Skip to main content

Full text of "USPTO Patents Application 08479810"

See other formats


REMARKS 

Claims 232-321 were added in the response identified as Second Supplementary 
Response to the Office Action dated February 4, 2000. These added claims 232-321 
correspond to claims under examination in the parent application serial no. 08/303,561 
filed on 09/09/1994. The following chart shows how these added claims correspond to 
the claims of the parent application. Those added claims which correspond to claims 
allowed in the parent application should be allowed here for the same reason that the 
corresponding claims were allowed in the parent application. 



YO987-074BZ 



Page 2 of 1 87 



08/479,810 




Corresponding claim in parent 


Added claim to the present application 


24 


232 


25 


Id 5 


26 


A 

154 


86 


Ol £ 

15 j 


87 


236 


88 


on 
15 1 


89 


Tin 

238 


90 


15y 


96 


O/l A 

240 


97 


O/l 1 

241 


98 


O/IO 

242 


99 


O/ll 

243 


100 


OAA 
Z44 


101 


OA^ 


102 


OAA 
Z40 


103 


141 


104 


248 


105 


249 


106 


250 


107 


oo 
251 


108 


oco 
252 


109 


253 


110 


254 


111 


ire 
255 


112 


256 


113 


O C7 

257 


Allowed 


114 


/>f O 

258 


Allowed 


115 


OCA 

259 


Allowed 


116 


260 


117 


o^ 1 
261 


118 


O/CO 

262 


Allowed 


119 


O/d 

263 


Allowed 


120 


1&A 

264 


Allowed 


121 


o/[ c 
265 


122 


O/^ 

266 


123 


267 


Allowed 


124 


zoo 


Allowed 


125 


269 


Allowed 


126 


270 


127 


271 


128 


272 


129 


273 


130 


274 



YO987-074BZ 



Page 3 of 187 



08/479,810 



131 


Lid 


Allowed 


132 


Z /O 


Allowed 


133 


III 


134 


Z /o 


135 


z/y 


Allowed 


136 


ZoU 


Allowed 


137 


zol 


Allowed 


138 


Zoz 


139 


Zoj 


140 




141 


Zoj 


142 


ZoO 


Allowed 


143 


Zo / 


Allowed 


144 


Zoo 


145 


Zoy 


Allowed 


146 


OOA 

zVU 


147 


zyi 


Allowed 


148 


ZVZ 


149 


zyj 


150 


ZV4 


151 


one 

zyj 


Allowed 


152 


zyo 


Allowed 


153 


oao 

zy / 


Allowed 


154 


z9o 


Allowed 


155 


zyy 


Allowed 


156 


300 


Allowed 


157 


301 


158 


30z 


159 


^ Al 

303 


Allowed 


160 


1 A /I 

304 


Allowed 


161 


30;) 


Allowed 


162 


306 


Allowed 


163 


307 


164 


308 


165 


309 


166 


310 


Allowed 


167 


ni 1 

311 


Allowed 


168 


j 1Z 


169 


313 


170 


314 


Allowed 


171 


315 


Allowed 


172 


316 


Allowed 


173 


317 


174 


318 



YO987-074BZ 



Page 4 of 187 



08/479,810 




175 


319 


176 


320 


177 


321 



YO987-074BZ 



Page 5 of 187 



08/479,810 




PRELIMINARY COMMENTS 



The present application is a divisional application of copending US Application Serial 
No. 08/303,561 filed 09/09/1994 which is a continuation of US Application Serial No. 
08/060,470 filed on 05/1 1/1993 which is a continuation of US Application Serial No. 
07/875,003 filed on 04/24/1992 which is a divisional application of US Application Serial 
No. 07/053,307 filed on 05/22/1987. The prosecution of all ancestral applications are 
incorporated herein by reference. In a subsequent paper, the Sixth Supplemental 
Amendment, selected papers from the ancestral file are submitted as Exhibit. 

The entire file history of all the ancestral applications of the present application will be 
submitted as part of a subsequent paper in this application. Thus all papers not 
entered in the parent application will be presented for entry in the present application. 

In the parent application: 

1. Claims 24-26, 86-90, 96-113, 117-118, 122-123, 127-131, 134, 135, 139-142, 145, 
147, 149-151, 158, 159, 164-166, 169, 170 and 174-177 were asserted by the 
Examiner not to be supported by the priority document. The corresponding claims 
of the present application are 232-257, 261 , 262, 266, 267, 271-275, 278, 279, 
283-286, 289, 291, 293-295, 302, 303, 308-310, 313, 314 and 318-321. 

2. Claims 24-26, 86-90, 96-113, 117-118, 122, 123, 127-131, 134, 135, 139-141, 145, 
147, 149-151, 158, 159, 164-166, 169, 170 and 174-177 of the parent application 
were rejected as anticipated under 35 USC 102(a) by the Asahi Shinbum article. 
The corresponding claims of the present application are 232-257, 261, 262, 266, 



YO987-074BZ 



Page 6 of 187 



08/479,810 




267, 271-275, 278, 279, 283-286, 289, 291 , 293-295, 302, 303, 308-310, 313, 314 
and 318-321. 

3. Claims 24-26, 86-90, 113, 117-118, 122, 123, 127-131, 134, 135, 139-141, 145, 
147, 149-151, 158, 159, 164-166, 169, 170 and 174-177 of the parent application 
were rejected as obvious under 35 USC 103(a) in view of the Asahi Shinbum article. 
The corresponding claims of the present application are 232-257, 261 , 262, 266, 
267, 271-275, 278, 279, 283-286, 289, 291, 293-295, 302, 303, 308-310, 313, 314 
and 318-321. 

4. Claims 24-26, 86-90, 96-113, 129-131, 134, 135, 139-142, 145, 147, 149-151, 158, 
159, 164-166, 169, 170, and 174-177 of the parent application were rejected as not 
enabled under 35 USC 112, first paragraph. The corresponding claims of the 
present application are 232-257, 273-275, 278, 279, 283-286, 289, 291 , 293-295, 
302, 303, 308-310, 314, 315 and 318-321. 

5. Claims 86-87, 96-1 08, 1 1 8, 1 22, 1 23, 1 29-1 31 , 1 34, 1 35, 1 39-1 42, 1 64-1 66 and 
169-177 of the parent application were rejected as indefinite under 35 USC 112, 
second paragraph. The corresponding claims of the present application are 236, 
237, 240-252, 262, 266, 267, 273-275, 278, 279, 283-286, 308-310, 313, 314 and 
318-321. 

Applicants assume that the corresponding claims added to the present application will 
be rejected for the same reasons as given in the final rejection of the parent application. 
Arguments presented in this paper as relevant to added claims are applicable to other 
claims rejected for the same reasons and to other objections to the specification for the 
same reasons. 



YO987-074BZ 



Page 7 of 1 87 



08/479,810 




ARGUMENT 
Priority 

The arguments herein are in response to the objections and rejections of the claims in 
the parent application. Thus, reference will be made to the final rejection of the parent 
application. In this response, papers referred to are found in Attachments 1 to 57. 
These are referred to in the text in brackets such as [Attachment 2] for Attachment 2. 
Since the Examiner's comments referred to are directed to the claims of the parent, the 
arguments state the parent claim number. The table above gives the corresponding 
claims of the present application. 

In addition to Applicants' previously presented arguments in support of their claim of 
priority, Applicants add these comments which specifically rebut the comments of the 
Examiner against their claim of priority in the final rejection dated 08/27/1997 of the 
parent application 08/303,561 . The Examiner has acknowledged applicant's claim for 
priority under 35 USC §1 19 in the parent application, Serial No. 08/053,307 filed April 
23, 1993. The certified copy has been filed in parent application, Serial No. 
08/053,307, filed on April 23, 1993 as paper no. 28. (References to the priority 
document herein are to the corresponding European Patent Application 275 343 A1 
published on July 27, 1988.) [Attachment 1] 

Applicants respectfully disagree with the Examiner that support is not found in that 
certified copy for the invention as presently claimed. 



YO987-074BZ 



Page 8 of 187 



08/479,810 



In this regard the Examiner states in the final rejection of the parent application: 

Applicants' arguments filed April 11, 1996 [Attachment 2], January 3, 1996 
and September 29, 1996, paper numbers 53, 50 and 51 , as well as the 
Affidavits filed September 29, 1995 and January 3, 1996, paper numbers 
49 and 52, have been fully considered but they are not deemed to be 
persuasive. The Applicants quote some passages out of the priority 
document and argue that the present claims are fully based on that 
document. Nevertheless, that priority document is not deemed to provide 
basis for the limitations found in the present claims. 

In this passage the Examiner states that "Applicants' arguments ... are not deemed to 
be persuasive" and "[nevertheless, that priority document is not deemed to provide 
basis for the limitations found in the present claims." Webster's Ninth New Collegiate 
Dictionary (Merriam-Webster Inc., Springfield, Mass. 1987) defines "deem" as a 
transitive verb meaning "to come to think or judge" and as an intransitive verb meaning 
"to have an opinion : believe." The examiner has used the intransitive form of the verb 
"deemed". The examiner has cited no statutory or case law authority which permits an 
examiner to object to a claim of priority based on the examiners "opinion" or "belief" that 
a priority document does not support applicant's claims. The Examiner must support a 
denial of a claim of priority based on what is actually stated in the priority document. 



YO987-074BZ 



Page 9 of 187 



08/479,810 



The Examiner further states in support of the Examiner's "opinion" or "belief at page 3, 
paragraph 4.b of the final rejection in the parent application: 

i. The recitation of a "composition including a transition metal, a rare earth 
or rare earth-like element, an alkaline earth element, and oxygen", as 
found in claim 86 (lines 2-4). The certified priority document may provide 
basis for the formula RE 2 TM.0 4 at p. 2, para. 4, but the claimed 
composition is deemed to be much broader than that formula. 

Applicants respectfully disagree. In the priority document, for example in the abstract, 
RE is a rare earth element, TM is a transition metal and O is oxygen. The priority 
document [ Attachment 1] further states at Col. 2, lines 22-25 "the lanthanum which 
belongs to the MB group of elements is in part substituted by one member of the 
neighboring IIA group of elements...". Group IIA elements are the alkaline earth 
elements. The present specification teaches at page 1 1 , lines 22-23, that RE stands 
for the rare earths (lanthanides) or rare earth-like elements. The "rare earth like 
element" acts like a rare earth element in the superconductive composition. Thus a 
rare earth-like element is an equivalent of rare earth element. Similar language 
appears in the present specification at page 12 lines 6-8, "the lanthanum which 
belongs to the IIB group of elements is in part substituted by one member of the 
neighboring IIA group of elements...". Therefore, the priority document teaches a 
"composition including a transition metal, a rare earth or rare earth-like element, and 
alkaline earth. Applicants note that in the passage quoted above, the Examiner 
incorrectly states that Applicants claim a composition. This is not correct. Applicants 
claim an apparatus for flowing a superconducting current in a composition, such as a 

YO987-074BZ Page 10 of 187 08/479,810 




transition metal oxide. (This characterization is exemplary only and not intended to limit 
the scope of any claims.) In the last sentence of the passage quoted above the 
Examiner incorrectly states "the claimed composition is deemed to be much broader 
than [the] formula" RE 2 TM.0 4 ". The priority document is not limited to his formula. The 
composition taught by the priority document have variable amounts of oxygen, rare 
earth, rare earth-like and alkaline earth elements as is clearly shown in the abstract of 
the priority document. 

The Examiner further states in the final rejection of the parent application: 

ii. The limitation "non-stoichiometfic amount of oxygen", as found in claim 
6 and 86 (line 6). Basis may be seen for an oxygen deficit at p. 2, para. 4, 
but no such basis is seen for the more general limitation of "a 
nonstoichiometric amount of oxygen". 

Applicants respectfully disagree. At Col. 3, lines 46-50 the priority document refers to 
Applicants publication in Z. Phys. B - Condensed Matter 64 (1986) 189-193 
[Attachment 3] which is incorporated by reference in the present specification at page 6, 
lines 7-10. (This article is referred to here in as Applicants' article.) This article states 
at page 190, left col., lines 13-14 "[t]his system exhibits a number of oxygen-deficient 
phases with mixed-valent copper constituents." The priority document has various 
general formulas such as at Col. 3, lines 40, "La^xBaxCuCvy x«1 and y^O." The 
abstract has a more generic formula. A stoichiometric compound has a fixed amount 
of each element that make up the compound. Since, the amount of oxygen is variable, 



YO987-074BZ 



Page 11 of 187 



08/479,810 




the formula has nonstoichiometric amounts of oxygen. Therefore, the priority 
document teaches nonstoichiometric amounts or oxygen. 

In Attachment 39 of this response, there are copies of pages 245 and 225 of Inorganic 
Chemistry by Moeler, John Wiley & Sons, Inc. 1952 and a copy of page 70 of 
Fundamentals of Chemistry, A Modern Introduction by Brescia et al. , Academic Press, 
1966. Attachment 39 provides an explanation of the terms stoichiometric and 
nonstoichiometric. The documents in Attachment 39 support Applicants' position that 
the priority document teaches nonstochiometric amounts or oxygen. 

Moeler states at page 224: 

NON-STOICHIOMETRIC COMPOUNDS 
The law of definite proportions is one of the basic tenets of chemistry 
Its validity is indicated by the restrictions imposed upon bond formation 
where electrons are involved as already outlined, and its application 
is generally the assumed basis for any type of chemical combination. 
There are, however, many instances of apparent departure from 
this rule among solid compounds. Such compounds do not possess the 
exact compositions which are predicted from electronic considerations 
alone and are commonly referred to as Berthollide or non-stoichimetric . 
(Emphasis Added) 



YO987-074BZ 



Page 12 of 187 



08/479,810 




The Examiner further states in the final action of the parent application: 

iii. The limitation "a composition exhibiting a superconductive state" is 
found in present claim 88, (line 2). Wherein the certified priority document 
may provide basis for compositions of the formula RE2TM.O4, as 
discussed above, but "transition metal oxide" and "superconductive state" 
are deemed to be much broader than the formula RE2TM.O4. 

Applicants respectfully disagree. The field of the invention of the priority document 
[Attachment 1] is "a new class of superconductors in particular components ..." and the 
title is "New Superconductive Compounds Applicants' article [Attachment 3] which 
is referred to in the priority document states at page 190, left Col., lines 14-16 from the 
bottom "X-ray powder diffractograms ... revealed three individual crystallographic 
phases." In the conclusion at page 1 92 the article states "[t]he system consists of three 
phases, one of them having a metallic perovskite-type layer-like structure. The 
characterization of the new, apparently superconducting, phase is in progress." Thus 
the priority document supports the limitation "a composition exhibiting a 
superconductive state". The general formula RE 2 -xAE x TM.C>4-y x<0.3 0.1 <y< 0.5 and 
the more specific formula RE 2 TM.0 4 of the priority document is a composition; is a 
metal oxide; and is a transition metal oxide as recited in claims 24, 89 and 90 of he 
parent and in corresponding added claims 232, 238 and 239 herein. As noted above, 
the Examiner incorrectly implies that the priority document is limited to compounds 
having the formula RE 2 TM.0 4 . 



YO987-074BZ 



Page 13 of 187 



08/479,810 




The Examiner further states in the final rejection of the parent application: 

iv. The limitation "a copper-oxide compound" is recited in claim 96 (line 6). 
The certified priority document may provide basis for compositions of the 
formula RE 2 TM.0 4 , as discussed above, but "a copper-oxide compound" 
is not deemed to be equivalent to a composition of the formula RE 2 TM.0 4 . 
Basis is not seen in the certified priority document for "a copper oxide 
compound" with the breadth of the present claims. 

