At page 78 Poole et al. 
states "Table VI-2 gives the ionic radii of the positively charged ions of various 
elements of the periodic table. These radii are useful for estimating changes in 
lattice constant when ionic substitutions are made in existing structures". (See 
Attachment I of applicants' response dated Nov. 28, 1997). It is clear therefore, 
that atomically large means that the alkaline earth is larger than Cu. Copper has 
two ionic forms each with a different radius. The alkaline earths also have 
several ionic form and different radii. 

The examiner further states: 

Claim 33 is unclear as to whether the alkaline earth element is 
concentrated "near" to the copper oxide concentration or 



S.N. 08/479,810 



71 



Docket YO987-074BZ 



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. 

Applicants respectfully submit that the claim is clearly worded. The claim 
recites "the composition being comprised of a copper oxide doped with an 
alkaline earth element where the concentration of said alkaline earth element is 
near to the concentration of said alkaline earth element where the 
superconducting copper oxide phase in said composition undergoes an 
orthorhombic to tetragonal structural phase transition." That is the claim recites 
copper oxide doped with alkaline earth - the concentration of the alkaline earth 
has a value near to that concentration which results in an orthorhombic to 
tetragonal phase transition. This is what the language of the claim says. Since it 
is within the skill of the art using routine experimentation to determine how much 
alkaline earth is need to be near to the phase transition, it is not necessary fo r 
the claim to recite a specific value. 

The examiner further states: 

Claim 33 is unclear as to the "superconducting copper oxide 
phase" changes into the tetragonal structural phase or whether 



S.N. 08/479,810 



72 



Docket YO987-074BZ 



that "superconducting copper oxide phase" is found in a 
composition at the boundary between orthorhombic and 
tetragonal phases. 

Applicant submit that the language of the claim is clear. Applicants do not 
understand the Examiners comments. There is no boundary referred to in 
applicants claim. The Poole et al. book in Chapter 6 entitled "Crystallographic 
Structures" in Section B thereof entitled "Peovskites" describes various crystal 
structures: cubic form, tetragonal form, orthorhombic form, alternate tetragonal 
form . In subsection 4 on page 85 entitled Phase Transitions states "[t]he 
compounds (Lai. x M x )Cu0 4 with M=Sr and Br are orthorhombic at low 
temperatures and low M content, and tetragonal otherwise." (See Attachment I 
of applicants' response dated Nov. 28, 1997) Sr and Br are alkaline earth 
elements. (See the definition of alkaline-earth metals from Hawley's Condensed 
Chemical Dictionary p 36 in Attachment J of applicants' response dated Nov. 28, 
1997). 

The examiner further states "Claim 36 is unclear with the language 
'substituted copper oxide'." Applicants respectfully disagree for the reasons 
given above. 



S.N. 08/479,810 



73 



Docket YO987-074BZ 



The examiner further states: 

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 
(8283), which show that rare earth and III B metals (La, Ce, 
Lug) will superconduct, as well as a 1 1 A metal (BA). 

Claim 40 has been amended in applicants' response of Nov. 28, 1997 to 
recite "none of which is itself superconducting at a temperature in excess of 
26°K. " 



The examiner further states: 

Claim 42 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 is generic, specific examples of which are 
given in applicants specification". See applicants' specification: 



S.N. 08/479,810 



74 



Docket YO987-074BZ 



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 
of applicants' response dated Nov. 28, 1997 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. 



S.N. 08/479,810 



75 



Docket YO987-074BZ 



The examiner further states: 

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. 

Claim 55 has been amended in applicants' response dated Nov. 28, 1997 
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 58 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 



S.N. 08/479,810 



76 



Docket YO987-074BZ 



"layered-type" or "layer-like" are understood to a person of skill in the art". ( See 
Attachment of applicants' response dated Nov. 28, 1997.) 

