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Full text of "USPTO Patents Application 08479810"

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I hereby certify that this paper is being facsimile transmitted under Rule 37 
CFR §1. 161(d) to the U.S. Patent and Trademark Office on the date shown 

The Commissioner of Patents and Trademarks 
Washington, D.C 20231 


In response to the Office Action dated March 29, 1995, please consider the fol- 

These remarks are in addition to those of the previously submitted response. 

As further support for applicants' position that the claims under examination 
arc supported by applicants' specification the attached affidavit of Dr. Chang 
C. Tsuei is submitted. Dr. Tsuei's affidavit is in agreement with the earlier 
submitted affidavit of Drs. Donger and Mitzi and states that applicants initi- 

Applicant: Bcdnorz et al. 

Serial No.: 08/303,561 

Filed: September 9, 1994 

Art Unit: I 105 
Examiner: D. McGinty 
Date: January 3, 1996 

Daniel P. Morris 
Reg. No. 32.053 




S.N. 303,561 

ated high temperature superconductor field and the teaching in applicants' 
specification enables a person of skill in the art to fabricate and use the in- 
vention as claimed by applicants. 

Claims 24-26, 86-90 and 96-108 have been rejected under 35 USC § 1 02(a) as 
being anticipated by the Asahi Shinbum article and under 35 USC 103 in view 
of the Asahi Shinbum article. In addition to applicants' remarks in regard to 
this rejection in applicant's prior response please consider the following. 

The date of the Asahi Shinbum article is November 28, 1986. As stated in ap- 
plicants' specification at page 6, lines 7-10: 

The basis for our invention has been described by us in the following 
previously published article: J.G. Bednorz and K.A. Muller, 
Zeitschrift fur Physik B - Condensed Matter, 64, pp. 189-193 Sept. 

The Examiner is using Asahi Shinbum as a reference under 35 USC § 102(a). 
Applicants respectfully disagree since to do so does not permit applicants the 
one year period provided under 35 USC £102(b) to file a US application after 
their own publication which permitted applicants to file the present application 
up to September 1987. The date of the Asahi Shinbum article is after the date 
of applicants' publication. 

Applicants believe this is not a correct application of 35 USC § 102. The Court 
of Custom and Patent Appeal in In re Katz 215 USPQ 14, 17 (a copy of which 
is attached) states that 

It may not be readily apparent from the statutory language that a 
printed publication cannot stand as a reference under § 102(a) unless 
it is describing the work of another. A literal reading might appear to 
make a prior patent or printed publication "prior art" even though the 
disclosure is that of the applicant's own work. However, such an in- 
terpretation of this section of the statute would negate the one year 
period afforded under § 102(b) 1 during which an inventor is allowed 



S.N. 303,561 

to perfect, develop and apply for a patent on his invention and publish 
descriptions of it if he wishes. 

Thus, one's own work is not prior art under § 102(a) even though it 
has been disclosed to the public in a manner or form which otherwise 
would fall under § 102(a). Disclosure to the public of ones own work 
constitutes a bar to the grant of a patent claiming the subject matter 
obvious therefrom only when the disclosure occurred more than one 
year prior to the date of the application, that is, when the disclosure 
creates a one-year time bar, frequently termed a 'statutory bar/' to the 
application under § 102(b). As stated by this court in In re Facius, 56 
CCPA 1348, 1358, 408 F.2d 1396, 1406, 161 USPQ 294, 302 (1969), 
"But certainly one's own invention, whatever the form of disclosure to 
the public, may not be prior art against oneself, absent a statutory 
bar." [Emphasis in original] 2 . 

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. Apph Phy. Faculty 
of Engineering at the University of Tokyo confirmed in November, 
that this is true. 

The "scientists in Switzerland" are the inventors of the above-identified appli- 
cation. The Asahi Shinbum article only reports the work of applicants and that 
it was reproduced by Prof. Tanaka. This article is a disclosure of applicants' 
"own invention" and cannot be used as a reference. Therefore, the Examiner is 
respectfully requested to withdraw the rejection of claims 24-26, 86-90 and 
96-108 under 35 USC § 102(a) as anticipated by Asahi Shinbum and under 35 
USC £103 as obvious over Asahi Shinbum. 



S.N. 303,561 

Daniel P. Morris 
Registration No. 32,053 



S.N. 303,561