Applicants respectfully disagree. Initially the Examiner incorrectly implies claim 96 of 
the parent application corresponding claim 240 herein, is directed to a copper oxide 
compound. This claim is directed to a "copper oxide composition consisting essentially 
of a copper oxide compound having a layer-type perovskite-like structure." The priority 
document [Attachment 1] recites numerous copper oxide compositions. It is noted that 
the Abstract of the priority document refers to "[t]he superconductive compounds are 
oxides of the general formula RE2.xAExTM.O4-y, wherein RE is a rare earth, AE is a 
member of the group of alkaline earths or a combination of at least two members of that 
group, and TM is a transition metal, and wherein x < 0.3 and 0.1 <y < 0.5." This formula 
permits no alkaline earth and a varying amount of alkaline earth, rare earths and a 
varying amount of oxygen. At column 3, lines 20 and 35, there is recited "the 
Ba-La-Cu-0 system" and at line 41 "La2.xBaxCuO4.yX < 1 and y < 0 and at line 44 
teaches Lai-xVa x Cu0 3 - y . Thus the priority document provides support for a composition 
including a transition metal, a rare earth or rare earth-like elements, an alkaline earth 
element, an oxygen as found in Applicants' claim, specifically claim 86 of the parent 
application, corresponding claim 235 herein. It is noted that at column 2, lines 13-19 



YO987-074BZ 



Page 14 of 187 



08/479,810 




the priority document states that "it is a characteristic of the present invention that in the 
compounds in question that the RE portion is partially substituted by one member of the 
alkaline earth group of metals, or by a combination of the members of this alkaline 
earth group and that the oxygen content is at a deficit." It is further noted that at 
column 2, lines 20-23 it states that "for example, one such compound that meets the 
description given by this lanthanum copper oxide La 2 Cu0 4 in which the lanthanum 
which belongs to the 1MB group of the elements is in part substituted by one member of 
the neighboring IIIA group of elements." 

The priority document [Attachment 1] at column 3, line 6 recites Ti as a transition metal. 
It is noted that in claim 1 of the priority document, claim 1 recites the structure 
RE2.xAExTM.O4-y wherein TM is a transition metal. Claim 2 therein recites copper as the 
transition metal. Claim 3 therein recites nickel as the transition metal. Claim 8 therein 
recites chromium as the transition metal. Consequently, a broader class of transition 
metals other than copper is supported by the priority document. 

It is clear from the quoted sections of the priority document that the priority document 
clearly supports a much broader composition than the Examiner is claiming that it does, 
and that the priority document, in fact, does support applicant's claims. 

As noted above, the general formula of the priority document is much broader than the 
formula RE 2 TM.0 4 which the Examiner incorrectly states the priority document is limited 
to. The quantity of oxygen, the rare earth element and of an alkaline element is 



YO987-074BZ 



Page 15 of 187 



08/479,810 




variable and the transition metal is not limited to copper. Consequently, the term "a 
copper-oxide compound" is adequately supported by the priority document. 

The Examiner further states in the final rejection of the parent application: 

v. The limitation to the effect that "the copper oxide compound includes 
(including) at least one rare-earth or rare-earth-like element and at least 
one alkaline-earth element", as recited in claim 103 (lines 6 and 8). The 
certified priority document may provide basis for compositions of the 
formula RE 2 TM.0 4 , as discussed above, but basis is not seen for the 
more general limitation of "a copper-oxide compound" with a rare-earth 
(like) element and an alkaline earth element. 

Applicants respectfully disagree. The second line of the abstract gives the general 
formula "RE2- x AExTM.0 4 .y x«0.3 and 0.1 £ y g 0.5." In claim 1 of the priority document 
y g 0.5. Claim 2 recites RE is lanthanum and TM is a copper. Claim 3 recites RE is 
cerium and TM is nickel. Claim 4 recites RE is lanthanum and TM is nickel. Claim 8 
recites RE is lanthanum and TM is chromium. Claim 9 recites RE is neodymium and 
TM is copper. Applicants' claim 1 03 of the parent application and corresponding claim 
247 herein recites " the copper-oxide compound including at least one rare-earth or 
rare-earth-like element and at least one alkaline-earth element". The priority document 
clearly supports this recitation. Applicants, as stated above, respectfully submit the 
Examiner is misrepresenting the priority document [Attachment 1] which refers 
throughout and, in particular, in the Abstract to "the general formula RE 2 - x AExEM.04- y as 
stated above which includes a copper-oxide as stated above. The Examiner further 



YO987-074BZ 



Page 16 of 187 



08/479,810 




states in the passage quoted above "but basis is not seen for the more general 
limitation of 'a copper-oxide compound' with a rare-earth (like) element and in alkaline 
earth element." It is noted that in the priority document, claim 2 refers to lanthanum as 
the rare earth; claim 3 refers to cerium as the rare earth; claim 5 refers to barium as a 
partial substitute for the rare earth; claim 6 refers to calcium as a partial substitute for 
the rare earth; claim 7 refers to strontium as a partial substitute for the rare earth and 
claim 9 refers to neodymium as the rare earth. Clearly, the priority document uses 
barium, calcium and strontium. Consequently, the priority document supports the term 
rare earth-like since in includes elements (e.g. barium, calcium and strontium) other 
than those commonly referred to as the rare earth elements [which are elements 57-71] 
which satisfy the teaching of the priority document and of the present application. The 
Abstract of the priority document refers to "AE as a member of the alkaline earth or a 
combination of at least two members of that group". Consequently, the priority 
document clearly supports an alkaline earth element. 

The Examiner further states in the final rejection of the present application: 

vi. The limitation to the effect that "the copper-oxide compound includes at 
least one element (oxygen) in a nonstoichiometric atomic proportion", as 
found in claim 101 (lines 2 and 3), 102 (lines 2 and 3), 107 (lines 2 and 3), 
and 108 (lines 2 and 3). Basis may be seen for an oxygen deficit as 
discussed above, but no such basis is seen for the more general limitation 
of "a nonstoichiometric atomic proportion". 



YO987-074BZ 



Page 17 of 187 



08/479,810 




Applicants disagree for the same reasons given above for why the priority document 
supports "nonstoichiometric amount of oxygen". 

The Examiner further states in the final rejection of the present application: 

vi. The limitation as to "the effectively-zero-bulk-resistivity intercept 
temperature Tp, 0 , as found in claim 103 (lines 13, 6 and 17). The critical 
temperature, T c , is discussed throughout that certified priority document, 
but not Tp =0 . 

Applicants respectfully disagree. Tp =0 is the temperature at which the bulk resistively is 
about zero. T c is the critical temperature or the temperature above which 
superconductivity does not exist. The priority document [Attachment 1] refers to 
Applicants' article [Attachment 3] of which Figures 1 ,2 and 3 are the same figures as 
Figures 2, 3 and 4 of the present application. At page 22, lines 19-24, the present 
specification refers to Figure 4 of the specification stating "[i]ts resistivety decreases by 
at least three orders of magnitude, giving evidence for the bulk being superconcucting 
below 13 K with an onset around 35 K, as shown in FIG. 4 on an expanded scale." 
When a superconductor is totally superconductive the resistivety, p, is zero. The 
temperature at which this occurs is T p=0 . Applicants' article, [Attachment 3] (and thus 

the priority document [Attachment 1]), at page 191 , right column, in referring to Fig. 1 
thereof states "[u]pon cooling from room temperature, the latter exhibit a nearly linear 
metallic decrease of p(T) , then a logarithmic type of increase, before undergoing the 
transition to superconductivity." And in the sentence bridging pages 191-192 

YO987-074BZ Page 1 8 of 1 87 08/479,81 0 




"[therefore, under the above premises, the peak in p(T) at 35 K, observed ... has to be 
identified as the start to superconductive cooperative phenomena." And Applicants' 
article at page 192, left column, states "[u]pon cooling below T c ... the bulk resistively 
gradually drops to zero by three orders of magnitude, for sample 2( Fig. 1)" From these 
statements in Applicants article (which is referred to in the priority document) it is clear 
that the language objected to by the examiner is supported in the priority document. 

In response to Applicants' arguments filed March 7, 1997 [Attachment 4] (#59) of the 
ancestral applications the Examiner states "they have been fully considered but not 
found to be persuasive". 

The Examiner states in the final rejection of the parent application: 

i. The Applicants quote portions out of the priority document and assert 
that those quoted sections "clearly (support) a much broader composition 
than the Examiner is claiming it does, and that the priority document, in 
fact, does support applicant's (sic) claim 86." The fact remains, 
nevertheless, that the priority document refers to the general formula 
RE2TM.O4 in which the rare earth element (RE) may be partially 
substituted with a Group MA metal. That disclosure in the priority 
document does not provide support for the broader limitations of the 
present claims, which do not limit the invention to that general formula. 

As stated above the Examiner incorrectly states that the priority document is limited to 
formula RE 2 TM.0 4 . This is clearly incorrect. 



YO987-074BZ 



Page 19 of 187 



08/479,810 




The Examiner further states in the final rejection of the parent application: 

ii. The Applicants argue that the disclosure of varying amounts of oxygen 
in the priority document provides support for earlier priority for the term 
"non-stoichiometric amount of oxygen". Again, however, that disclosure in 
the priority document does not provide support for the broader limitations 
of the present claims, which do not limit the invention to those varying 
amounts. 

It is not clear what the Examiner is trying to say in the last sentence of this quoted 
passage. The general formula in the Abstract of the priority document [Attachment 1], 
RE2.xAExTM.O4-y, has the atomic amount of O varying from 0 to 4 independent of the 
atomic amount of RE, AE and TM. Thus the amount of O must have non-stoichiometric 
values. The Examiner's comments in the passage above are clearly in error. 

The Examiner further states in the final rejection of the present application: 

iii. The Applicants urge that the disclosure in the priority document of the 
formula RE2TM.O4 provides support for their limitations of "transition 
metal", "copper-oxide compounds", "rare earth or rare earth-like 
elements", and "alkaline earth element". Again, however, that disclosure 
in the priority document does not provide support for the broader 
limitations of the present claims, which do not limit the invention to that 
formula. 



YO987-074BZ 



Page 20 of 187 



08/479,810 




The Examiner again incorrectly states that the priority document is limited to the 
formula RE2TM.O4. As stated above the examiner is clearly in error. The priority 
document supports a much broader formula then RE 2 TM.0 4 . As shown above, the 
priority document clearly supports Applicants' claim limitations "transition metal", 
"copper-oxide compounds", "rare earth or rare earth-like elements" and "alkaline earth 
elements". 

The Examiner further states in the final rejection of the present application: 

iv. The Applicants further "assume that the Examiner agrees with 
applicant's (sic) statements in their prior response in that the concept of 
the intercept temperature is well known in the prior art and can be 
included in claim 103." No basis is seen for that assumption. As noted in 
the previous Office Action and repeated above, the term u T p =o" is not 
found in the priority document. Well known or not, there is no basis for 
that term in the priority document. 

For the reason given above the priority document clearly supports the term "T p=0 ". 
Although this particular symbol is not used in the priority document, the priority 
document clearly shows that as temperature is decreased the resistively of a 
superconductor begins to drop in the value at the critical temperature T c and goes to 
zero at another temperature, that is T p=0 . This symbol is just a well known short hand 
notation for that temperature. This property of superconducting materials is well known 
prior to Applicants filing date, in fact that is what is meant by the term superconductor 
which is a material for which p=0 for temperatures less than a certain temperature, i.e., 



YO987-074BZ 



Page 21 of 187 



08/479,810 



Tp =0 . It is also well-known that: "[i]n the ideal case the resistance vanishes completely 
and discontinuously at a transition temperature. Ts ... Actually, the resistance 
temperature curve does fall more sharply the more specimen is like a single crystal ... 
[T]he drop always occurs in a measurable temperature range ..." (Theory of 
Superconductivity, M. von Laue, Academic Press, Inc., 1952) (See Appendix C of 
Applicants' response dated September 25, 1995) [Attachment 5]. Moreover, the priority 
document at column 1 , the first sentence of the Background of the Invention states 
"[superconductivity is usually defined as the complete loss of electrical resistance of a 
material at a well defined temperature". That temperature is symbolically represented 
as T p= o- 



YO987-074BZ 



Page 22 of 187 



08/479,810 




CLAIM REJECTIONS - 35 USC § 102 

Prior to the Examiner's Answer in the parent application, claims 24-26, 86-90, 96-1 35, 
and 137-177 were rejected under 35 U.S.C. § 102(a) as being anticipated by Asahi 
Shinbum, International Satellite Edition (London), November 28, 1986 (hereinafter, "the 
Asahi Shinbum article"). These claims correspond to claims 232-234, 235, 279 and 
281-321 herein. 

The Examiner is stating that everything within Applicants non-allowed claims is found in 
the Asahi Shinbum article. All of Applicants' non-allowed claims are dominant to (or 
generic to) the one allowed claim, claim 136 of the parent application, clam 280 herein. 
Thus by stating that all the non-allowed claims are anticipated, the Examiner is stating 
that the portion of each non-allowed claim which does not overlap the allowed claim is 
taught in the Asahi Shinbum article. This means that a person of skill in the art needs 
nothing more that what is taught in the Asahi Shinbum article to practice that part of 
each of Applicants non-allowed claims which does not overlap Applicants' allowed 
claim. 

The only parts of the Asahi Shinbum article [Attachment 6] which are relevant to 
Applicants claim are 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 



YO987-074BZ 



Page 23 of 187 



08/479,810 




TANAKA, Dept. Appl. Phys. Faculty of Engineering at the University of 
Tokyo confirmed in November, that this is true. 

in the second paragraph: 

The ceramic newly discovered, is an oxide compound of La and Cu with 
Barium which has a structure of the so-called perovskite and shows 
metal-like properties. Prof. Tanaka's laboratory confirmed that this 
material shows diamagnitism (Meisner effect) which is the most important 
indication of the existence of superconductivity. 

The Swiss scientist are the inventors of the present application. Thus this clearly refers 
to Applicants work which was reported in Applicants article. These passages say that 
Prof. Tanaka confirmed Applicants work. The newly discovered ceramic referred to in 
the article is the ceramic reported on in Applicants' article. The present applicant was 
filed less than one year after the publication of Applicants' article. This article is a 
disclosure of Applicants' own invention and cannot be used as a reference against the 
present application. 

Since the present application was filed within one year of Applicants' article, Applicants' 
article is not a reference as to them. Thus the only portion of the Asahi Shinbum 
article [Attachment 6] relevant to Applicants' claims is: 

A new ceramic with a very high T c of 30K of the superconducting transition 
... is an oxide compound of La and Cu with Barium which has a structure 
of the so-called perovskite and shows metal-like properties. 



YO987-074BZ 



Page 24 of 187 



08/479,810 



# 



Since the Asahi Shinbum article [Attachment 6] refers to "T c of 30K" and since each of 
Applicants claims recites T c > 26 9 K, the Asahi Shinbum article alone cannot anticipate 
T c > 26 9 K since to be an anticipation a reference must contain all the limitations of the 
claim it is said to anticipate. Also, the Asahi Shinbum article [Attachment 6] provides no 
teaching of how to made the "new ceramic". A reference which does not provide a 
method of making a composition cannot anticipate a claim to the composition and thus 
to a use of that new composition. Also, the Asahi Shinbum article [Attachment 6] has 
no specific embodiment of the new composition. Thus it cannot anticipate under 35 
USC 102. 



Applicants' Article Was in the US in Ready To File Form 



The issue involved here is straight forward. A third party reproduced and reported that 
fact in a written publication before of Applicants' filing date. The work of Applicants was 
reported in a written description published before the publication of the third party. 
Applicants filed the present application within one year of their publication, but after the 
third party publication. If Applicants did not file the present applicant within one year of 
the date of Applicants' article, Applicants' article would be a valid reference under 35 
USC 102(a). But since Applicants filed the present application within 1 year of 
Applicants' article, it is not a reference under 35 USC 102(b). 



YO987-074BZ 



Page 25 of 187 



08/479,810 




35 USC 1 00 states the term "invention" means invention or discovery. 

35 USC 102(a) states "[a] person shall be entitled to a patent unless ... the invention 
was known or used by others in this country, or patented or described in a printed 
publication in this or a foreign country, before the invention thereof by the Applicants for 
patent." 