The examiner further states: 

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

This is a term commonly used in the art. Attachment M of applicants' 
response dated Nov. 28, 1997 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 64 is indefinite, i. The term "mixed 
copper oxide" is unclear as to whether metals other than copper must be 
present." Attachment N of applicants' response dated November 28, 1 997 is the 

S.N. 08/479,810 77 Docket YO987-074BZ 



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 of applicants' response dated November 28, 1997 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 of 
applicants' response dated November 28, 1997 there is a copy of pages 75-76 of 
the book 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, 



S.N. 08/479,810 



78 



Docket YO987-074BZ 



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 
occupying 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. 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 of applicants' response dated November 28, 1997 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 



S.N. 08/479,810 



79 



Docket YO987-074BZ 



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. 

As to Claim 72 applicants disagree that the term "rare earth-like element" 
is unclear 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. 

As to Claim 80 applicants disagree that the term "perovskite-like" is 
unclear for the reasons given above. 

As to Claim 86 applicants disagree that the term "rare earth-like" element 
is unclear for the reasons given above. 

The examiner states: 

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". 

S.N. 08/479,81 0 80 Docket YO987-074BZ 



Applicants disagree. 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. 

For the reasons given above applicants disagree with the examiner that 
"Claim 94 is unclear with the term 'layer-like'." 

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 1 ." 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. 

The examiner further states: 

Claim 96 has the language "the superconductive composition 
consisting essentially of a copper-oxide compound having a 
layertype perovskite-like crystal structure"'. 

IV. The terms "type" and "like" are unclear. 

V. That language also is unclear as to whether other elements 
must be present as well. 



S.N. 08/479,810 



81 



Docket YO987-074BZ 



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 terminology 
"consisting essentially of" has been changed to "comprising". 

The Examiner further states " Claim 1 03 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. 

The examiner states "Claim 111, last line, is unclear with the term 
"superconduting". This has been corrected. 

In claim 137, the language "comprising forming a composition including..." 
has been corrected. 

In claim 144, the terminology "rare earth-like" is not indefinite for the 
reasons given above. 

In claim 149, the terminology "layer-type perovskite-like" is not indefinite 
for the reasons given above. 



S.N. 08/479,810 



82 



Docket YO987-074BZ 



In claim 156, the terminology "rare earth-like" and "layertype 
perovskite-like" is not indefinite for the reasons given above. 

In claim 163, the language "comprising the steps of" has been corrected. 

In claim 165, the terminology "layer-type perovskite-like" is not indefinite 
for the reasons given above. 

In claim 166, the terminology "layer-type perovskite-like" is not indefinite 
for the reasons given above. 

In claim 170, the terminology "layer-type perovskite-like" is not indefinite 
for the reasons given above. 

In claim 171 , the terminology "layer-type perovskite-like" is not indefinite 
for the reasons given above 

In claim 175, the terminology "layer-type perovskite-like" is not indefinite 
for the reasons given above. 

In claim 176, the terminology "layer-typeperovskite-like" is not indefinite 
for the reasons given above. 



S.N. 08/479,810 



83 



Docket YO987-074BZ 



In claim 180, the terminology "layer-type perovskite-like" is not indefinite 
for the reasons given above. 

In claim 181 , the terminology "layer-type perovskite-like" is not indefinite 
for the reasons given above. 

In claim 182, 183 and 187, the terminology "An apparatus comprising 
providing" or "An apparatus comprising flowing" has been corrected. 

In each of claims 167, 168, 173, 175, 177-181, 199-201, 205, 210 and 
213-216 comments the Markush language has been modified to address the 
examiner's. 

The examiner further states: 

Applicants' arguments filed August 5, 1999, May 14, 1998, May 
1, 1998, and December 2, 1997, paper nos. 25, 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. 



S.N. 08/479,810 



84 



Docket YO987-074BZ 



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

The applicants point to Attachments A-D, L, and M with 
LEXISTM 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. 

The examiner gives no reason why here there terminology using "type" 
and "like" are unclear when applicants have clearly shown that these terms are 
used and understood by persons of skill in the art. Also, applicants have shown 
that it is standard patent office practice to issue claims having terms which are 
combinations of "type" and "like". 



S.N. 08/479,810 



85 



Docket YO987-074BZ 



The examiner further states: 

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 --. 

