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JUL 29 '03 12:03 FR 00- IBM Y0RKT0WN 914 945 4073 TO 917038729600 P. 01/04 



t , Jfel |N THE UNITED STATES PATENT AND TRADEMARK OFFICE 

v. - 

In re Patent Application of Date: July 29, 2003 

Applicants: Bednorzetal. Group Art Unit: 1751 

Serial No.: 08/479,810 Examiner: M. Kopec 

Filed: June 7, 1995 Docket No.: YO987-074B2 

For NEW SUPERCONDUCTIVE COMPOUNDS HAVING HIGH TRANSITION 
' TEMPERATURE, AND METHODS FOR THEIR USE AND PREPARATION 

Commissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 

CERTIFICATE OF FACSIMILE TRANSMISSION 

I herebyjsertrrTthat this paper (3 pages) and Appointment of Associate Power of 
Attc*rrev7l Daqe/ar&fagjnfi fecsirnileiransmitted under Rule 37 CFR 1.61(d) to the 
'B Batent ^J^Sw^^^O^) 872-9600 on July 29, 2003. 





£>r. Daniel P 
Reg. No. 32,053 

REQUEST TO WITHDRAW SUSPENSIO N OF ACTION 
' IN RESPONSE TO APPLICANTS PETITION T O SUSPEND ACTION 
UNDER 37 CFR 1.103 DATED 08/04/2000 

On August 4, 2000 applicants petitioned for suspension of action in the above 
identified application until a decision was rendered by the Board of Patent Appeals and 
Interferences in an appeal in the copending divisional application 08/303,561 filed on 
August 9, 1994 (Divisional Application). The petition to suspend was granted in paper 
29 dated October 6, 2000. Applicants requested the suspension since the issues 
presented in the appeal of the Divisional Application were essentially identical to the 
grounds for rejection in the present application. Applicants, therefore, felt that 
suspension of action in the present application was appropriate until there was a 
decision by the Board of Appeals and Interefences in the Divisional Application since 
suspension would potentially avoid unnecessary prosecution on the present application. 



Serial No.: 08/479.810 - 1 - IBM Docket No. YO987-074BZ 

Received from < 914 945 4073 > at 7/29,03 12:02:24 Daylight Time] 



JUL 29 '03 12=03 FR 00- IBM Y0RKT0LJN 914 945 4073 TO 917038729600 P. 02/04 



Certain factual information (Additional Essential Information) that is primarily in 
the public domain that applicants believe is essential to their arguments in overcoming 
certain rejections of claims, which has been either entered in the present application or 
submitted with the response accompanying the Petition to Suspend Action, has not 
been entered in the Divisional Application. Some of this Additional Essential 
Information was obtained by applicants after the final rejection in the Divisional 
Application and some of this Additional Essential Information was obtained after the 
appeal brief was filed therein. Applicants submitted all of this Additional Essential 
Information in the Divisional Application by amendment after final rejection and with the 
appeal and reply briefs therein. Since applicants argument in the appeal and reply 
briefs of the Divisional Application relies on this Additional Essential Information and 
since the status of entry by the Examiner in the Divisional Application was unclear, the 
Board of Patent Appeals and Interferences remanded the Divisional Application back to 
the Examiner to clarify entry of this Additional Essential Information. Because this 
Additional Essential Information was submitted in the Divisional Application after final 
rejection, the examiner procedurally cannot enter this Additional Essential Information 
in the Divisional Application. 

All of the Additional Essential Information submitted in the Divisional Application 
can be entered in the present application since it is not under final rejection. In fact, 
most of it has already been submitted. Therefore, applicants believe that it would not 
be an effective use of the USPTO's time, in particular the Examiner's time and the 
Board of the Appeals and Interferences' time to go forward with the appeal in the 
Divisional Application without all the addition Essential Information since the same 
issues will be before the examiner and possibly the Board again in the present 
application with all of the Additional Essential Information entered and considered. If 
the Divisional Application is not suspended, the Board of Appeals and Interferences 
could, in the absence of all the Additional Essential Information, render a decision 
inconsistent with the decision of the Examiner in the present application or by the Board 
in an appeal to the Board of Patent Appeals and Interferences in the present 
application which will have entered therein all of the Additional Essential Information. 



Serial No.; 08/479,810 -2- 
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IBM Docket No. YO987-074BZ 



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JUL 29 '03 12=04 FR 00- IBM YDRKTOWN 



914 945 4073 TO 917038729600 P. 03/04 



Thus, concurrent herewith, applicants are submitting a Petition to Suspend 
Action Under 37 CFR 1.103 in the Divisional Application for the reasons given herein 
and applicants are requesting herein that the suspension of action in the present 
application be withdrawn. This will potentially avoid an unnecessary decision by the 
Board of Appeals and Interferences in the Divisional Application since all the issues 
may be resolved in the present application or the issues may be substantially simplified 
for appeal. 

Suspension of action in the Divisional Application so that the prosecution of the 
present application can go forward with all of the Additional Essential Information 
considered and of record will either result in allowance of the claims herein or if 
applicants choose to appeal any unallowed claims that appeal will present to the Board 
of Patent Appeal and Interferences a complete factual record upon which to render a 
decision. Whereas if the Divisional Application is not suspended the Board will be 
presented for decision therein a record lacking very relevant factual information that is 
in the public domain. 

Please charge any fee necessary to enter this paper and any previous paper to 
deposit account 09-0468. ^ — ^ 




Dr. Daniel P. Jroms, 
Reg. No. 32,053 
Phone No.: (914) 945-3217 



IBM Corporation 

Intellectual Property Law Dept. 

P. O. Box 218 

Yorktown Heights, New York 10598 



Serial No.: 08/479,810 
Received from < 914 945 4073 > at 7/29/03 12:02:24 PM [Eastern Daylight Time] 



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IBM Docket No. YO987-074BZ