Applicants invention or discovery was on or before April 17, 1986 which is the date 
Applicants submitted Applicants' article to Z.Phys.B. [Attachment 3] That article was 
published in September, 1986. Therefore, Applicants invented their invention prior to 
the date of the Asahi Shinbum article, November 28, 1986. Evidence submitted proving 
that Applicants conception was in the United States at Applicants direction prior to Nov. 
28, 1986 is discussed below. In addition, the following evidence shows that Applicants' 
article was in this country in possession of IBM, the assignee, prior to the date of the 
Asahi Shinbum article. Attachment K of Applicants' response dated December 27, 
1 998, [Attachment 7] page 1 , is a copy of the front cover of Zeitschrift Fur Physik B 
Condensed Matter Vol. 64 which contains Applicants' article [Attachment 3] ( pp 
189-193) which is referred to and incorporated by reference at page 6, lines 6-10, of 
Applicant's specification. Applicants state at page 6 of the specification that 
Applicants' article is "[t]he basis or our invention". This page bears in the upper right 
the date stamp of the IBM Research Library bearing the date of Sept. 18, 1986. Page 2 
of Attachment K [Attachment 7] of Applicants' response dated December 27, 1 998, is 
an enlarged view of the upper right corner showing the date stamp. Thus the assignee 



YO987-074BZ 



Page 26 of 187 



08/479,810 



of the present invention, IBM, who was the employer of the inventors at the time of the 
conception of the invention, had in its possession in the United States, prior to the date 
of the Asahi Shinbum [Attachment 6], a copy of the article which Applicants state forms 
the basis of their invention. Thus IBM had in its possession in the United States a 
written description of Applicants' invention in "ready to patent form" (as defined by the 
United States Supreme Court in Pfaff v. Wells 48 USPQ 2d 1641 decided November 
10, 1998) prior to the date of the Asahi Shinbum article. The US Supreme Court held 
that "reduction to practice" is not needed to establish a date for invention. The court 
stated " [t]he statute's only specific reference to that term is found in §1 02(g), which 
sets forth the standard for resolving priority between two competing claimants to a 
patent." Since §1 02(g) is not applicable here, "diligence" and "reduction to practice" 
are not required. Applicants article in Zeitschrift Fur Physik [Attachment 3] "is proof that 
prior to [the date of the Asahi Shinbum article Applicants have] prepared drawings or 
other descriptions of the invention that were sufficiently specific to enable a person 
skilled in the art to practice the invention." The Asahi Shinbum article sates that 
Applicants' work was reproduced, by others, thus Applicants article was sufficiently 
specific for a person of skill in the art to practice Applicants' invention. Also, as stated in 
Applicants' response dated December 18, 1998 [Attachment 8], more than 5,200 
articles refer to Applicants' article showing that Applicants enabled the field of high T c 
superconductivity. Thus the Asahi Shinbum article is not a valid §1 02(a) reference 
against Applicants' claimed invention. 



YO987-074BZ 



Page 27 of 187 



08/479,810 



The Examiner states in the final rejection of the parent application: 

ii. The Applicants assert that the Asahi Shinbum article reports a third 
party's confirmation of their original discovery. That assertion appears to 
be correct, but the article still is deemed to be prior art under 35 USC 
102(a). 

(1) It should be noted again, however, that the Applicants' discovery was 
not originally made in this country- and that they cannot show an earlier 
date than December 1986 for their invention in this country. The Asahi 
Shinbum article was published on November 28, 1986. 

Applicants disagree with the Examiner. Applicants note that the Examiner 
acknowledges that the Asahi Shinbum article "confirms [Applicants'] original discovery." 
35 USC 102(a) does not require Applicants to show a date of invention in this country 
prior to the Asahi Shinbum article [Attachment 6] to avoid the Asahi Shinbum article 
being prior art. 35 USC 102(a) states "A person shall be entitled to a patent unless ... 
the invention was ... described in a printed publication in this or a foreign country, 
before the invention thereof by the application for patent." 35 USC 100 does not 
include reduction to practice in this country or conception in this country as part of the 
definition of invention. Only 35 USC 102(g) includes the language "reduction to 
practice" and "invention in this country". If Congress intended a reduction to practice to 
be necessary for a patent applicant to show that they invented their invention before the 
date of the printed publication, Congress would have included such language in the 35 
USC 102(a). Also, if Congress intended that invention in this country was to be 
necessary for a patent applicant to show that they invented their invention before the 



YO987-074BZ 



Page 28 of 187 



08/479,810 




date of the printed publication, Congress would have included such language in 35 
USC 102(a). 

In the final rejection of the parent application the Examiner states: 

a. As discussed in paper no. 20 of the ancestral application, 
07/053,307, it is not fully clear to what exact date Applicants are entitled. 
Based on the record, nonetheless, that date would appear to be no later 
than around December 13, 1986, the date samples were tested in the US 
to show superconductivity. See MPEP 715 et seq. The Asahi Shinbum 
article was published on November 28, 1986. 

b. The reference confirms superconductivity in an oxide compound 
of La and Cu with Ba having a structure of the so-called perovskite 
structure. Although the reference fails to teach use of the testing of zero 
resistance for confirming superconductivity, it inherently must have been 
used because it is one of two methods used for testing for 
superconductivity (the other being diamagnetism). Accordingly, the 
burden of proof is upon the Applicants to show that the instantly claimed 
subject matter is different from and unobvious over that taught by this 
reference." 

In response to Applicants' arguments filed April 1 1 , 1996 [Attachment 2], January 3, 
1996 [Attachment 9], and September 29, 1995, paper nos. 53, 50, and 5 1 , as well as 
the Affidavits filed September 29, 1995 and January 3, 1996 [Attachment 10], paper 
nos. 49 and 52, the Examiner states they "are not deemed to be persuasive", that is it 
is the Examiner's opinion that they are not persuasive, 



YO987-074BZ 



Page 29 of 187 



08/479,810 




The Examiner cites In re Brown, 173 USPQ 685, 688; In re Best, 195 USPQ 430; and 
In re Marosi, 218 USPQ 289, 293 to support his rejection. These decisions are not 
directed to whether a reference is a valid §1 02(a) reference and are thus not relevant to 
this issue. 

The Examiner is using Asahi Shinbum [Attachment 6] as a reference under 35 USC 
§1 02(a). Applicants disagree that this is proper since to do so does not permit 
Applicants the one year period provided under 35 USC §1 02(b) to file a US application 
after their own publication. The one year period permitted Applicants to file the present 
application up to September 1987. The date of the Asahi Shinbum article November 
28, 1986 is after the date of Applicants' publication, but before the end of the one year. 

Applicants believe that the Examiner has incorrectly applied 35 USC §1 02(a). The 
Court of Custom and Patent Appeal in In re Katz 215 USPQ 14, 17 states that: 

It may not be readily apparent from the statutory language that a printed 
publication cannot stand as a reference under §1 02(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 interpretation of this 
section of the statute would negate the one year period afforded under 
§1 02(b) 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. 



YO987-074BZ 



Page 30 of 187 



08/479,810 




Thus, one's own work is not prior art under §1 02(a) even though it has been disclosed 
to the public in a manner or form which otherwise would fall under §1 02(a). Disclosure 
to the public of one's 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 §1 02(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 on^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]. 

The Asahi Shinbum article [Attachment 6] states in the first paragraph, "The possibility 
of high T, superconductivity has been reported by scientists in Switzerland this spring". 
The "scientists in Switzerland' are the inventors of the present application. Applicants' 
invention was reported in Applicants 1 article [Attachment 3] which was submitted for 
publication in the Spring of 1986. 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 in error in rejecting Applicants claims under 35 USC §1 02(a) as anticipated 
by Asahi Shinbum and under 35 USC §103 as obvious over Asahi Shinbum. 



YO987-074BZ 



Page 31 of 187 



08/479,810 




In regard to the two-year grace period under a prior statute corresponding to 35 USC 
§1 02(b) the U.S. Supreme Court in Andrews v. Hovey, 123 US 267 (1887) states that: 

"The evident purpose of the section was to fix a period of limitation which 
should be certain, and require only a calculation of time, and should not 
depend upon the uncertain question of whether the Applicant had 
consented to or allowed the sale or use. Its object was to require the 
inventor to see to it that he filed his application within two years from the 
completion of his invention, so as to cut off all question of the defeat of 
his patent by a use or sale of it by others more than two years prior 
to his application, and thus leave open only the question of priority of 
invention. The evident intention of congress was to take away the right 
which existed under the act of 1836 to obtain a patent after an invention 
had for a long period of time been in public use, without the consent or 
allowance of the inventor; it limited that period to two years, whether 
the inventor had or had not consented to or allowed the public use." 
(Emphasis added) 

From this quote from Andrews v. Hovey, it is evident that the use or sale by others prior 
to filing a patent application by the inventor does not cut off the inventors right to obtain 
a patent so long as the inventor files the application within the statutory period which 
was 2 years at the time of the Andrews v. Hovey decision and is now 1 year under 35 
USC 102(b). (Applicants note that the U.S. Supreme Court cited Andrew Hovey with 
approval in Pfaff v. Wells.) Thus Prof. Tanaka's reproducing of Applicants' results 
reported in Applicants' article and the reporting of this in Asahi Shinbum article does 
"not cut off [Applicants'] right to obtain a patent" since Applicants have filed the present 
application within one year of the date of publication of Applicants' article. Applicants 



YO987-074BZ 



Page 32 of 187 



08/479,810 




note that the Supreme Court says that "the consent or allowance of the inventor" is not 
a factor in determining whether "a use" by another cuts off the one year period under 
§1 02(b). 

The Patent Office Board of Appeals in Ex parte Powell and Davies, 37 USPQ 285 
states in regard to the publication of applicant's foreign patent application before the 
filing of a U.S. application on October 5, 1936 on an invention described in the foreign 
patent application that: 

The Examiner has also rejected the claims on the printed specification of 
Applicants' own British application which appears from this record to have 
been published on August 27, 1936. We know of no authority for such a 
rejection. Neither section 3886 nor section 4887 R.S. warrants the 
rejection. Obviously, the publication could not have a date prior to 
Applicants' invention. There is no statute that requires an Applicant to 
make his invention in this country. 

Therefore, Applicants of the present invention can rely on their publication in Zeitschrift 
for Physik [Attachment 3] as evidence of their invention. Applicants note that the Board 
states that the statute does not require Applicants to make the invention in this country 
to get the benefit of the one year period under 35 USC §1 02(b). Therefore, the date of 
Applicants' invention is as least as early as the date of Applicants' publication which is 
before the date of the Asahi Shinbum article [Attachment 6]. 



YO987-074BZ 



Page 33 of 187 



08/479,810 




The Patent Office Board of Appeals in Ex parte Powell and Davies, 37 USPQ 285, 286 
further states: 

The Commissioner indicates in Ex parte Grosselin that the Examiner 
should consider whether the German patent was derived from Applicant 
and was in effect nothing more than a printed publication of Grosselin's 
invention. 

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. Appl. Phys. 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 application. The 
Asahi Shinbum article [Attachment 6] only reports the work of Applicants and that it was 
reproduced by Prof. Tanaka. This article is a disclosure of Applicants' "own invention" 
and clearly in the words of the Board in Ex parte Powell and Davies, "was derived from 
[Applicants] and [is] in effect nothing more than a printed publication of [Applicants'] 
own invention and cannot be used as a reference". 



YO987-074BZ 



Page 34 of 187 



08/479,810 




The Patent Office Board of Appeals in Ex parte Lemieux 148, 140 states that: 

Finally, we believe that our holding is consistent with decisions in 
interference practice wherein, even though in the usual case a party may 
not establish a priority date of invention by reference to activity in a foreign 
country, yet in an originality case where a party is seeking to prove that 
the other party derived from him so that there is only a single original 
inventor, he may be permitted to prove derivation by reference to activity 
abroad. ... By analogy, in the present case appellant has demonstrated 
that he is the single original inventor, there being no adverse party. 

Following this decision it is clear from the Asahi Shinbum article [Attachment 6] that 
Applicants are the "single original inventor" and that the Asahi Shinbum article is 
"derived" from Applicants and that Professor Tanaka's work reported in the Asahi 
Shinbum article [Attachment 6] is "derived" from Applicants as described in Applicants' 
Article [Attachment 3]. 

In In re Mathews 161 USPQ 276 (CCPA 1969) a patent to Dewey was cited under 35 
USC 102(e) against the application of Mathews. The Dewey patent disclosed but did 
not claim the invention claimed in the Mathews application. The claimed invention in 
the Mathews application was a circuit which Dewey disclosed to comply with 35 USC 
112 requirements. Mathews submitted Dewey's affidavit under 37 CFR 132 which 
stated that Mathews disclosed to Dewey the circuit which Dewey described but did not 
claim. The CCPA held that Dewey was not a reference under 35 USC 102(e) against 
Mathews application stating 162 USPQ 276, 278: 



YO987-074BZ 



Page 35 of 187 



08/479,810 




It necessarily follows that Dewey may not be relied upon to defeat 
Mathews' application since Dewey's disclosure, in view of the facts 
established in the record, is not inconsistent with the novelty of Mathews' 
claimed invention, That is, on the record here, Dewey derived his 
knowledge from Mathews who is "the original, first, and sole inventor." 

Following In re Mathews, it is necessary follows that the Asahi Shinbum article cannot 
be relied upon under 35 USC 102(a) to defect the present application since the Asahi 
Shinbum article states that Prof. Tanaka derived his knowledge from Applicants who 
are the original, first, and sole inventors. 

In re Mathews is directed to a reference under 35 USC 102(e) and not under §1 02(a). 
But this does not matter since under §1 02(e) an issued patent (which corresponds to a 
printed publication under §1 02(a)) is a reference as of the filing date (which 
corresponds to the publication date of a printed publication under §1 02(a)) and not the 
publication date (the issue date) of the §1 02(e) cited patent. Also, if the patent cited as 
a §1 02(e) reference had issued prior to the filing date of the applicant in In re Mathews, 
it would have been a §1 02(a) reference. Thus the rational of In re Mathews should 
apply to a reference cited under §1 02(a). The Asahi Shinbum article [Attachment 6] 
states that Prof. Tanaka derived his knowledge from Applicants article [Attachment 3] 
and that Prof. Tanaka reproduced Applicants' work reported in Applicants' article and 
thus Applicants are the original, first and sole inventor. 



YO987-074BZ 



Page 36 of 187 



08/479,810 




In response to Applicants comments on the cited decisions, the Examiner states, "The 
Applicants cite four decisions which do not directly apply to the present facts." 

Applicants disagree. 

In regards to In re Katz the Examiner states in the final rejection of the parent 
application: 

(a) The In re Katz decision held that an applicant may overcome an 
article as 35 USC 1 02(a) prior art by showing that the applicant was a 
co-author and that the other co-authors were under the direction and 
control of the applicant. Here, however, the Applicants were neither 
co-authors in the Asahi Shinbum article nor did they exercise direction 
and control over the work reported in that article. 

Applicants disagree. The Examiner does not cite the text of In re Katz to support this 
interpretation of In re Katz. In fact, In re Katz does not support the Examiner's position. 
In In re Katz an article co-authored by the patent applicant was cited against the 
Applicants 1 patent application under 35 USC 102(a). The application was filed less than 
one year after the article. In determining whether the article was prior art under 35 USC 
102(a), the CCPA states "[i]t may not be readily apparent from the statuary language 
that a printed publication can not stand as a reference under §1 02(a) unless it is 
describing the work of another." 215 USPQ 14, 17. The inventor submitted a 
declaration stating that he was the sole inventor of the subject matter described in the 
article and that the other authors were students working under his direction. The CCPA 



YO987-074BZ 



Page 37 of 187 



08/479,810 




concluded that "The applicant's declaration is sufficient in this case to overcome the 
rejection" under 35 USC 102(a). 215 USPQ 14, 18. There is no evidence of record 
that the Asahi Shinbum article [Attachment 6] describes any invention other than those 
of Applicants. In this regard the CCPA further states: 

As an initial matter, we hold that authorship of an article by itself does not 
raise a presumption of inventorship with respect to the subject matter 
disclosed in the article. Thus, co-authors may not be presumed to be 
coinventors merely from the fact of co-authorship. On the other hand, 
when the PTO is aware of a printed publication, which describes the 
subject matter of the claimed invention and is published before an 
application is filed (the only date of invention on which it must act in the 
absence of other proof), the article may or may not raise a substantial 
question whether the applicant is the inventor. For example, if the 
author (whether he is the applicant or not) specifically states that he 
is describing the work of the applicant, no question at all is raised. 
The content and nature of the printed publication, as well as the 
circumstances surrounding its publication, not merely its authorship, must 
be considered. (Emphasis added). 

It is clear form this passage that where the authors of an article are not the inventors of 
an invention described therein, the article is not necessarily a 102(a) reference. The 
above passage states "if the author (whether he is the applicant or not) specifically 
states that he is describing the work of Applicants, no question at all is raised", that the 
article is not a reference under § 102(a). The Asahi Shinbum article [Attachment 6] 
clearly states that Prof. Tanaka reproduced Applicants work reported in Applicants' 
article. There can be no question that the Asahi Shinbum article is not a reference 



YO987-074BZ 



Page 38 of 187 



08/479,810 



under § 102(a). Moreover, "the content and nature" of the Asahi Shinbum article "as 
well as the circumstances surrounding the publication" clearly show that it is describing 
Prof. Tanaka's reproduction of Applicants' work. A published article is an invitation to 
all readers to reproduce an verify the work reported. Thus the Asahi Shinbum article 
describes no invention other than that of Applicants. 

In regards to Andrews v. Hovey the Examiner states: 

(b) The Andrews v. Hovey" decision involved a grace period which is 
now codified in 35 USC 102(b). The present case involves a printed 
publication as prior art under 35 USC 102(a). 