In applicants' prior response, applicants referred to several attachments E 
and F from different previously submitted responses. The examiner has not 
identified which attachments E and F are being referred to by the examiner. 

Applicants believe that the examiner is referring to the reference to 
Attachments E and F referred to at page 97 of applicants response dated 8-2-99 
where applicants state: 

Attachment E of Applicants' response dated November 28, 1997 of 
co-pending application 08/303,561 which is incorporated herein by 
reference is a copy of the first page of Chapter 2 of the book 



S.N. 08/479,810 



86 



Docket YO987-074BZ 



"Perovskites and High Tc Superconductors" by F. S. Galasso, 
Gordon and Breach Scientific Publishers, 1 990. Chapter 2 is 
entitled "Structure of Perovskite-type Compounds". Attachment F 
of Applicants' response dated November 28, 1997 of co-pending 
application 08/303,561 which is incorporated herein by reference 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" (insert 
added). 

Not withstanding that these Attachments E and F were published after 
applicants' filing data, the examiner points to nothing in either of these 
attachments to support his statement that the "therefore [do] not reflect on the 
knowledge of one skilled in the art at the time the invention was made." The 
facts are to the contrary. It is not relevant that Attachments E and F were 
published after applicants' filing data when it is clear from them that the terms 



S.N. 08/479,810 



87 



Docket YO987-074BZ 



were understood by persons of skill in the art at the time of th e filing of the 
application. 

Applicant's published their publication in Z. Phys. B - Condensed Matter 
64 (1986) 189-193 (Sept. 1986) which is incorporated by reference in the 
present specification at page 6, lines 7-10. (This article is referred to here in as 
a applicants' article.) Applicants filed the first application in the lineage for the 
present application on May 22, 1 987. To the extent that the terminology 
"perovskite-tpye", "perovskite-like", etc. were not know prior to applicants 
discovery, it was placed into the vernacular of persons of skill in the art in the 
approximately eight months between the publication of applicants' article the 
earliest filing date of the present application . Applicants' article was published in 
a highly regarded physics journal. The referees for the article apparently 
understood what applicants meant by this terminology. The applicants were 
awarded a Nobel Prize based on this article. The Nobel committee apparently 
understood what applicants were referring to. Applicants' article at page 189, 
fourth line of the abstract, refers to "a perovskite-like mixed-valent copper 
compound"; at page 189, lines 14-15 of the right column, refers to 
"perovskite-type or related metallic oxides"; at page 192, line 12 of the left 
column, refers to "layer-like phases"; and the 8th line of the conclusion at page 
192 refers to "a metallic perovskite-type layer-like structure". 



S.N. 08/479,810 



88 



Docket YO987-074BZ 



Moreover, the affidavits of Duncombe and Shaw refer to a number of 
articles and texts on the general principles of ceramic science. One of these 
texts is "Structures, Properties and Preparation of Peroskite-type Compounds", 
F. S. Galasso (1969). This book was published about eighteen years before 
applicants' filing date. A copy of the complete text of this book was provided with 
the affidavits. The examiner does not comment on why a person of skill in the 
art would not know what a perovskite-type compound was in view of this book 
and the teaching of applicants' article. 

The examiner further states: 

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 0, 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? 



S.N. 08/479,810 



89 



Docket YO987-074BZ 



At page 16 of applicants response data 8-2-99 applicants state : 

Attachment K of Applicants' response in co-pending application 
serial number 08/303,561 dated December 27, 1998, page 1 , 
is a copy of the front cover of Zeitschrift Fur Physik B 
Condensed Matter Vol. 64 which contains Applicants' article ( 
pp 189-193) which is referred to and incorporated by reference 
at page 6, lines 6-10, of Applicant's specification. 

and at page 99 applicants state: 

Attachment G of Applicants' response dated December 27, 
1997 of co-pending divisional application 08/303,561 which is 
incorporated herein by reference, shows that there are 31 
issued US patents having the term "carbon like" in the claims. 

There is no attachment O in applicants response dated 8-2-99. 
In applicants response dated 1 1-27-97 at page 22 applicants state: 



S.N. 08/479,810 



90 



Docket YO987-074BZ 



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 0 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. 

