IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
For: NEW SUPERCONDUCTIVE COMPOUNDS HAVING HIGH
TRANSITION TEMPERATURE, AND METHODS FOR THEIR
USE AND PREPARATION
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
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
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.
Daniel P. Morris
Registration No. 32,053