The Examiner's comments miss the point of Andrews v. Hovey. As stated above, this 
case clearly says that "the use" by others prior to filing of the patent application by the 
inventors (which would be a §1 02(a) reference) does not cut off the right of the 
inventors to obtain a patent on the application filed within the statutory period under 
§1 02(b) form the inventors own printed publication. The Asahi Shinbum article 
[Attachment 6] describes "the use" of Applicants' invention by Prof. Tanaka. If such a 
use in the United States would not be prior art under §1 02(a), it is not possible for a 
printed publication describing such a use in a foreign country to be prior art under 
§1 02(a). 



YO987-074BZ 



Page 39 of 187 



08/479,810 




In regard to Ex parte Powell and Davies the Examiner states: 

(c) The Ex parte Powell and Davies" decision held that an applicant's 
own foreign patent which issued within the grace period cannot be used 
against him or her. 

The Examiner's comments miss the point of Ex parte Powell and Davies which explicitly 
states that "[t]here is no statute that requires an Applicant to make his invention in this 
country". Applicants initially made their invention in Zurich, before the date of the Asahi 
Shinbum article [Attachment 6]. Their results were published prior to the Asahi 
Shinbum article in Applicants' article [Attachment 3] which was in possession of the 
assignee of the present invention in the US prior to the date of the Asahi Shinbum 
article. Also, in Ex parte Powel and Davies the Applicant's British application was 
published before their application was filed in the United States and it was still not a 
valid §1 02(a) reference. 

In regard to Ex parte Lemieux, the Examiner states: 

The Ex parte Lemieux" decision applied that reasoning to an applicant's 
own article published in another country. Again, the present Applicants 
had no part in the writing of the Asahi Shinbum article. 

Again the Examiner's comments miss the point of Ex parte Lemieux which states "in an 
originality case where a party is seeking to prove that the other party derived from him 
so that there is only a single original inventor, he may be permitted to prove derivation 



YO987-074BZ 



Page 40 of 187 



08/479,810 



by reference to activity abroad". Here the Asahi Shinbum article [Attachment 6] says 
that Prof. Tanaka derived his work from the work of Applicants and thus the Asahi 
Shinbum article [Attachment 6] is not a reference against the present application. 

In regard to In re Mathews the Examiner states in the final rejection of the parent 
application: 

"In re Mathews, 161 USPQ 276, 277-279 (CCPA 1969), held that an 
applicant may overcome a patent as prior art under 35 USC 1 02(e) with 
evidence that the applicant provided the knowledge for the disclosure in 
that patent. By contrast, the present facts involve prior art under 35 USC 
102(a) with a publication date before the invention was in this country." 

In the present Application the Asahi Shinbum article [Attachment 6] acknowledges that 
Applicants provided the knowledge to Prof. Tanaka to reproduce Applicants work which 
is described in Applicants' article [Attachment 3]. And since the Asahi Shinbum article 
[Attachment 6] refers to Applicants' discovery, as stated above, for this purpose a 
§1 02(a) reference is equivalent to a 102(e) reference. 

The Examiner further states in the final rejection of the parent application: 

(3) The present facts may raise a novel issue of law." The Applicants 
were the first to develop the presently claimed invention, but the earliest 
date they can show that invention in this country is December of 1986." 
The Asahi Shinbum article was published in November of 1986 and 
describes the development of superconductivity with an oxide of La, Ba, 

YO987-074BZ Page 41 of 1 87 08/479,81 0 




and Cu having a perovskite structure by a third party, but that article 
apparently indicates that the third party was confirming the discovery of 
the present Applicants. Notwithstanding the possible uniqueness of the 
present facts, however, the Asahi Shinbum article still is deemed to be 
prior art under 35 USC 102(a), which the Applicants have not been able to 
overcome with a showing of an earlier date in this country or a showing of 
their direction and control over the work done by that third party. 

35 USC §1 02(a) and the cited case do not require work at an earlier date in this country 
to overcome reference cited under §1 02(a). Also, §1 02(a) and the cited case law do 
not require a showing that the Applicants exercised direction and control over Prof. 
Tanaka or the author of the Asahi Shinbum article [Attachment 6]. In fact, 35 USC 
§102 and the cited cases require a contrary result as Applicants have shown above. 
Notwithstanding, Applicants have shown that their conception was in this country in 
ready to file form, in the possession of the assignee of the present invention, prior to 
the date of the Asahi Shinbum article [Attachment 6]. 

Applicants have argued that if one would follow the rationale of the Examiner, that is, if 
an applicant publishes an article and some other third party reports that same result 
prior to applicant's filing of a patent application which is subsequently filed within one 
year of applicant's own publication, the reporting of applicant's work by the third party 
would be prior art against applicant's application. Such a result would deny (the 
applicant) the one year grace period provided under 35 USC 102(b). The Examiner 
dismisses this argument saying in the final rejection of the parent application: 



YO987-074BZ 



Page 42 of 187 



08/479,810 




"Applicants" argument is duly noted, but again, it is further noted that the 
reference is prior art under 3 5 USC 102(a). The reference is not just a 
republication of the Applicants' article. Instead, the reference is the 
reporting of someone else's work which confirms the Applicants' work. 
The Applicants also are not able to show a priority date which pre-dates 
the publication of that reference". 

The Examiner is ignoring the fact that the Asahi Shinbum article [Attachment 6] and the 
work of Prof. Tanaka reported on therein was derived from Applicants. The cases cited 
above clearly state that when a third party derives their knowledge from an applicant, 
the third party's knowledge, for use or for publication of the information is not prior art 
against such an Applicants' patent application. 

Applicants Have Proven They Can Swear Behind the Reference 

Even though, as stated by the U.S. Supreme Court in Pfaff v. Wells, it is not 
necessary to show anything more than a conception to establish a date of invention 
under all sections of 35 USC 102 other than §1 02(g), Applicants have proven by facts 
that the conception of their invention was in the United States at their direction prior to 
the date of the Asahi Shinbum article, November 28, 1986, and Applicants have proven 
that they were diligent from prior to the date of the Asahi Shinbum article by instructing 
coworkers in the United States until December 3, 1986 which is the date the Examiner 
believes is the earliest date of Applicants reduction to practice in the United States. 
(For the reasons of record Applicants believe that they have shown that their invention 
was reduced to practice in the United States prior to the date of the Asahi Shinbum 



YO987-074BZ 



Page 43 of 187 



08/479,810 




article). The examiner has not rebutted Applicants proof that Applicants conception 
was in the United States at their direction prior to the date of the Asahi Shinbum article 
and the Examiner has not denied that Applicants have proven that they were diligent by 
instructing coworkers in the United States from a time prior to the date of the Asahi 
Shinbum article until the date the Examiner believes is the date of Applicants' date of 
reduction to practice in the United States. The details of Applicants' proof are 
discussed at pages 22, line 8 to page 24, last line, of Applicants' Substitute Amendment 
dated March 6, 1997. That argument is reproduced in detail below. 

The Examiner's response to Applicants' proof is at page 19, paragraph d. ii of the final 
rejection of the parent application "[t]he Applicants further urge that they have shown 
clear diligence from before November 28, 1996 until actual reduction to practice at or 
around December 3, 1986. Nevertheless, the actual reduction in this country is 
deemed to have occurred on December 3, 1986, which is after the publication date for 
the reference." (As stated above the Examiner is in error that Applicants have to prove 
reduction to practice in this country before the date of the Asahi Shinbum article to 
avoid it as a §1 02(a) reference.) 

Willson v. Sherts 81 F 2d 775, 28 USPO 379 (CCPA 1936) held (in an interference) 
that an inventor who conceives an invention outside of the United States gets the 
benefit of the date that a third party, to whom the invention is disclosed, brings the 
conception into the United States (28 USPQ 379, 381) and that acts in this country 
done on behalf of the inventors can be used to show diligence to reduction to practice 



YO987-074BZ 



Page 44 of 187 



08/479,810 




in the United States (28 USPQ 379, 383). Thus, the rejections of Applicants' claims 
under 35 USC 102 and 103 over the Asahi Shinbum article [Attachment 6] should be 
withdrawn. 

It is noted that in the declaration of co-inventors J. G. Bednorz and K. A. Mueller dated 
March 21 , 1988, mailed into the patent office on June 22, 1988 [Attachment 10A] at 
paragraph 3, states "On approximately October 16, 1986, we gave Praveen Chaudhari 
... six samples of the high temperature superconductive ceramic oxide materials that we 
had described in our aforementioned Z Physik B. publication. Praveen Chaudhari 
brought these samples back to the U.S. when he returned after visiting with us on or 
about October 16, 1986." This is evidence that these samples are brought into the 
United States on or about October 16, 1986. When these samples came into the 
United States, since they were inherently superconductive as claimed, the invention 
was essentially reduced to practice in the United States on that date. It is further noted 
that the Declaration of Alexis P. Malozenoff signed March 30, 1988 [Attachment 11] 
states at paragraph 3, "On or about November 15, 1986, Richard Greene and I traveled 
to Baltimore for a magnetics conference. During our travel to Baltimore, we discussed 
Greene's ongoing experiments in high T c superconducting samples which he said had 
been received from Bednorz and Mueller." This is clear evidence that by November 15, 
1986, superconducting samples fabricated by applicant's were being measured in the 
United States. These samples were inherently superconducting and, consequently, 
established the reduction to practice in the United States as of that date. The 
Declaration of Cheng-Chung John Chi dated March 29, 1988 [Attachment 12] states at 



YO987-074BZ 



Page 45 of 187 



08/479,810 



paragraph 2, "At a time prior to approximately the middle of November, 1986, Chang C. 
Tsuei told me a measurement he made on T c superconducting material which he said 
were received from Georg Bednorz and K. A. Mueller, two physicists working for IBM 
Corporation in Zurich, Switzerland ... Chang Tsuei said that he had measured resistivity 
versus temperature of these samples." This is again further evidence that the Mueller 
Bednorz superconducting samples were in the United States prior to the middle of 
November 1986." 

In the Affidavit of Sung II Park, dated March 30, 1988 [Attachment 13], at paragraph 4, 
it is stated "the preparation in measurement of the aforementioned superconducting 
samples occurred at a date prior to November 15, 1986, and to the best of my 
recollection, occurred on or about November 9, 1986, the date when a Helium dower 
was pumped down preparatory to taking the actual measurement." Therefore, since 
measurements were taken prior to the date of publication of the Asahi Shinbum article, 
which was November 28, 1986 the invention was reduced to practice in the US prior to 
the publication date of the Asahi Shinbum article. 

At page 1 1 of the Examiner's Action dated April 19, 1996, in the paragraph labeled i, 
the Examiner states "the Applicants argue that Sung II Park affidavit of March 30, 1988 
states at para. 4 that measurements were taken of a superconductive sample on or 
before November 9, 1986, to the best of affiants recollection, or no later than November 
15, 1986. The document evidence is not deemed to support that argument, however." 
In the paragraph marked (1 ) on page 1 1 of PA, the Examiner states "plots of those 



YO987-074BZ 



Page 46 of 187 



08/479,810 




measurements are missing. See the Cheng C. Tseui affidavit of March 30, 1998 
[Attachment 14], para. 6." This statement comes directly out of Cheng Tseui's 
Declaration. Notwithstanding, Cheng Tseui's Declaration says the measurements were 
made, that the plots that were taken were missing. The last sentence of this paragraph 
states "I believe that they may have been inadvertently thrown away when the 
laboratory was subsequently extensively cleaned." The Examiner further states "a 
hand-drawn diagram with the indication of a vacuum pumped down on November 8, 
1988 also is not deemed to show that the measurements were taken." The Examiner is 
referring to paragraph 5 of the Cheng Tseui Declaration and Exhibit C which contains 
the hand-drawn figure. 

At paragraph (2) of page 1 1 of the Examiner's Action dated April 19, 1996, the 
Examiner points to cablegrams sent by Dr. Greene to Applicants in Zurich which are 
attached as Exhibit B to his Declaration [Attachment 15], The Examiner states "Dr. 
Greene reports that no indication of superconductivity has been seen in his specific 
heat measurements for temperature 4-35°K." The Examiner fails to note that in the 
same cablegram dated November 1 1 , 1986, Dr. Greene states "this is not really too 
surprising given the very broad transition to have found in resistivity and susceptibility." 
The Examiner acknowledges that "Exhibit C has pages dated December 1 , 1 986 on in 
Exhibit D, which actually has plots and resistance versus temperature dated as early as 
December 3, 1986." The Examiner is conceding that high T c superconductivity was 
measured on the samples which the very same set of cablegrams and affidavit say 
were in the United States in the middle of November 1986. Consequently, by 



YO987-074BZ 



Page 47 of 187 



08/479,810 



Examiner's own admission, samples which were in the United States were clearly 
shown to be superconducting as of December 3, 1986. Consequently, the samples that 
were in the United States as of November 9 were inherently superconducting. It is clear 
from the same declarations [Attachment 15] that Applicants' were communicating with 
Dr. Greene. It is noted that Dr. Greene's cablegram dated November 25, 1986 to 
Applicants states he will resume work on the new superconductor and that not much 
will happen because of the Thanksgiving Holiday until the following week. There are 
cablegrams dated November 26, December 1 , December 2, 1986 related to high T c 
superconductivity. Dr. Greene's Exhibit C has notebook pages dated December 1 , 
1986 to December 5, 1986. The December 5, 1986 shows T c of 26°K and 30°K. 

Exhibit D show a plot of R vs. T dated December 8, 1986. Clear reduction to practice is 
shown and clear diligence is shown from prior to the date of the Asahi Shinbum article 
[Attachment 6]. This was clearly done in close correspondence with the Applicants. 
Thus, the facts clearly shown applicant's can swear behind the Asahi Shinbum 
reference. 

The Examiner repeats the same arguments in the final rejection of the parent 
application without rebutting Applicants' arguments and proof that their conception was 
in this country at their direction and that their co-inventors in this country under their 
direction diligently pursued a reduction to practice in this country the earliest date of 
which according to the Examiner is December 3, 1986. 



YO987-074BZ 



Page 48 of 187 



08/479,810 




Applicants Invention Was Reduced To Practice In the US Before 

The Asahi Shinbum Article 

Attachment 41 of this response is a copy of a letter from C. W. Chu to Applicants dated 
December 3, 1986. This letter states: 

This is just to inform you that my group at the U. of Huston has 
reproduced your results (Z. Phys. B 64, 189 (86)) three weeks ago. ... I 
believe it is superconductivity. 

A journal article is an invitation to any one to reproduce the work reported therein . 
Thus a reader of the article is for that purpose under the direction and control of the 
author. Thus Applicants invention was reduced to practice in this country prior to the 
date of the Asahi Shinbum article at the direction and control of Applicants. 

The Examiner in the final rejection of the parent application repeats the earlier rejection 
stating: 

i. The Applicants argue that the Sung 1 1 Park Affidavit of March 30, 
1988 states at para. 4 that measurements were taken of a 
superconductive sample on or before November 9, 1986, to the best of 
the affiant's recollection, or no later than November 15, 1986. The 
documentary evidence is not deemed to support that argument, however. 
See MPEP 715.07. 



YO987-074BZ 



Page 49 of 187 



08/479,810 




(1) Plots of those measurements are missing. See the Chang C. Tsuei 
Affidavit of March 30, 1988, para. 6. A hand-drawn diagram with the 
indication of vacuum pumping on November 9, 1988 also is not deemed 
to show that the measurements were taken. 

(2) Moreover, the other evidence in the record appears to show that 
high temperature superconductivity was not attained in this country as of 
November 9 or 15, 1986. The March 30, 1986 Declaration of Richard L. 
Greene includes a series of cablegrams sent by Dr. Greene to the 
Applicants in Zurich, Switzerland as Exhibit B. On both November 1 1 , 
1986 and November 14, 1986, Dr. Greene reports that no indication of 
superconductivity has been seen in his specific heat measurements for 
temperatures of 4-35'K. Exhibit C has pages dated December 1 , 1986 on, 
and Exhibit D, which actually has plots of resistance vs. temperature, has 
an earliest date of December 3, 1 996. 

i. The Applicants argue that "Praveen Chaudhari brought these 
samples back to the U.S. when he returned after visiting (the inventors) on 
or about October 16, 1986. When these samples came into the United 
States since they were inherently superconductive as claimed, the 
invention was essentially reduced to practice in the United States on that 
date." As stated before repeated above, however, the Applicants were 
unable to show the attainment of superconductivity any earlier than 
December 3, 1986 in this country. Again, the present invention is directed 
to the method of superconducting electricity. That method apparently was 
not reduced to practice before December 3, 1986. 

ii. The Applicants further urge that they have shown clear diligence 
from before November 28, 1986 until actual reduction at or around 
December 3, 1986. Nevertheless, the actual reduction in this country is 



YO987-074BZ 



Page 50 of 187 



08/479,810 




deemed to have occurred on December 3, 1986, which is after the 
publication date for the reference. 

iii. The Applicants assert that they should be entitled to a one-year 
grace period for their own published invention, but this prior art rejection is 
based on 35 USC 102(a) because the author of that reference is a 
different inventive entity. 