It is clear that the terminology "mixed-copper-oxide" is well know in the art 
prior to the date of applicants invention. In addition to the substantial evidenc e 
presented by applicants already to support this position applicants provide 
Attachment D herein. Attachment D is Section 6.7 (ps 342-351) of "New 
Directions In Solid State Chemistry" C. Rao et al., Cambridge University Press 
(1986) which is entitled "Mixed-valence compounds" 



S.N. 08/479,810 



91 



Docket YO987-074BZ 



Applicants respectfully disagree that the term "substituted and doped are 
indefinite". For example the specification refers to: La2Cu0 4y doped with Sn 2x , 
Ca 2x and Ba 2x at page 25, lines 6-18 and La 2 Cu0 4 -y with Sn 2x substitution at page 
13, line 17. In the priority document, for example in the abstract, RE is a rare 
earth element, TM is a transition metal and O is oxygen. The priority document 
further states at Col. 2, lines 22-25 "the lanthanum which belongs to the II B 
group of elements is in part substituted by one member of the neighboring MA 
group of elements...". Group IIA elements are the alkaline earth elements. 

Similar language appears in the present specification at page 12 lines 6-8, 
"the lanthanum which belongs to the II B group of elements is in part substituted 
by one member of the neighboring IIA group of elements 

It is noted that at column 2, lines 13-19 the priority document states that "it 
is a characteristic of the present invention that in the compounds in question that 
the RE portion is partially substituted by one member of the alkaline earth group 
of metals, or by a combination of the members of this alkaline earth group and 
that the oxygen content is at a deficit." It is further noted that at column 2, lines 
20-23 it states that "for example, one such compound that meets the description 
given by this lanthanum copper oxide La 2 Cu0 4 in which the lanthanum which 
belongs to the HI B group of the elements is in part substituted by one member of 
the neighboring III A group of elements." 

S.N. 08/479,810 92 Docket YO987-074BZ 



The priority document further states at Col. 2, lines 22-25 "the lanthanum 
which belongs to the II B group of elements is in part substituted by one member 
of the neighboring HA group of elements...". 

It is noted that in the priority document, claim 2 refers to lanthanum as the 
rare earth; claim 3 refers to cerium as the rare earth; claim 5 refers to barium as 
a partial substitute for the rare earth; claim 6 refers to calcium as a partial 
substitute for the rare earth; claim 7 refers to strontium as a partial substitute for 
the rare earth and claim 9 refers to neodymium as the rare earth. 

Similar language appears in the present specification at page 12 lines 6-8, 
"the lanthanum which belongs to the II B group of elements is in part substituted 
by one member of the neighboring MA group of elements 

It is further noted that at column 2, lines 20-23 it states that "for example, 
one such compound that meets the description given by this lanthanum copper 
oxide La 2 Cu0 4 in which the lanthanum which belongs to the III B group of the 
elements is in part substituted by one member of the neighboring III A group of 
elements." 



S.N. 08/479,810 



93 



Docket YO987-074BZ 



It is noted that in the priority document, claim 2 refers to lanthanum as the 
rare earth; claim 3 refers to cerium as the rare earth; claim 5 refers to barium as 
a partial substitute for the rare earth; claim 6 refers to calcium as a partial 
substitute for the rare earth; claim 7 refers to strontium as a partial substitute for 
the rare earth and claim 9 refers to neodymium as the rare earth. Clearly, the 
priority document uses barium, calcium and strontium. 

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 11 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: 

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 La 2 Cu0 4 in which the 
lanthanum - which belongs to the III B group of elements - is in part 



S.N. 08/479,810 



94 



Docket YO987-074BZ 



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 IIA 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 
BaxCuCVy, 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^xSrxNiCUy 
Still another example is cerium nickel oxide wherein the cerium is 
partially substituted by calcium, resulting in Ce 2 -xCaxNi0 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 of Applicants response dated November 28, 1997) which states "[a]n 

S.N. 08/479,81 0 95 Docket YO987-074BZ 



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. 

