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
J. C-AVIi> ei_L»£TT
\ i : -i IMitJ IXC H^i: F RHPtiRTV LAW Ju-iV
P.O. tOX 2 IS
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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 : "
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
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
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
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
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
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
April 24, 1991
SUPERVISORY PRIMARY EXAMINES
ART UNIT 115