1 9 The Applicants' proposed priority date for the EPO application is 
January 23, 1987, which is after the December 1986 dates show by the 
Richard L. Greene Affidavit. 

In these repeated rejections the Examiner has not responded to Applicants' arguments 
and thus has not rebutted any of them. Therefore, the Examiner concedes that 
Applicants 1 conception was in this country at their direction prior to the date of the Asahi 
Shinbum article [Attachment 6] and that coworkers in this country at Applicants' 
direction diligently reduced their invention to practice in the United States. 

Therefore, it is respectfully requested to reverse the rejection of claims under 35 USC § 
102(a) as anticipated by Asahi Shinbum article [Attachment 6]. 



YO987-074BZ 



Page 51 of 187 



08/479,810 




CLAIM REJECTIONS - 35 USC § 103 

Claims 24-26, 86-90, 96-135 and 137-177 of the final rejection of the parent application 
have been rejected under 35 U.S.C. § 103(a) as being unpatentable over Asahi 
Shinbum article. These claims correspond to claims 232-234, 255-279 and 281-321 
herein. 

Claim 136 of the parent application was allowed over the Asahi Shinbum article since 
according to the Examiner the examples in the present specification were deemed to 
show criticality for the formula of claim 136. Claim 136 corresponds to claim 280 of the 
present application. 

Since the present application was filed within one year of Applicants' article, Applicants' 
article [Attachment 3] is not a reference as to them (even though it would be a 
reference as to a third party). Thus the only portion of the Asahi Shinbum article 
relevant to Applicants' claims is: 

A new ceramic with a very high T c of 30K of the superconducting transition 
... is an oxide compound of La and Cu with Barium which has a structure 
of the so-called perovskite and shows metal-like properties. 

Since the Asahi Shinbum article refers to "T c of 30K" and since each of Applicants 
claims recites T c > 26 Q K, the Asahi Shinbum article alone cannot anticipate T c > 26 9 K 
since to be an anticipation a reference must contain all the limitations of the claim it is 
said to anticipate. Also, the Asahi Shinbum article [Attachment 6] provides no teaching 

YO987-074BZ Page 52 of 1 87 08/479,81 0 




of how to made the "new ceramic". A reference which does not provide a method of 
making a composition cannot anticipate a claim to the composition and thus to a use of 
that new composition. Also, the Asahi Shinbum article has no specific embodiment of 
the new composition. Thus it cannot anticipate under 35 USC 1 02. If as to 
Applicants the Asahi Shinbum article is not a valid §102 reference, the Asahi Shinbum 
article cannot render Applicants' claims obvious since to do so would render the Asahi 
Shinbum article a valid §102 reference against Applicants. 

As stated above the examiner's characterization of the Asahi Shinbum article does not 
accurately represent the teaching of this article. 

Applicants' article which is incorporated in Applicants' specification and priority 
document is directed to a Ba-La-Cu-0 system. Applicants' article [Attachment 3] was 
submitted for publication on April 17, 1986 to Z. Phys. B from the IBM Zurich Research 
Laboratory in Switzerland. Thus the only teaching in the Asahi Shinbum article 
[Attachment 6] relevant to Applicants' claimed invention is the teaching in Applicants' 
article which is incorporated by reference in the present application and referred to in 
the priority document. The Asahi Shinbum article provides no teaching relevant to 
Applicants' claimed invention other than the teaching in Applicants' article on how to 
make the ceramic "newly discovered" by Applicants. The Asahi Shinbum article states 
the Applicants' "newly discovered" ceramic "is an oxide compound of La and Cu with 
Barium which has a structure of the so-called perovskite and shows metal-like 
properties". This is described in detail in Applicant's article. Thus the examiner is 



YO987-074BZ 



Page 53 of 187 



08/479,810 




stating that it is obvious to a person of skill in the art to practice the invention of all of 
Applicants' non-allowed claims from the teaching of the Asahi Shinbum article which is 
the teaching of Applicants' specification which incorporates Applicants' article by 
reference. Applicants note that they received the Nobel Prize in Physics in 1987 for 
their discovery reported in Applicants article. Since Prof. Tanaka apparently only 
reproduced Applicants work based on Applicants' article, he did not share in the Nobel 
prize. Therefore, the examiner is stating that all of Applicants non-allowed claims are 
obvious in view of Applicants' teaching. 

Alternatively, the examiner is stating that all of applicant's non-allowed claims are 
obvious in view of the Asahi Shinbum article's [Attachment 6] statement that "[a] new 
ceramic with a very high T c of 30 K of the supper conductive transition has been found. 
... The ceramic newly discovered, is an oxide compound of La and Cu with Barium 
which has a structure of the so-called perovskite and shows metal-like properties. " 
Thus the examiner is stating that once a person of ordinary skill in the art knows that 
"an oxide compound of La and Cu with Barium which has a structure of the so-called 
perovskite and shows metal-like properties " has a "a very high T c of 30 K" the 
inventions of all of Applicants non-allowed claims can be made and used by such a 
person of ordinary skill in the art without any additional teaching other than what is 
known by a person of ordinary skill. 



YO987-074BZ 



Page 54 of 187 



08/479,810 




Applicants acknowledge that if a material is known to be a superconductor, a person of 
skill in the art would know to cool the material to below the T c and to flow a 
superconducting current therein at that temperature. Prior to the date of Applicants' 
invention, which is at least as early as the date on which Applicants' article was 
published by Z. Phys. B no one knew that transition metal oxides had a T c > 26 Q K 
except for Applicants. As stated above the Asahi Shinbum article describes no 
invention other than that of Applicants and is thus not a valid reference. 

Therefore, it is respectfully requested to withdraw the rejection of claims under 35 USC 
§1 03 as obvious over the Asahi Shinbum article. 



YO987-074BZ 



Page 55 of 187 



08/479,810 




OBJECTION TO THE SPECIFICATION UNDER 35 USC 112 

The Examiner states in the final rejection of the parent application: 

5. The specification is objected to under 35 U.S.C. § 1 1 2, first 
paragraph, as failing to provide an enabling disclosure commensurate 
with the scope of the claims. 

Applicants disagree. The specification incorporates by reference Applicants' article 
[Attachment 3]. In the rejection under 35 USC 102 and 103 over the Asahi Shinbum 
article [Attachment 6], the examiner has stated that a person of skill in the art is enabled 
to practice the inventions of Applicants' non-allowed claims by the mere statement that 
a Ba-La-Cu-0 compound has been confirmed to be superconductive as described by 
Applicants in their article. The examiner's objection to the specification is inconsistent 
with the examiner's rejection under 35 USC 102(a) and 103(a). 

The text of the Asahi Shinbum article [Attachment 6] merely states that Prof. Tanaka 
reproduced Applicants' work. Thus, the Examiner has stated that all of the inventions 
of Applicants' non-allowed claims are contained within the Asahi Shinbum article and 
thus are fully enable by Applicants' article. The Examiner has also rejected all of 
Applicants' non-allowed claims under 35 USC §1 03(a) in view of the Asahi Shinbum 
article. This means that nothing more is needed than what is described in Applicants' 
article and ordinary skill to practice all of Applicants non-allowed claims. 



YO987-074BZ 



Page 56 of 187 



08/479,810 




The Examiner further states in the final rejection of the parent application: 

a. The present specification is deemed to be enabled only for 
compositions comprising BaxLa 5 -xCuO Y . 

The Examiner again used the terminology "deemed" which means that it is the 
Examiner's conclusory unsupported "opinion". The Examiner has introduced no factual 
evidence to support the Examiner's "opinion" that "[t]he present specification is deemed 
to be enabled only for compositions comprising Ba x La 5 -xCuOY." As shown below, the 
specification cites a substantially large number of specific compositions, and provides 
sufficient teaching to enable a person of skill in the art to practice Applicants' invention. 

The Examiner further states in the final rejection of the parent application: 

The art of high temperature (above 30 K) superconductors is an extremely 
unpredictable one. Small changes in composition can result in dramatic 
changes in or loss of superconducting properties. The amount and type 
of examples necessary to support broad claims increases as the 
predictability of the art decreases. Claims broad enough to cover a large 
number of compositions that do not exhibit the desired properties fail to 
satisfy the requirements of 35 USC 112. Merely reciting a desired result 
does not overcome this failure. In particular, the question arises: Will any 
layered perovskite material containing copper exhibit superconductivity? 
Also, does any stoichiometric combination of rare earth, an alkaline earth, 
and copper elements result in an oxide superconductor? 



YO987-074BZ 



Page 57 of 187 



08/479,810 




The Examiner provides no factual evidence to support the statement "[t]he art of high 
temperature (above 30 K) superconductors is an extremely unpredictable one." This is 
an opinion of the Examiner. As shown herein the basic theory of Superconductivity has 
been known since 191 1 as indicated in the book by von Laue "Theory of 
Superconductivity" [Attachment 42]. The Examiner should withdraw the rejection, 
provide factual evidence to support the opinion or submit an examiner's affidavit under 
MPEP 706.02(a) qualifying himself as an expert in the art of high T c superconductors to 
offer such a conclusory opinion. It is Applicants' teaching that controlling the amount of 
the constituents of the composition, such as oxygen content, effect the superconductive 
properties of the composition. It is a matter of routine experimentation to find the 
optimum constituents, such as oxygen content, for a particular high T c superconducting 
composition. Applicants do not have to provide experimental results for every 
composition that fall within the scope of their claims when a person of skill in the art 
exercising routine experimentation has a reasonable expectation of success following 
Applicants teaching to achieve a composition through which can be flowed a 
superconducting current according to the teaching of Applicants' specification. 

According to In re Angstadt 190 USPQ 214, 218 in an unpredictable art, §1 12 does not 
require disclosure of a test with every species covered by a claim. The CCPA states: 

To require such a complete disclosure would apparently necessitate a 
patent application or applications with "thousands" of examples or the 
disclosure of "thousands" of catalysts along with information as to whether 
each exhibits catalytic behavior resulting in the production of 



YO987-074BZ 



Page 58 of 187 



08/479,810 




hydroperoxides. More importantly, such a requirement would force an 
inventor seeking adequate patent protection to carry out a prohibitive 
number of actual experiments. This would tend to discourage inventors 
from filing patent applications in an unpredictable area since the patent 
claims would have to be limited to those embodiments which are 
expressly disclosed. A potential infringer could readily avoid "literal" 
infringement of such claims by merely finding another analogous catalyst 
complex which could be used in "forming hydroperoxides." 

The Examiner provides no evidence to support he examiner's statement that "[t]he 
amount and type of examples necessary to support broad claims increases as the 
predictability of the art decreases." The examiner has provided no evidence that the 
predictability of art of high T c superconductivity is low. The Examiner's statement that 
"[c]laims broad enough to cover a large number of compositions that do not exhibit the 
desired properties fail to satisfy the requirements of 35 USC 112." implies that 
Applicants claims "cover a large number of compositions that do not exhibit the desired 
properties" of high T c superconductors. The Examiner has provided no evidence to 
support the examiners' implication. In fact, the claims do not cover any compositions 
that do not exhibit the desired properties of high T c superconductors. Applicants claims 
only cover superconductors having T c > 26 Q K which carry a superconductive current. 
Applicants' claims are not composition of matter claims. 



YO987-074BZ 



Page 59 of 187 



08/479,810 



# 



The Examiner's attention is directed to the following comments from the specification at 
page 1, lines 5-10: 

"This invention relates to ... superconducting compositions including 
copper and/or transition metals." 

The specification further states at page 5, lines 2-9 that: 

It is another object of the present invention to provide novel 
superconductive materials that are multi-valent oxides including transition 
metals, the compositions having a perovskite-like structure. 

It is a further object of the present invention to provide novel 
superconductive compositions that are oxides including rare earth and/or 
rare earth-like atoms, together with copper or other transition metals that 
can exhibit mixed valent behavior. 

The specification further states at page 8, lines 1-11, that "[A]n example of a 
superconductive composition having high T c is the composition represented by the 
formula RE-TM-O, where RE is a rare earth or rare earth-like element, TM is a 
nonmagnetic transition metal, and 0 is oxygen. Examples of transition metal elements 
include Cu, Ni, Cr etc. In particular, transition metals that can exhibit multi-valent states 
are very suitable. The rare earth elements are typically elements 58-71 of the periodic 
table, including Ce, Nd, etc. If an alkaline earth element (AE) were also present, the 
composition would be represented by the general formula RE-AE-TM-O." 



YO987-074BZ 



Page 60 of 187 



08/479,810 




And at page 7, lines 14-15, the specification states that "the rare earths site can also 
include alkaline earth elements." 

The specification further states at page 11, lines 19-24, that "An example of a 
superconductive compound having a layer-type structure in accordance with the 
present invention is an oxide of the general composition RE 2 TM0 4 , where RE stands for 
the rare earths (lanthanides) or rare earth-like elements and TM stands for a transition 
metal." 

The composition RE 2 TM0 4 :RE is referred to at page 24, lines 5-9; RE 2 .xTM x 04-y is 
referred to at page 25, lines 19-21. 

The following specific compounds are recited in the application: 

Ba^as-xCusOst^y) at page 10, lines 4, 10, 14. 
La 2 - x BaxCu04. y at page 12, line 13 
La 2 -xBa x Ni04-y at page 1 2, line 13 
La 2 .xSnxNi04. y at page 1 2, line 1 7 
Ce 2 -xCu x Ni0 4 -y at page 12, line 19 
La 2 Cu0 4 at page 12, line 21 

La 2 Cu0 4 - y with Sr 2x , Ba 2x and Ca 2 * substitution at page 13, line 17 

La 2 -xSn x Cu04- y at page 17, line 21 

La 2 - x Ca x Cu0 4 - y at page 17, line 21 

La 2 .xBaxCu0 4 .y at page 18, line 6 

La 2 Cu0 4 :Ba at page 18, line 15 

La 2 CuQ 4 :Ba at page 24, line 6 



YO987-074BZ 



Page 61 of 187 



08/479,810 




Nd 2 Ni0 4 :Sn at page 24, line 9 

La 2 Cu0 4y doped with Sn 2x , Ca 2x and Ba 2x at page 25, lines 6-18 

Other compounds are given in the articles to B. Raveau, in Mat. Res. Bull., Vol. 20 
(1985) pp. 667-671 [Attachment 15A], and to C. Michel et al. in Rev. Claim. Min. 21 
(1984) 407 [Attachment 15B], both of which are incorporated by reference at page 13, 
lines 4-5. 

The Examiner cites In re Fisher, 166 USPQ 18, In re Angstadt and Griffen, 150 USPO 
214, and In re Golianni, 195 USPQ 150, in support of the statement "[t]he amount and 
type of examples necessary to support broad claims increases as the predictability of 
the art decreases". 

The claims under appeal In re Fisher are directed to increasing the potency of 
substances containing ACTH hormones for injection into human beings. In regards to 
the rejection for insufficient disclosure under 35 USC 1 12 the CCPA states that: 

"the issue thus presented is whether an inventor with the 
first to achieve potency of greater that 1 .0 for certain types 
of compositions, which potency was long designed because 
of its beneficial effects on humans, should be allowed to 
dominate all compositions having potencies greater 1 .0, thus 
including future compositions having potencies in excess of 
those obtainable from his teachings plus ordinary skill." 166 
USPQ 18, 23-24 (emphasis in the original). 



YO987-074BZ 



Page 62 of 187 



08/479,810 



The CCPA goes on to say in In re Fisher that: 

"It is apparent that such an inventor should be allowed to 
dominate the future patentable inventions of others where 
those inventions were based in some way on his teachings. 
Such improvements, while unobvious from his teachings, are 
still within his contribution, since the improvement was made 
possible by his work. It is equally apparent, however, that 
he must not be committed to achieve this dominance by 
claims which are insufficiently supported and hence, not in 
compliance with the first paragraph of 35 USC 112. That 
paragraph requires that the scope of the claims must bear a 
reasonable correlation to the scope of enablement provided 
by the specification to persons of ordinary skills in the art... 
In cases involving unpredictable factors, such as most 
chemical reactions... the scope of enablement obviously 
varies inversely with the degree of unpredictability of the 
factors involved." (166 USPQ 18, 24) 

Applicants of the present invention have provided the first teaching that transition metal 
oxides can form a superconductor having a critical temperature in greater than or equal 
to 26% therefore, "is apparent that such an [applicant] should be allowed to dominate 
the future patentable inventions of others when those inventions [are based in some 
way on Applicants] teaching" as stated by the CCPA in In re Fisher Supra. 