Applicants respectfully submit that the claims are clearly worded and are 
definite. The claim recites "the composition being comprised of a copper oxide 
doped with an alkaline earth element where the concentration of said alkaline 
earth element is near to the concentration of said alkaline earth element where 
the superconducting copper oxide phase in said composition undergoes an 
orthorhombic to tetragonal structural phase transition." That is the claim recites 
copper oxide doped with alkaline earth - the concentration of the alkaline earth 
has a value near to that concentration which results in an orthorhombic to 
tetragonal phase transition. This is what the language of the claim says. Since 
it is within the skill of the art using routine experimentation to determine how 
much alkaline earth is need to be near to the phase transition, it is not necessary 
for the claim to recite a specific value. 



S.N. 08/479,810 



96 



Docket YO987-074BZ 



The examiner further states: 

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. 

Applicants maintain, as demonstrated by the extensive evidence 
submitted, that the terminology is definite since it is the language of the art and 
persons of skill in the art know what this terminology means. Thus they are 
acceptable terms for patent practice. 

The examiner further states with out identifying a claim: 

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. 



S.N. 08/479,810 



97 



Docket YO987-074BZ 



The examiner apparently is referring to claim 27 and as stated above 
Claim 27 has been amended to recite "structurally substantially similar" by which 
applicants "substantially close". 

The examiner further states with out identifying a claim: 

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. 

The examiner apparently is referring to claim 30. Applicants respectfully 
disagree. The language clearly means that the alkaline earth is larger than the 
Cu. Any one of the measurements of size mentioned by the examiner would be 
means to make such a determination. This terminology is understood by a 
person of skill in the art. At page 78 of the book by Poole et al. there is a 
section entitled "Atomic Sizes". Pages 79-80 of Poole et al. has a table of ionic 
radii of selected elements . At page 78 Poole et al. states "Table VI-2 gives the 
ionic radii of the positively charged ions of various elements of the periodic table. 
These radii are useful for estimating changes in lattice constant when ionic 
substitutions are made in existing structures". (See Attachment I of applicants' 
response dated Nov. 28, 1997). It is clear therefore, that atomically large 
means that the alkaline earth is larger than Cu. Copper has two ionic forms each 



S.N. 08/479,810 



98 



Docket YO987-074BZ 



with a different radius. The alkaline earths also have several ionic form and 
different radii. 

The examiner further states: 

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. 

Applicants respectfully submit that the claim is clearly worded. The claim 
recites "the composition being comprised of a copper oxide doped with an 
alkaline earth element where the concentration of said alkaline earth element is 
near to the concentration of said alkaline earth element where the 
superconducting copper oxide phase in said composition undergoes an 
orthorhombic to tetragonal structural phase transition." That is the claim recites 
copper oxide doped with alkaline earth - the concentration of the alkaline earth 



S.N. 08/479,810 



99 



Docket YO987-074BZ 



has a value near to that concentration which results in an orthorhombic to 
tetragonal phase transition. This is what the language of the claim says. Since it 
is within the skill of the art using routine experimentation to determine how much 
alkaline earth is need to be near to the phase transition, it is not necessary fo r 
the claim to recite a specific value. 

The examiner further states: 

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". 

Applicant submit that the language of the claim is clear. Applicants do not 
understand the Examiners comments. There is no boundary referred to in 
applicants claim. The Poole et al. book in Chapter 6 entitled "Crystallographic 
Structures" in Section B thereof entitled "Peovskites" describes various crystal 
structures: cubic form, tetragonal form, orthorhombic form , alternate tetragonal 



S.N. 08/479,810 



100 



Docket YO987-074BZ 



form. In subsection 4 on page 85 entitled Phase Transitions states "[t]he 
compounds (Lai. x M x )Cu04 with M=Sr and Br are orthorhombic at low 
temperatures and low M content, and tetragonal otherwise." (See Attachment I 
of applicants' response dated Nov. 28, 1997) Sr and Br are alkaline earth 
elements. (See the definition of alkaline-earth metals from Hawley's Condensed 
Chemical Dictionary p 36 in Attachment J of applicants' response dated Nov. 28, 
1997). 

The examiner further states: 

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. 

