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UNi AT j DEPARTMENT OF COMMERCE 

Patent and Trademark Offlca 

Addc«M : COMMISSIONER Of PATENTS ANO TRADEMARKS " 

We*^n<jton, O.C. 2Q231 



SERIAL tJUMBER \ FILING DATE 1 FIRST NAVEO INVENTOR^ 



j ATTCRNEVOOCKET NO, j 

„. Y0V>:7- 0 74 



EXAMINER 



J. C-AVIi> ei_LȣTT 

\ i : -i IMitJ IXC H^i: F RHPtiRTV LAW Ju-iV 
P.O. tOX 2 IS 

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ART Vir,'!T 



PAP TP N"JWRr^ 




|S3 This application has been examined El Responsive to communication filed on i ^ ^ ^ L3^^« act>on « mado fiaa] 

A shortened statutory period lor response to this action is set to expire ^ J> month(s), day* from the date of this tetter. 

Failure to respond WTthtn the period for response wtU cause the appfceation to become abandoned 35 US C 133 

Part I THE FOLLOWING ATTACHM ENT(S) ARE PART OF TWS ACTION: : 

1. □ Notice of References ttted by Exam^er. PTO-692. 2. □ Notice re Patent Orawiofl, PTC-94S. 

3. CD Notice of Art Ched by Applicant, PTO-1 449. 4. O Notice of Informal Patent Application. Form PTO-1 52 

5. [I] Information on How to Effect Drawing Changes. PTO-1474. 



Part II SUMMARY OF ACTION : " 

S 

1. ElI Claims [ ~~ ^1 5^ ... „ are grinding in the application. 

Of the above, claims I 2 ~ Z L ^ ( n f , ^ ^ "^"f * ^ C ^ ^th^wn fro^ponsideration. 

— B j ^ CO 

2. □ Ciaims _.. ^ P J "ave c£^&d. 

3. □ Claims _ ^- ajQ 

4. 0 Claims l-U.O^^ CO + G r ^ are @ced. 

v 5. □ Claims . _ _ — *™ objected to. . 

[^] claims ■ - are subject to restnct>on or etection requirement 

7. □ This application has beenNed with informal drawings under 37 C.F.R. 1 .85 which are acceptable (or examination purposes. 

4 8. LU Formal drawings are required in response to this Office action. 

9. □ The corrected or substitute drawings have been received on C_ ^ Under 37 C.F.FL 1.84 these drawings 

. - . . • are O acceptable: □ not acceptable (see explanation or Notice re Patent Drawing. PTO*4S). 

10. □ The proposed additional or substitute sheets) of drawings. Ned on ; - has (have) been D approved by the 

. examiner; O disapproved by the examiner (see explanation). 

11. □ Tho proposed drawing correction, filod . has been Q approved; □ disapproved (see explanation). 

1?. fTl AcWwtodoemerrt is made ol the claim for priority under U S C 119 Tho certified copy has □ been received Q not been received 
□ been filed in parent application, serial no. fi,od 00 > 

13- Q Since this appBcation apppears to be in condition for allowance except for formal matters, prosecution as to the merits is dosed in 
accordance with tho practice under Fx parte Ouayte. 1935 C D. 1 1; 453 O G. 213 ^ 

14. □ Other 




1. Applicant's election with traverse of Group T in Paper No. 22 
is acknowledged- The traversal is on the ground (s) that the claims 
of Groups 1, Tl and ITT are not distinct. This is not found 
persuasive because the Examiner maintains that the superconductive 
product, process of making and method of use are directed to 
patenta]]y distinct inventions. Although there are broad "process" 
and "method" claims that appear to encompass a great deal of 
subject matter, the limitations in the dependent claims distinguish 
the claims of the Groups I, TT and III. 

The requirement is still deemed proper and is therefore made 
FINAL. 

2. The objection to the specification and objection of claims 1- 
11, 27-35, 40-54, 60-63 and 65-68 under 35 USC 112, first 
paragraph, is maintained. 

3. The following is a quotation of the first paragraph of 35 
U.S.C. § 112: 

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

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

4. The Applicants assert that "the scope of the claims as 
presently worded is reasonable and fully merited" (page 17 of 



Serial No. 07/53,307 
Art Unit. 1 ] 5 

response). The Examiner disagrees. The present claims are broad 
enough to include a substantia] number of inoperable compositions. 

5. The rejection of claims 1-11, 27-35, 40-54, 60-63 and 65-68 
under 35 USC 112, second paragraph is maintained . 

6. Claims 1-11, 27-35, 40-54, 60-63 and 65-68 are rejected 
under 35 U.S.C. § 112, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject 
matter which applicant regards as the invention. 

7. The amended term "rare earth-like" is vague. with respect to 
the lack of stoichiometry , Applicants argue the superconductive 
properties can be measured as the composition is varied. This is 
unpersuasive because the present claims broad enough to require an 
undue amount of experimentation. 

8. The Examiner maintains that the term "doping" is vague. 
Neither the claim or the specification discuss the limits of the 
effective amounts of doping. 