In the present invention Applicants are acknowledged to be the pioneers of high T c 
superconducting metal oxides. The Examiner has produced no evidence that invention 



YO987-074BZ 



Page 63 of 187 



08/479,810 



# 



which come within the scope of Applicants' claim cannot be achieved by persons of skill 
in the art based on Applicants teaching. The affidavits of Mitzi [Attachment 16], Dinger 
[Attachment 17], Tsuei [Attachment 18], Shaw [Attachment 19] and Duncombe 
[Attachment 20] and the book of Poole et al. state [Attachment 21] it is straight forward 
to use the general principles of ceramic science to make high T c superconductors 
following Applicants teaching. 

The claimed invention in re Angstadt and Griffen (190 USPQ 214) involves a methods 
of catalycally oxidizing alkylaromatic hydrocarbons to form a reaction comprising the 
corresponding hydroperoxides. The method employs catalysts. The Examiner rejected 
all the claims under 35 USC 112, first and second paragraphs. The Board's rational for 
affirming the Examiner's rejection was directed primarily to the enablement required of 
the first paragraph. 



The CCPA reversing stated that: 



"what is a maximum concern in the analysis of whether a 
particular claim is supported by the disclosure in an 
application, is whether the disclosure contains sufficient 
teaching regarding the subject matter of the claims as 
enabled one of skill in the art to make and to use the 
claimed invention. These two requirements 'how to make' 
and 'how to use' have some times been referred to in 
combination as the 'enablement requirement'... The 
relevancy may be summed up as being whether the scope 
of enablement provided to one of ordinary skill in the art by 

YO987-074BZ Page 64 of 187 



08/479,810 



# 



the disclosure as such as to be commensurate with the 
scope or protection sought by the claims. (190 USPQ 
214,47 citing In re Moore 169 USPQ). 

In the attached affidavits under 37 CFR 132, Dr. T. Dinger [Attachment 17], Dr. Tsuei 
[Attachment 18], Dr. Shaw [Attachment 19], Mr. Duncombe [Attachment 20] and Dr. D. 
Mitzi [Attachment 16] state: 



"That once a person of skill in the art knows of a specific 
transition metal oxide composition which is superconducting 
above 26°K, such a person of skill in the art, using the 
techniques described in the above-identified patent 
application, which includes all known principles of ceramic 
fabrication, can make the transition metal oxide 
compositions encompassed by claims 24-26, 86-90 and 
96-108, without undue experimentation or without requiring 
ingenuity beyond that expected of a person of skill in the art. 
This is why the work of Bednorz and Muller was reproduced 
so quickly after their discovery and why so much additional 
work was done in this field within a short period of their 
discovery." 

In the paragraph at the bottom of page 15 of the specification, it is stated that: in regard 
to compositions according to the present invention that "their manufacture generally 
follows the known principles of ceramic fabrication." Thereafter, an example of a typical 
manufacturing process is given. 



YO987-074BZ 



Page 65 of 187 



08/479,810 



The CCPA in In re Angstadt and Griffen further states that: 

"we cannot agree with the Board that Appellants' disclosure 
is not sufficient to enable one of ordinary skill in the art to 
practice the invention without undue experimentation. We 
note that many chemical processes and catalytic processes 

particularly, are unpredictable and the scope of 

enablement varies inversely with the degree of 
unpredictability involved... The question, then, whether in an 
unpredictable art, section 112 requires the disclosure of a 
test with every species covered by a claim. To require such 
a complete disclosure will apparently necessitate a patent 
application or applications with 'thousands ' of examples... . 
More importantly, such a requirement would force an 
inventor to seek adequate patent protection to carry out a 
prohibited number of natural experiments. This would tend 
to discourage inventors in filing patent applications in an 
unpredictable area since the patent claim would have to be 
limited those embodiments which are expressly disclosed. 
A potential infringer could readily avoid 'infringement of such 
claims' by merely finding another analogous (example) 
which could be used..." 190 USPQ 124, 218. 

The CCPA in In re Angstadt further goes on to say 

"having decided that appellants are not required to disclose 
every species encompassed by the claims even in an 
unpredictable art such as the present record presents, each 



YO987-074BZ 



Page 66 of 187 



08/479,810 



case must be determined on its own facts." 190 USPQ 214, 
218. (emphasis in the original). 



regards to the catalyst In re Angstadt and Griffen CCPA further states: 



"since appellants have supplied the list of catalysts and have 
taught how to make or how to use them, we believe that the 
experimentation required to determine which catalyst will 
produce hydroperoxide would not be undo and certainly 
would not 'require ingenuity beyond that to be expected of 
one of ordinary skill in the art'. 190 USPQ, 214, 218 in re 
Field v. Connover 170 USPQ, 276, 279 (1971). 

As stated in the affidavits of Dr. Dinger [Attachment 17], Dr. Tsuei [Attachment 18], Dr. 
Shaw [Attachment 19], Mr. Duncombe [Attachment 20] and Dr. Mitzi [Attachment 16], to 
make the high temperature superconductors encompassed by Applicants' claims, 
using the teaching of the present invention would not require ingenuity beyond that 
expected of one of ordinary skill in the art. 



The CCPA in In re Angstadt further states that: 



"the basic policy of the Patent Act, which is to encourage 
disclosure of inventions and thereby to promote progress in 
the useful arts. To require disclosures in patent applications 
to transcend the level of knowledge of those skilled in the art 
would stifle the disclosure of inventions in fields man 
understands imperfectly." 190 USPQ 214, 219. 



YO987-074BZ 



Page 67 of 187 



08/479,810 



• 



The CCPA further states that: 

"the certainty which the law requires in patents is not greater 
than is reasonable." 242 USPQ, 270-271, cited in In re 
Angstadt. 190 USPQ 214, 219. 

In re Angstadt further states at 1 90 USPQ 21 9: 

We note that the PTO has the burden of giving reasons, 
supported by the record as a whole, why the specification is 
not enabling. In re Armbruster, 512 F.2d 676, 185 USPQ 
152 (CCPA 1975). Showing that the disclosure entails 
undue experimentation is part of the PTO's initial burden 
under Armbruster; this court has never held that evidence is 
necessary for any experimentation, however slight, is 
sufficient to require the applicant to prove that the type and 
amount of experimentation needed is not undue. 

By calling the claimed "invention" the "scope of protection 
sought" the dissent obscures the problem and frustrates the 
intended operation of the patent system. Depriving 
inventors of claims which adequately protect them and 
limiting them to claims which practically invite appropriation 
of the invention which avoiding infringement inevitably has 
the effect of suppressing disclosure. What the dissent seem 
to be obsessed with is the thought of catalysts which won't 
work to produce the intended result. Applicants have 
enabled those in the art to see that this is a real possibility, 



YO987-074BZ 



Page 68 of 187 



08/479,810 




which is commendable frankness in a disclosure. Without 
undue experimentation or effort or expense the 
combinations which do not work will readily be discovered 
and, of course, nobody will use them and the claims do not 
cover them. The dissent wants appellants to make 
everything predictable in advance, which is impracticable 
and unreasonable. 

We hold that the evidence as a whole, including the 
inoperative as well as the operative examples, negates the 
PTO position that persons of ordinary skill in this art, given 
its unpredictability, must engage in undue experimentation 
to determine which complexes work. The key word is 
"undue," not "experimentation." 



The only facts which the Examiner offers as evidence of unpredictability are examples 
provided in Applicants' specification. The CCPA in In re Angstadt says that this is 
"commendable frankness" which is not to be held against Applicants. The Examiner 
has provided no evidence that a person of skill in the art has to engage in undue 
experimentation to practice Applicants non-allowed claims. The affidavits of Mitzi 
[Attachment 16], Dinger [Attachment 17], Tsuei [Attachment 18], Shaw [Attachment 19] 
and Duncombe [Attachment 20] and the book of Poole et al. [Attachment 21] indicate 
that persons of skill in the art do not have to engage in undue experimentation to 
practice Applicants' invention. 



YO987-074BZ 



Page 69 of 187 



08/479,810 




The Examiner cited In re Colianni 195 USPQ 150 which Applicants believe is not on 
point since in In re Colianni "[t]here is not a single specific example or embodiment by 
way of an illustration of how the claimed method is to be practiced." (195 USPQ 150, 
152). In contradistinction as noted above, there are numerous examples cited in 
Applicants' specification and incorporated references. Thus this decision is not on 



"Showing that the disclosure entails undue experimentation is part of the PTO's initial 
burden." In re Armbruster 185 USPQ 152, 504. 

"The practical approach followed consistently by [the CCPA] places the initial burden 
on the PTO to show that the enabling disclosure is not commensurate in scope with the 
claim. Upon such a showing, the burden of rebuttal shifts to Applicants". In re Coliani 
195 USPQ 150. 

"However, [the CCPA] has made it clear that the Patent and Trademark Office must 
substantiate its rejections for lack of enablement with reasons" In re Armbruster 185 
USPQ 152, 153. 

The Examiner has merely asserted without support that "the art of high temperature 
superconductivity is unpredictable...". 



point. 



YO987-074BZ 



Page 70 of 187 



08/479,810 



The CCPA in In re Marzocchi, 58 CCPA 1069, 439 F. 2d 220, 169 USPQ 367, 369-370 
(1971) states: 

"The only relevant concern of the Patent Office under these 
circumstances should be over the truth of any such assertion. The first 
paragraph of §1 12 requires nothing more than objective enablement. 
How such a teaching is set forth, either by the use of illustrative examples 
or by broad terminology, is of no importance. 

As a matter of Patent Office practice, then, a specification disclosure 
which contains a teaching of the manner and process of making and 
using the invention in terms which correspond in scope to those used in 
describing and defining the subject matter sought to be patented must be 
taken as in compliance with the enabling requirement of the first 
paragraph of §1 12 unless there is reason to doubt the objective truth of 
the statements contained therein which must be relied on for enabling 
support. Assuming that sufficient reason for such doubt does exist, a 
rejection for failure to teach how to make and/or use will be proper on that 
basis; such a rejection can be overcome by suitable proofs indicating that 
the teaching contained in the specification is truly enabling... 

[I]t is incumbent upon the Patent Office, whenever a rejection on this 
basis is made, to explain why it doubts the truth or accuracy of any 
statement in a supporting disclosure and to back up assertions of its own 
with acceptable evidence or reasoning which is inconsistent with the 
contested statement. Otherwise, there would be no need for the applicant 
to go to the trouble and expense of supporting his presumptively accurate 
disclosure. [Emphasis in original footnote deleted]. 



YO987-074BZ 



Page 71 of 187 



08/479,810 



• 



Applicants have submitted herewith affidavits of Dr. Mitzi [Attachment 16], Dr. Tsuei 
[Attachment 18], Dr. Shaw [Attachment 19], Mr. Duncombe [Attachment 20] and Dr. 
Dinger [Attachment 17] under 37 CFR 132 which state, as quoted above, that once a 
person of skill in the art knows of Applicants' work, the compositions encompassed by 
the claims under experimentation, can be made using the teaching of Applicants 
without undue experimentation. 

Thereby rebutting the Examiner's statement that: 

"[the specification ... [fails] to provide an enabling disclosure 
commensurate with the scope of the claims." 

The Examiner cites In re Cooks and Cosden Oil v. American Hoechst to support the 
statement "[c]laims broad enough to cover a large number of compositions that do not 
exhibit the desired properties fail to satisfy the requirement of 35 USC 112." Applicants 
claims do not read on any inoperative specifies since Applicants' claims are apparatus 
of use claims. A composition which does not have a T c > 26°K is not within the scope 
of the claims. Thus these decisions are not on point. 

The Examiner cites In re Corkill as support for this statement "[m]erely reciting a desired 
result does not overcome this failure". The CAFC held "[c]laims which include a 
substantial measure of inoperatives ... are fairly rejected under 35 USC 112." 
Applicants' claims include no inoperatives. Since Applicants claims are apparatus for 
use claims they are functional and thus exclude inoperatives. "[T]he use of functional 



YO987-074BZ 



Page 72 of 187 



08/479,810 




language is sanctioned specifically by ... section 112." In re Angstadt 190 USPQ 214, 
217. 

The Examiner cited Brenner v. Manson for the statement "a patent is not a hunting 
license. It is not a reward for the search, but a reward for its successful conclusion." 
The claim in question was a method of making a composition. The composition had no 
known use. The method was found to lack utility and thus is not be patentable. This is 
not relevant to §112, first paragraph. Thus this decision is not on point. Moreover, 
Applicants have had a successful conclusion, they won a Nobell Prize and initiated and 
enabled the high T c art. 

The Examiner queries "[w]ill any layered perovskite material containing copper exhibit 
superconductivity?" and "does any stoichiometric combination of rare earth, an alkaline 
earth, and copper elements result in an oxide superconductor?" Since Applicants 
claims are directed to apparatus of using compositions, Applicants' claims read on only 
those layered perovskite materials which exhibit superconductivity with a T c > 26 e K and 
do not read on apparatus of use of compositions which are not superconductive. Thus 
the Examiner's queries is not relevant to Applicants claims. Applicants are not claiming 
a composition which is a high T c superconductor. Thus Applicants claims do not read 
on any layer perovskite, or any other stoichiometric combination, but only on those 
apparatus carrying a high T c superconducting current. Apparatus of use claims are 
inherently narrower in scope than composition claims. 



YO987-074BZ 



Page 73 of 187 



08/479,810 




# 



The paragraph bridging pages 13 and 14 refer to Ba-La-Cu-0 systems having different 
crystallographic phases having Cu 3 * and Cu 2+ ions or Ni 3+ and Ni 2+ ions. 

Claim 247 of the present invention recites "a copper oxide compound having a 
layer-type-perovskite-like crystal structure, the copper oxide compound including at 
least one rare-earth or rare-earth-like element, and at least one alkaline-earth element". 
In regard to the stated elements, the rare earth elements are defined in the 
specification at pate 7, lines 9-12 to the "a group NIB element, such as La." Group IIIB 
includes Sc, Y, La and Ac, rare earth-like or near rare earth. The rare earth elements 
are elements 58 to 71 . This group contains four elements from group IIIB and fourteen 
elements from the rare-earth for a total of 18 elements. The alkaline earths contain the 
elements of Group A which has 6 elements. 

The Examiner further states in the final rejection of the parent application: 

It should be noted that at the time the invention was made, the theoretical 
mechanism of superconductivity in these materials was not well 
understood. That mechanism still is not understood. Accordingly, there 
appears to be little factual or theoretical basis for extending the scope of 
the claims much beyond the proportions and materials actually 
demonstrated to exhibit high temperature superconductivity. A "patent is 
not a hunting license. It is not a reward for the search, but a reward for its 
successful conclusion".' 



YO987-074BZ 



Page 74 of 187 



08/479,810 



The Examiner has provided no evidence to support the statement "that at the time the 
invention was made, the theoretical mechanism of superconductivity in these materials 
was not well understood. That mechanism is still not understood." Applicants request 
the Examiner to introduce evidence to support this statement or to place an Examiner's 
affidavit under MPEP 706.02(a) qualifying the Examiner as an expert to make this 
statement. The Examiner further states "there appears to be little factual or theoretical 
basis for extending the scope of the claims much beyond the proportions and materials 
actually demonstrated to exhibit high temperature superconductivity." This is the 
Examiner's unsupported opinion. The five affidavits of Mitzi [Attachment 16], Dinger 
[Attachment 17], Tsuei [Attachment 18], Shaw [Attachment 19] and Duncombe 
[Attachment 20] under 37 CFR 1 .132 and the book to Poole et al. [Attachment 21] 
described below provide factual evidence supporting Applicants position that once a 
person of skill in the art knew from Applicant's article that compositions, such as 
transition metal oxides, were high T c superconductors, it was a matter of routine 
application of the general principles of ceramic science to fabricate compositions, such 
as transition metal oxide superconductors, other than those actually made by 
Applicants. Quoting "Brenner v. Manson", 283 US 518, 148 USPQ 689, the Examiner 
further states that a "patent is not a hunting license. It is not a reward for the search, 
but a reward for its successful conclusion." The evidence introduced by Applicants 
clearly shows that Applicant's article upon which the present application is based had a 
very successful conclusion. Applicants started the field of high T c superconductivity. All 
the further developments were based on Applicants teaching. Moreover, the issue in 
Brenner v. Manson was the patentability of a method to fabricate a composition. The 



YO987-074BZ 



Page 75 of 187 



08/479,810 



composition had no use. The method was found not patentable for lack of utility. To 
issue a patent for such a process would be granting a hunting license for a utility that 
may occur in the future. This case has nothing to do with §112 enablement. 