As stated above this is a term of art well understood by a person of skill in 
the art. 



S.N. 08/479,810 



101 



Docket YO987-074BZ 



The examiner further states: 

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". 

The term "element " is clear, it is a "chemical element". There i s no 
indefiniteness about this term. 

The examiner further states apparently referring to claim 64: 

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

That Attachment P of applicants response data Nov. 28, 1997 was 
published after applicants filing date is not relevant since a person of ordinary 



S.N. 08/479,810 



102 



Docket YO987-074BZ 



skill in the art knows what a distorted octahedral crystal structure is. The last 
sentence of section 4 on page 76 of Poole states "This same mec hanism is 
operative in the oxide superconductors." The first paragraph on page 73 states 
"Much has been written about the oxide superconductors compounds being of 
perovskite types, so we will begin with a description of the perovskite structure." 
It is clear that the distorted octahedral environment recited in claim 64 was a wel I 
know property of the perovskite type structure and not newly described in the 
Poole book. 

The examiner further states: 

Further with respect to claim 96, that claim still is unclear as to 
whether the "copper-oxide compound having a layertype 
perovskite-like crystal structure" contains elements other than 
copper and oxygen. It is noted, moreover, that perovskite has the 
general formula AB03 wherein A and B represent metal atoms. 

As stated above the language "copper-oxide compound having a \ 
layer-type perovskite-like crystal structure" is well understood in the art. 
Applicants were awarded the Nobel prize in 1987 based on their article which 
used this terminology. Their article was published about 8 months before their 
patent application was filed and the Poole book acknowledges this and uses this 



S.N. 08/479,810 



103 



Docket YO987-074BZ 



terminology. This is clear evidence that persons of skill in the art understand this 
terminology. 

The examiner further states: 

In view of the foregoing, the above claims have failed to 
patentably distinguish over the applied art. 

No art has been applied in the office action. All of applicants claims are 
clearly definite under 35 USC 112, second paragraph and respectfully request 
the examiner to withdraw the rejection. 

Applicants acknowledge that Claims 113, 114, 123, 124, 134, 135, 140, 
1 85, 1 86, 1 90, 1 91 , 1 97, 220, 221 , 225 and 226 are allowed. 

The Amendments After Final Rejection (submitted on the dates in the list 
below) submitted in the copending divisional application 08/ 303,561 which was 
filed on 9/9/94 are incorporated herein by reference since they relate to the same 
issues under 35 USC 112, first paragraph and second paragraph: 

November 25. 1998 : 
December 10. 1998 : 
December 11. 1998 : 

S.N. 08/479,810 104 Docket YO987-074BZ 



December 15. 1998 (2 submitted) : 

December 15. 1998 : [1 .132 Declaration of James Leonard] 

December 18. 1998 : 

December 22. 1998 : 

December 27. 1998 : 

June 14. 1999 : 

June 15. 1999 (2) : 

June 27. 1999 : 

These amendments provide additional patent and non-patented evidence 
that the terminology using "-like" and "-type" which the examiner finds not 
enabled or indefinite are in fact enabled and definite to persons of ordinary skill 
in the art at the time of applicants filing date. 

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 and any previous 
paper to deposit account 09-0468. 



S.N. 08/479,810 



105 



Docket YO987-074BZ 



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. 

In the event that this amendment does not result in allowance of all such 
claims, the undersigned attorney respectfully requests a telephone interview at 
the Examiner's earliest convenience. 

MPEP 713.01 states in part as follows: 

Where the response to a first complete action includes a request 
for an interview or a telephone consultation to be initiated by the 
examiner, ... the examiner, as soon as he or she has considered 
the effect of the response, should grant such request if it appears 
that the interview or consultation would result in expediting the case 
to a final action. 

S.N. 08/479,810 106 Docket YO987-074BZ 



/ 

/ 




Phone No.: (914) 945-3217 

IBM CORPORATION 
Intellectual Property Law Dept. 
P.O. Box 218 

Yorktown Heights, New York 1 0598 




/ 



S.N. 08/479,810 4©6- Docket Y0987-Q74BZ 



/