9. The Applicants assert that a discussion of "electron-phonon 
interactions to produce superconductivity" is found in the 
specification. The Examiner maintains that the term is not 
adequately explained. The specification fails to teach how one 
determines how to enhance the "electron-phonon" interactions? 

10. The term "at least four elements" is indefinite considering 
the number of elements- in the periodic table. 



Serial No. 07/53.307 
Art. Unit. 115 



n • „ 1 i i 97-35 40-54, 60-63 and 65-68 

11. The rejection of claims 1-11, * > ■ 

under 35 USC 102/103 is maintained. 

12 . claims 1-11. 27-35, 40-54, 60-63 and 65-68 are rejected under 
35 u.S.C. § 102(b) as anticipated by or, in the alternative, under 
35 U.S.C. § 103 as obvious over each of Shaplygin et.al.. Nguyen 
et.al., Michel et.al. ( Mat i _Res_Bull. and ^yue^hime) - 

i-u-^t- "r,r, nrima facie case has been made 

13. The Applicants argue that no prima 

• • 4- •^-ir.^t^c or renders obvious the subject 

that the composition anticipates or renuex 

carter" (page 28 of response). The Examiner maintains that these 
materia: s appear to be identical to those presently dai^ except 
that the superconductive properties are not disclosed. Applicants 
have not provided any evidence that the compositions of the cited 
references are in any way excluded by the language of the present 
daims. i.e. Applicants have failed to show that these materials 

are not superconductive. Applicant-, composition claims do not 

appear to exclude these materials. 

1.4 Applicants further argue that under United States patent lav, 
they are entitled to claim compositions which might happen to 
„verl«P a portion of the concention ranges hroadly recited in the 
cited references. "The broad statement of a concentration range in 
the prior art does not necessarily preclude later invention wrthm 
the concentration range- (page 29 of response). The Examiner fails 
to understand how Applicants incredibly broad claim* . . »ome of 



9 



Serial No. 07/53.307 
Art. Unit. 135 



„ Af , "Honed transition metal oxide" 
which require only the presence of a dopea 

fail "within" the scope of the 
(see claim 42), an anyway fall war.ru 

positions diseased In the P-ioc a,,. Th. — d 

disclose very specific compostions that no, only fall within the 

tn he identical to those 
scope of the claims, but appear to 

compositions disposed in the specification as b emg 
superconducting. The Examiner maintains that these material are 

^ therefore render the claim 
inherently superconductive and therefore 

unpatentable- 

x5 with respect to Applicants arguements under .« USC 
regarding the -auction of non-an.Jcous arf and the assertion the 
cited prior art is irrevelant to the present ctai„. the Examiner 
maintains that for the present -composition" CI- the references 
directed to what appear to he identical materials Ihoth ,n 
composition and inherent properities, are clearXy relevant The 

4-^ cnffiripnt to maintain 
cited individual disclosures appear to be sufficient 

• thP Examiner is not relying on any secondary 

the rejection, the hxannnei 

references to modify the teachings in the references. 

o ^-11 40-44, 46, 48, 51-54, 60, 
16. The rejection of claims 1-2, 

62 and 66 under 35 USC 102/103 is maintained. 

, - i i S 11 40-44. 46, 48. 51-54, 60, 62 and 66 are 
-^7 Claims 1-2, 5-1 J , 

„ |M r § 102(b) as anticipated by or, in the 
rejected under 35 U.b.t. . 3 1 1 

a 35 U S C § 103 as obvious over each of Perron- 
alternative, under 35 U.S.c. 8 aw 




Serial No. 07/53,307 



Art Unit. 135 

vSimon e t . a 1 , , Mossner et - a 1 . , Chincholkar e t . a 1 . , Am ad e t . a 1 . , 
Blasse et.al . , Kurihara et.aJ . and Anderton et.al. 

18. This rejection is maintained for the reasons set forth in the 



references appear to disclose materials which inherently provide 
superconductive properties and therefore render the present claims 
unpatentable . 



19. THIS ACTION IS MADE FINAL. Applicant is reminded of the 
extension of time policy as set forth in 37 C.F.R. § 1.136(a). 



A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL. ACTION 
IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE 
EVENT A FIRST RESPONSE IS FILED WITHIN TWO MONTHS OF THE MAILING 
DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED 
UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, 
THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE 
ADVISORY ACTION IS MAILED , AND ANY EXTENSION FEE PURSUANT TO 37 
C.F.R- § 3.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE 
ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR 
RESPONSE EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL 
ACTION. 



Any inquiry concerning this communication or earlier 
oommnni ca t j ons from the examiner should be directed to John Royd 
whose telephone number is (703) 308-3314. 

Any inquiry of a general nature or relating to the status of 
this application should be directed to the Group receptionist whose 
telephone number is (703) 308-0661. 



previous paragraphs - 



The Examiner maintains that the cj ted 



Seria] No. 07/53,307 
Art. Unit. 115 



-7- 



April 24, 1991 



PAUL tfEBERMAN 
SUPERVISORY PRIMARY EXAMINES 
ART UNIT 115