In view of the above Applicants request withdrawal of Examiner's objection to the 
specification. 



YO987-074BZ 



Page 76 of 187 



08/479,810 



CLAIM REJECTIONS UNDER 35 USC §112, FIRST PARAGRAPH 

Claims 24-26, 86-90, 96-1 13, 129-131, 134, 135, and 139-177 of the parent application 
were rejected under 35 U.S.C. § 1 12, first paragraph, for the same reasons set forth by 
the Examiner in the objection to the specification. These claims correspond to claims 
232-257, 273-275, 278, 279 and 283-321 . Applicants disagree for the same reasons 
why Applicants disagreed to the objection to the specification above. The Examiner 
provided specific comments only in regards to claims 24, 86, 88, 96 and 103 of the 
parent application. 

Applicants disagree with the Examiner's statement that Applicants' arguments filed April 
11,1 996, January 3, 1 996, and September 29, 1 995, paper nos. 53, 50, and 5 1 , as 
well as the Affidavits filed September 29, 1995 and January 3, 1996, paper nos. 49 and 
52, have been fully considered but they are not deemed to be persuasive. The 
arguments of those papers are incorporated herein by reference. Since the entire 
ancestral file history of the present application is being submitted in a subsequent 
paper, these papers incorporated by reference are formally included in the record of 
this application. 

The Examiner further states in the final rejection of the parent application: 

"The additional case law and arguments by the Applicants have been duly 
noted. For the reasons that follow, however, the record as a whole is 
deemed to support the initial determination that the originally filed 



YO987-074BZ 



Page 77 of 187 



08/479,810 




disclosure would not have enabled one skilled in the art to make and use 
the invention to the scope that it is presently claimed." 

The Examiner again uses the word "deemed", that is, it is the Examiner's conclusory 
opinion unsupported by any factual evidence. The quoted passage is completely 
contrary to the Examiner's rejection under 35 USC 102(a) and 103(a). Under these 
rejections the Examiner found the Asahi Shinbum article [Attachment 6] would have 
enabled one skilled in the art to make and use the invention to the scope that it is 
presently claimed. As noted above, the Asahi Shinbum article relies upon Applicants 
article [Attachment 3]. Applicants' view is further supported by the five affidavits of Mitzi 
[Attachment 16], Tsuei [Attachment 18], Dinger [Attachment 17], Shaw [Attachment 19] 
and Duncombe [Attachment 20] under 37 CFR 1 .132 and the book of Poole 
[Attachment 21] which will be described below and which states that once it was known 
from Applicants article that transition metal oxides, were superconductive at 
temperatures above greater than or equal to 26°K, other high T c materials, such as 
transition metal oxides, could be made by a person of skill in the art using the teaching 
of Applicants and the general teachings of ceramic science. 

The Examiner further states in the final rejection of the parent application: 

ii. The Applicants quote several passages from their specification at 
pp. 13-15 of their September 29, 1995 Amendment, but the issue is the 
scope of enablement, not support. The present disclosure may or may 
not provide support for particular embodiments, but the issue here is the 
scope to which that disclosure would have taught one skilled in the art 



YO987-074BZ 



Page 78 of 187 



08/479,810 




how to make and use a composition which shows the onset of 
superconductivity at above 26°K. 

Applicants are not required to provide experimental evidence for every species within 
the scope of their claims. The entire filed of high T c superconductivity is based on 
Applicants' work, in particular, on Applicants' article. This affidavit of James W. 
Leonard under 37 CFR 1 .132 submitted on December 15, 1998 [Attachment 22] states 
that 5,689 articles cited Applicants' article (Z. FurPhys. B, 64, pp. 185-193 (September 
1986) [Attachment 3]. This is clear evidence that Applicant article originated and 
enabled the field of high T c superconductivity. It is clear by the facts presented by 
Applicants that they "have taught one of skill in the art how to make and use a 
composition which shows the onset of superconductivity at above 26°K". The Examiner 
has introduced no factual evidence to the contrary. The Examiner merely "deems" (that 
is, in his conclusory opinion) that Applicants' claims are not enabled. 

The Examiner further states in the final rejection of the parent application: 

iii. Construed in light of that issue, the invention is not deemed to have 
been fully enabled by the disclosure to the extent presently claimed. 

The Examiner again "deems" (that is, in his conclusory opinion) that Applicants claims 
not enabled without factual support. 



YO987-074BZ 



Page 79 of 187 



08/479,810 




The Examiner further states in the final rejection of the parent application: 

(1) In their September 29, 1995 Amendment, the Applicants argue that 
their disclosure refers to "the composition represented by the formula 
RE-TM-0, where RE is a rare earth or rare earth-like element, TM is a 
nonmagnetic transition metal, and 0 is oxygen", and list several species 
such as La^xBaxCuO^y" which they indicate are found in the present 
disclosure. 

Applicants disagree. The passages quoted in the September 29, 1995 amendment lists 
numerous specific compositions and generic formula as indicated above. The listed 
species were preferred embodiments at the time of filing the present application. 
Preferred embodiments do not provide a limitation to the broad scope of Applicants 
teaching. 

The Examiner further states in the final rejection of the parent application: 

(2) Notwithstanding that argument, it still does not follow that the invention 
is fully enabled for the scope presently claimed. The claims include 
formulae which are much broader than the RE-TM-0 formula cited in the 
disclosure. Claim 24 recites "a transition metal oxide", claim 88 "a 
composition", and claim 96 "a copper-oxide compound". 

As noted above the specification at page 1 , line 5-10, states "[t]his invention relates to 
... superconducting compositions including copper and/or transition metals." And at 



YO987-074BZ 



Page 80 of 187 



08/479,810 




page 5, lines 5-9 "[i]t is [an] ... object of the present invention ... to provide novel 
superconductive compositions that are oxides." 

The Examiner further states in the final rejection of the parent application: 

(a) The present specification actually shows that known forms of "a 
transition metal oxide", "a composition", and "a copper-oxide compound" 
do not show the onset of superconductivity at above 26°K. At p. 3, line 
20, through p. 4, line 9, of their disclosure, the Applicants state that the 
prior art includes a "Li-Ti-0 system with superconducting onsets as high 
as 13.7°K. " Official Notice is taken of the well-known fact that Ti is a 
transition metal. That disclosure also refers to "a second, non-conducting 
CuO phase" at p. 14, line 18. 

Applicants' claims are directed to an apparatus comprising "compositions", "transition 
metal oxides", "a composition" and "a copper-oxide compound" having a T c > 26°K 
which is carrying a superconducting current. Applicants claims do not include in the 
claimed apparatus compositions having T c < 26°K. Thus the examples on page 3, line 
20 - page 4, line 9, are not included in Applicants claims. That these are transition 
metal oxides having T c < 26°K does not mean that Applicants' claims directed to 
transition metal oxides, compositions and copper oxides having T c > 26°K are not 
enabled. Applicants provide the teaching on how to fabricate such compositions having 
T c > 26°K. The "second non-conducting CuO phase" referred to at page 14, line 18, 
again does not mean that Applicants claims are not enabled. Applicants statements at 
page 14 is part of Applicants teaching on how to achieve an oxide having a T c > 26°K. 

YO987-074BZ Page 81 of 1 87 08/479,81 0 




The Examiner is attempting to use Applicants complete description of their teaching to 
show lack' of enablement when, in fact, this complete teaching provides full enablement 
by showing how samples are and are not to be prepared. Applicants have claimed their 
invention functionally, that is, as an apparatus of use so the Applicants' claim do not 
read on inoperable species. What the Examiner "seems to be obsessed with is the 
thought of [compositions] which won't work to produce the intended result. Applicants 
have enabled those of skill in the art to see that this is a real possibility which is 
commendable frankness in a disclosure." In re Angstadt, Supra. Thus, the CCPA has 
found that the existence of compositions that do not work does not mean that the 
claimed inventions are not enabled. 

The Examiner further states in the final rejection of the parent application: 

(b) Accordingly, the present disclosure is not deemed to have been fully 
enabling with respect to the "transition metal oxide" of claim 24, the 
"composition" of claim 88, or the "copper-oxide compound" of claim 96. 

Again without facts the Examiner "deems" (that is, the Examiner conclusorily asserts) 
Applicants' claims not enabled and for the reasons given above Applicants disagree. 
The only attempt at a factual support for the Examiner's statement are the examples 
provided by Applicants which show T c < 26°K. Applicants provide this teaching so that 
a person of skill in the art will be fully informed on how to practice Applicants invention. 



YO987-074BZ 



Page 82 of 187 



08/479,810 




The Examiner further states in the final rejection of the parent application: 

(3) The examples at p. 1 8, lines 1 -20, of the present specification 
further substantiates the finding that the invention is not fully enabled for 
the scope presently claimed. 

(a) With a 1 :1 ratio of (Ba, La) to Cu and an x value of 0.02, the 
La-Ba-Cu-0 form (i.e., "RE-AE-TM-0", per p. 8, line I 1) shows "no 
superconductivity". 

This part of Applicants' teaching providing a complete teaching which permits a person 
of skill in the art to be fully enabled to practice Applicants' claimed invention. The issue 
according to In re Angstadt (referred to above) is whether Applicants have enabled 
those of skill in the art to practice Applicants invention without undue experimentation. 
That a person of skill in the art has to do experimentation to determine suitable 
combinations of elements to form a composition having T c > 26°K through which a 
superconductive current flows is not an indication of a lack of enablement. Thus 
Applicants cited examples of compositions having T c < 26°K does not show lack of 
enablement. 



YO987-074BZ 



Page 83 of 187 



08/479,810 




The Examiner further states in the final rejection of the parent application in regards to 
the examples at p. 18, lines 1-20: 

(b) With a 2:1 ratio of (Ba, La) to Cu and an x value of 0.15, the 
La-Ba-Cu-0 form shows an onset of superconductivity at "T c = 26°K". It 
should be noted, however, that all of the claims in this application require 
the critical temperature (T c ) to be "in excess of 26°K" or "greater than 
26'K". 

Applicants do not believe that an on set of a T c at 26°K is different than and greater 
than 26°K. Greater than 26°K can mean T c = 26°K plus some infinitesimal temperature. 
To avoid this reason for rejection all claims in the present application, including added 
claims 232 to 321 have been amended to recite T c > 26°K. 

The Examiner further states in the final rejection of the parent application: 

(c) Consequently, the present disclosure is not deemed to adequately 
enable the full scope of the present claims. Independent claims 86 and 
103 may require the presence of rare earth, alkaline earth, and transition 
metals, but the aforementioned examples show that superconductivity is 
still very unpredictable. Those claims cannot be deemed to be fully 
enabled. 

The Examiner again "deems" claims 86 and 103 of the parent application, which 
correspond to claims 235 and 247 of the present application, as not fully enabled. This 
again is the Examiner's conclusory opinion. Claims 86 and 103 of the parent 

YO987-074BZ Page 84 of 1 87 08/479,81 0 




application and corresponding claims 235 and 247 herein do not read on the examples 
cited in Applicants' specification which are superconductors having T c < 26°K. Thus 
these examples are not evidence that claims 86 and 103 of the parent application and 
claim 235 and 247 herein are not enabled. The examples are part of the teaching 
enabling a person of skill in the art to practice the invention of claims 86 and 103 of the 
parent application and claims 235 and 247 herein. 

The Examiner further states in the final rejection of the parent application: 

iv. The Applicants also have submitted [five] affidavits attesting to the 
Applicants' status as the discoverers of materials that superconduct > 
26°K. Each of the affidavits further states that "all the high temperature 
superconductors which have been developed based on the work of 
Bednorz and Muller behave in a similar manner (way)". Each of the 
affidavits add "(t)hat once a person of skill in the art knows of a specific 
transition metal oxide composition which is superconducting above 26°K, 
such a person of skill in the art, using the techniques described in the 
(present) application, which includes all known principles of ceramic 
fabrication, can make the transition metal oxide compositions 
encompassed by (the present) claims ... without undue experimentation or 
without requiring ingenuity beyond that expected of a person of skill in the 
art." 

Applicants acknowledge that all five affiants are the employees of the assignee of the 
present application. (The affidavit of Shaw and Duncombe were submitted after the 



YO987-074BZ 



Page 85 of 187 



08/479,810 



• 



date of the final rejection and were considered as indicated by the Advisory Action 
dated February 25, 1999 of the parent application). 

The Examiner states in the final rejection of the parent application in response to the 
affidavits of Mitzi, Tsuei and Dinger: 

(1 ) Those affidavits do not set forth particular facts to support the 
conclusions that all superconductors based on the Applicants' work 
behave in the same way and that one skilled in the art can make those 
superconductors without undue experimentation. Conclusory statements 
in an affidavit or specification do not provide the factual evidence needed 
for patentability. 

The Examiner cited In re Lindner, 173 USPQ 356, 358 (CCPA 1972) in support of this 
statement. In In re Lindner the patent applicant submitted Rule 1 32 affidavit based on 
one example to show unexpected results for a claim of broader scope. The CCPA held 
that "[i]t is well established that objective evidence of non-obviousness must be 
commensurate in scope with the claims." In re Lindner is not on point since it does not 
deal with the issue of enablement. A single example can enable a broader scope claim 
where nothing mere is needed than what is taught by Applicants or what is taught by 
Applicants together with what is know by a person of skill in the art. 

The affidavits of Mitzi, Tsuei, Dinger, Shaw and Duncombe are statements of experts in 
the ceramic arts. The Examiner disagrees with these experts. But the Examiner has 



YO987-074BZ 



Page 86 of 187 



08/479,810 




not submitted an Examiner's affidavit qualifying himself as an expert to rebut the 
statements of Applicants' affiants. Applicants re-request such an Examiner's affidavit. 

The Examiner further states in the final rejection of the parent application: 

(2) Those affidavits do not overcome the non-enablement rejection. The 
present specification discloses on its face that only certain oxide 
compositions of rare earth, alkaline earth, and transition metals made 
according to certain steps will superconduct at >26°K. 

Applicants disagree. The affidavits of Shaw [Attachment 19] and Duncombe 
[Attachment 20] cites numerous books and articles which provide the general teaching 
of ceramic science at the time of and prior to the filing date of the present application. 
The affidavit of Duncombe also provides several hundred pages copied from Mr. 
Duncombe's notebooks starting from before Applicants' filing date. In regards to these 
pages, Mr. Duncombe states "I have recorded research notes relating to 
superconductor oxide (perovskite) compounds in technical notebook IV with entries 
from November 12, 1987 to June 14, 1998 and in technical notebook V with entries 
continuing from June 7, 1988 to May 1989." Mr. Duncombe's affidavit list some of the 
compounds prepared using the general principles of ceramic science: Yi Ba 2 Cu 3 O x , 
Yi Ba 2 Cu 3 0 3 , Bi 215 Sr 198 Cai 7 Cu 2 0 8+8 , Ca (2 -x) Sr x Cu O x and Bi 2 Sr 2 Cu O x . 

The Examiner further states in the final rejection of the parent application: 



YO987-074BZ 



Page 87 of 187 



08/479,810 




(3) Those affidavits are not deemed to shed light on the state of the art 
and enablement at the time the invention was made. One may know now 
of a material that superconducts at more than 26°K, but the affidavits do 
not establish the existence of that knowledge on the filing date for the 
present application. Even if the present application "includes all known 
principles of ceramic fabrication", those affidavits do not establish the 
level of skill in the ceramic art as of the filing date of that application. 

The Examiner states that "these affidavits are not deemed to shed light on the state of 
the art and enablement at the time the invention was made," that is, it is the Examiner's 
conclusory opinion. Applicants disagree. The affidavits clearly state that all that is 
needed is Applicants' teaching and the ordinary skill of the art to practice Applicants 
claimed invention. Also, 35 USC §112, does not require that enablement be 
determined "at the time the invention was made". This language appers in 35 USC 
§103, but not in 35 USC §112. Thus it is clear that it was not the intent of Congress to 
determine enablement at the time the invention was made in the manner suggested by 
the Examiner. All that is necessary is "[t]he specification shall contain a written 
description ... to enable any person skilled in the art ... to make and use the same." 
Applicants initiated the filed of high T c superconductors. If a person of skill in the art 
from the description in Applicants' specification can practice Applicants' claimed 
invention, it is enabled. Applicants' are not required to show that a person of skill in the 
art had the knowledge prior to Applicants' invention. If this were the case Applicants 
would not be the first, sole and only inventors, since the invention would be known by 
others. Applicants teach ceramic processing methods to fabricate high T c 
superconductors. This uses general principles of ceramic science known prior to the 



YO987-074BZ 



Page 88 of 187 



08/479,810 




filing date of the present application. Thus Applicants' claims are fully enabled. The 
Examiner has provided no evidence to the contrary. The Examiner has produced no 
evidence to demonstrate that a person of skill in the art, at the time of Applicants filing 
date, could not practice the claimed invention from Applicants teaching. The utilization 
of such teaching to practice Applicants' claimed invention was not known prior to 
Applicants' filing date. That is Applicants' discovery and thus why they are entitled to 
their claimed invention. 

The Examiner further states in the final rejection of the parent application: 

(4) It is fully understood that the Applicants are the pioneers in high 
temperature metal oxide superconductivity. The finding remains, 
nonetheless, that the disclosure, is not fully enabling for the scope of the 
present claims. 

If Applicants pioneered the field of high T c superconductivity, that is, they initiated the 
substantial worldwide effort to validate their discovery and to synthesize others specific 
embodiment of their generic and specific teaching, then Applicants should be entitled to 
generic claims since others based their work on Applicants' teaching. 

The Examiner has cited the following seven decisions, which have been discussed in 
detail above, in support for the determination of non-enablement: In re Fisher , 166 
USPQ 1 8, 24; and In re Anastadt and Griffen . 1 90 USPQ 21 4, 21 8. In re Colianni . 1 95 
USPQ 150, 153, 154 (CCPA 1977). In re Cook . 169 USPQ 298, 302; and Cosden Oil 



YO987-074BZ 



Page 89 of 187 



08/479,810 




v. American Hoechst . 214 USPQ 244, 262. In re Corkill . 226 USPQ 105, 1009. 
Brenner v. Manson . 383 US 519, 148 USPQ 689. 

The Examiner has not applied the rational of these decisions. In fact, in the 
prosecution Applicant pointed out that the Examiner seems to have specifically 
avoided applying this case law and, consequently, Applicants take the Examiner's 
silence as concurrence in the manner that Applicants have applied this case law. In 
response to this the Examiner states in the final rejection of the parent application "[n]ot 
withstanding the Applicants' commentary on caselaw, the April 15, 1997 Office Action, 
paper no. 54, sets forth the factual basis for the determination of non-enablement at pp. 
5-10." It is Applicants view that the Examiner is misapplying this case law. 

In this regard the Examiner further states in the final rejection of the parent application: 

(3) The Applicants still further argues "that the Examiner does not rebut 
the case law and argument provided by Applicants on (pages) 15-25 of 
their September 29, 1995 amendment which addresses (these issues) in 
detail." The point remains, nevertheless, that there appears to be a 
concurrence as to the applicable caselaw. That caselaw speaks for itself 
What has been fully addressed in the previous Office Action and repeated 
above is the factual basis for the determination of non-enablement for the 
scope of the present invention. 

Case law does not speak for itself. The rule of a case depends on the facts of the 
case. The fact circumstances in the case must be compared with those of the present 



YO987-074BZ 



Page 90 of 187 



08/479,810 




application to justify application of the decision of the case. The Examiner has not 
done this. Applicants have shown above that the case law when properly applied 
support Applicants' position that their claims are enabled and does not support the 
Examiner's position that the non-allowed claims are not enabled. 

The Examiner states in the final rejection of the parent application: 

ii. The Applicants urge that "their disclosure supports a substantially 
broader scope than (particular) species." With respect to transition metals, 
the Applicants point to the support in their disclosure and argue that they 
were enabled for transition metals other than just copper. Again, 
however, it is noted that high temperature superconductivity is a highly 
unpredictable art. In view of the record as a whole, it is again determined 
that one skilled in the art would not have been enabled to practice the 
presently disclosed invention with transition metals other than copper." 

The first paragraph of §1 12 requires nothing more than objective enablement , how 
such teaching is set forth , either by the use of illustrative examples or by broad 
terminology is of no importance" In re Marzochi, Supra. The Examiner has provided no 
factual evidence to support the Examiner's statement that the field of high T c 
superconductivity is unpredictable. The Examiner has attempted to support this 
position based on Applicants' teaching. That teaching is part of Applicants' enabling 
disclosure. In the last sentence of the passage above the Examiner implies that 
Applicants claims directed to copper are enabled. Applicants teach transition metals. 
Copper is a transition metal. Applicants teaching enable persons of skill in the art to 



YO987-074BZ 



Page 91 of 187 



08/479,810 



make transition metal oxides which sustain a superconducting current at T c > 26°K. 

The Examiner has provided no factual evidence that Applicants claims are not enabled 
for transition metals or any composition. 

The Examiner states in the final rejection of the parent application: 

iii. The Applicants argue that their own examples do not support the 
determination of non-enabling scope of the invention. Nevertheless, the 
record is viewed as a whole. If the Applicants could not show 
superconductivity with a T c > 26°K for certain compositions falling within 
the scope of the present claims, it is unclear how someone else skilled in 
the art would have been enabled to do so at the time the invention was 
made. 

The Examiner incorrectly states "Applicants could not show superconductivity with T c > 
26°K for certain compositions falling within the scope of the present claims." The 
claims of the parent application were directed to a method of flowing a superconducting 
current in a composition having a T c > 26°K. The corresponding claims herein are 
directed to an apparatus flowing a superconducting current in a composition having a T c 
> 26°K. If a composition has a T c < 26°K, a method or apparatus for flowing a 
superconducting current in such a compound cannot fall within the scope of Applicants' 
claims. Applicants are not claiming a composition of matter. They are claiming their 
discovery, passing a superconductive current through a composition, such as a 



YO987-074BZ 



Page 92 of 187 



08/479,810 




transition metal oxide having a T c > 26°K. No one prior to Applicants knew this. That 
is why they received the Nobel Prize in Physics in 1987. 

The Examiner further states that Applicants' affidavits are conclusory. The Examiner 
appears to be placing himself up as an expert in the field of superconductivity. 
Applicants requested that the Examiner submit an affidavit in the present application 
rebutting the position taken by Applicants' five affiants, but the Examiner has not 
submitted an affidavit. The facts are that the five affiants are experts in the art, the 
Examiner is not. The Examiner states that those "affidavits were insufficient because 
they were conclusory only, i.e., they lacked particular facts to support the conclusions 
reached". Applicants submitted the affidavit of Peter Duncombe [Attachment 20] which 
has provided hundreds of pages of notebook entries showing that he fabricated 
superconductive transition metal oxides according to the teaching of Applicants 
specification. 

The Examiner has provided no substantial evidence to support this assertion of 
non-enabling scope of the invention. It is requested that the Examiner support his 
assertion with factual evidence or an Examiner's affidavit and not unsupported 
statements. 

The Examiner is applying an incorrect standard of enablement. The Examiner is 
applying a standard applicable to composition of matter. Applicants are not claiming a 
composition of matter. As shown by Applicants prior comments Applicants have in fact 



YO987-074BZ 



Page 93 of 187 



08/479,810 



# 



fully enabled the composition of matter. Therefore, Applicants have provided excess 
enablement for the claimed invention. The standard of enablement for a method of or 
an apparatus for use is not the same as the standard of enablement for a composition 
of a matter. Notwithstanding, it is well settled law that claims to a composition of matter 
can encompass a number of inoperable species. However, Applicants' claims do not 
cover any inoperable species. The claims only encompass apparatus for flowing a 
superconducting current in compositions that are superconducting at temperatures 
> 26°K. Those compositions that are not superconducting at temperatures > 26°K are 
not encompassed by Applicants claims reciting these limitations. Applicants note that a 
claim to a composition of matter is dominant to any use of that composition of matter 
and claims directed to an apparatus for use of a composition of matter are necessarily 
of narrower scope than claims to the composition of matter. Applicants' claims do not 
encompass uses other than those which the claims are limited to by the use limitations 
recited in the claims. Applicants' claims are directed to what they have discovered. 
Therefore, Applicants' claims fully satisfy the requirements of 35 USC 112. 

The claimed invention is enabled because it is directed to an apparatus use rather than 
a composition. Applicants are claiming their discovery, comprising an apparatus 
comprising a superconducting current in a composition with a T c > 26°K. If a patent 
applicant claims an apparatus for flowing current through a circuit having a resistive 
element, the applicant does not have to describe every method of making every type of 
resistive element for the claim to dominate all resistive elements. Such a claim reads 
on resistive elements made of materials not known at the time of filing since the 



YO987-074BZ 



Page 94 of 187 



08/479,810 




discovery is not the material but the apparatus for use. Applicants discovered that a 
superconducting current can be flowed in a composition having a T c > 26°K. That is 
what Applicants are claiming. 

Process of use or apparatus for use claims are subject to the statutory provisions of 35 
USC 112, first paragraph. All that is necessary to satisfy §1 12 is the statement that a 
superconducting current can be passed through a composition, such as a transition 
metal oxides having a T c > 26°K. The Examiner has essentially said this by rejecting 
Applicants non-allowed claims as anticipated under §1 02(a) or obvious under §1 03(a) 
in view of the Asahi Shinbum article [Attachment 6], Applicants only allowed claim 136 
of the parent application corresponding to claim 280 herein was allowed over the Asahi 
Shinbum article because it showed criticality for the formula recited in this claim. Since 
Applicants generic teaching does not prevent others from obtaining patents to specific 
formulas, Applicants are entitled to generic claims to their discovery. Applicants filed 
this application soon after their discovery. Applicants availed themselves of the one 
year grace period under 35 USC 102(b) by publishing their results before filing the 
present application. This was the quickest way to promote the progress of the field of 
high T c superconductivity which can have substantial societal benefits such as less 
expensive electric power and more effective medical diagnostic tools. It is a policy of 
the United States Constitution, which establishes the United States Patent System, to 
encourage early disclosure of inventions to promote the progress of the useful arts. 
The Examiner's position that Applicants generic claims are not fully enabled frustrates 
this policy. Applicants could have decided not to publish Applicants' article and not to 



YO987-074BZ 



Page 95 of 187 



08/479,810 




file the present application while engaging in years of further experimentation to find all 
specific examples which had the optimal T c . If Applicants acted this way, there would 
not have been the explosive worldwide effort to fully explore and implement high T c 
transition metal oxide technology. The rationale used by the Examiner is contrary to the 
Constitutional policy to promote the progress of the useful arts by early disclosure of an 
invention. Early disclosure should not be a penalty to Applicants. Applicants are 
pioneers in discovering that compositions, such as, transition metal oxides, have T c > 
26°K. A first discoverer of a wheel whose specific embodiment is a solid disc rotateable 
about an axle can claim a clylindrical member adapted for rotation about the axle and 
for rolling on a surface, that is, their discovery. This claim is dominant to a latter 
inventor's improved wheel comprising spokes which has the advantage of much lighter 
weight than a disc. The latter inventor is entitled to subservient claim to the dominant 
claim to a wheel. Applicants are entitled to a dominant claim to their discovery. The 
Examiner's rational would preclude. 

The Examiner has not shown by evidence not contained within Applicants' teaching that 
the art of high T c superconductors is unpredictable. The Examiner has attempted to 
use Applicants' teaching to establish such unpredictability. The Examiner has 
essentially not responded to Applicants' comments. The Examiner has introduced no 
extrinsic evidence to support the Examiner's opinion that the field of high T c 
superconductivity is unpredictable. The Examiner has not introduced an affidavit 
qualifying himself to offer such an opinion. The Examiner merely states that his opinion 
is supported by the record as a whole. The only thing that Examiner relies on is some 



YO987-074BZ 



Page 96 of 187 



08/479,810 




examples referred to above which do not have T c > 26°K which as stated above is part 
of Applicants' enabling disclosure. 

In response to the resubmitted 1.132 Affidavits of Mitzi [Attachment 16], Tsuei 
[Attachment 18] and Dinger [Attachment 17] (filed 12/16/98) and the newly provided 
1 .132 Affidavits of Thomas Shaw [Attachment 19] (filed 12/16/98) and Peter Duncombe 
[Attachment 20] (filed 12/21/98) the Examiner states in the final rejection of the parent 
application: 

The Examiner notes the books describing the general principles of ceramic fabrication 
provided in these Affidavits. Also, the examiner notes that such fabrication techniques 
were utilized subsequently (after the filing date of the instant application) to produce the 
superconductive materials described in the Poole et al reference as well as the 
materials produced by Peter Duncombe (see Affidavit filed 12/21/98). 

The affidavit of Peter Duncombe [Attachment 20] provides notebook entries beginning 
November 12, 1987, which is prior to Applicants filing date and prior to the Asahi 
Shinbum article. Duncombe used the general principles of ceramic science to 
implement the invention described in Applicants article [Attachment 3]. Each of the five 
affiants Tsuei [Attachment 18], Mitzi [Attachment 16], Duncombe [Attachment 20], 
Shaw [Attachment 19] and Dinger [Attachment 17] are experts in the filed of ceramics. 
Each has stated the Applicants' claimed invention can be implemented based on 



YO987-074BZ 



Page 97 of 187 



08/479,810 




Applicants teaching and with nothing more than the general principles of ceramic 
science known at the time of filing of the present application. 

The Examiner states in the final rejection of the parent application: 

It is the examiner's maintained position that while general principles of 
ceramic fabrication were most certainly known prior to the filing date of the 
instant application, the utilization of such techniques to produce 
superconductive materials within the scope of the instant claims were not 
known. The affidavits are not effective to demonstrate enablement at the 
time of the invention was made. As stated in paper #66, page 8, one may 
now know of a material that superconduct at more than 26K, but the 
affidavits do not establish the existence of that knowledge on the filing 
date of the present application. 

The Examiner acknowledges that the fabrication techniques necessary to practice 
Applicants' invention were known prior to the filing dated of the present application. But 
the Examiner further states that the "utilization of such techniques to produce 
superconductive materials within the scope of the instant claims were not known". The 
scope of the instant claim is an apparatus for flowing a superconductive current in a 
transition metal oxide having a T c > 26°K. That is Applicants' discovery. That is why it 
was not known prior to Applicants' discovery. How to make this type of material was 
known. Prior to Applicants' discovery, It was not known that they were superconductive 
with a To > 26°K. The Examiner incorrectly states "one may now learn of a material that 



YO987-074BZ 



Page 98 of 187 



08/479,810 




superconducts at more than 26°K, but the affidavits do not establish the existence of 
that knowledge on the filing date of the present invention." If that knowledge was 
known by another prior to the filing date, Applicants would not have a patentable 
invention since they would not be the initial first and sole inventor. The affidavits state 
that the knowledge of how to make compositions within the scope of Applicants' claims, 
such as transition metal oxides, by the general principles of ceramic science were 
known prior to the filing date. In particular, the affidavits of Duncombe [Attachment 20] 
and Shaw [Attachment 19] refer to a number of articles and texts on the general 
principles of ceramic science. One of these texts is "Structures, Properties and 
Preparation of Peroskite-type Compounds", F.S. Galasso (1969). 

Applicants note that the book "Copper Oxide Superconductors" by Charles P. Poole, 
Jr., Timir Datta and Horacio A. Farach, John Wiley & Sons (1998) [Attachment 21] 
support their position that high temperature superconductors were not difficult to make 
after their original discovery. This book shall be referred to herein as Poole et al. or the 
Poole book . The Poole book was published after Applicants' initial discovery which 
was published in Applicants' article. The Examiner states "[a]s such, it does not, 
provide evidence of the state of the art at the time the presently claimed invention was 
made". 

Applicants disagree. The preface of this book says "[t]his volume reviews the 
experimental aspects of the field of oxide superconductivity with transition temperatures 
from 30K to above 123K, from the time of its discovery by Bednorz and Muller in April, 



YO987-074BZ 



Page 99 of 1 87 



08/479,810 




1986 until a few months after the award of the Nobel Prize to them in October, 1987." 
Thus the book reports on work done within eighteen months of Applicants' discovery in 
April 1986 and within eleven months of its publication in September, 1986. In the 
present application was filed on May 22, 1 987. This passage is referring to Applicants 
and Applicants' article [Attachment 3] referred to at page 6 of Applicants' specification. 
This book acknowledges that Applicants are the discovers of the field of high 
temperature superconductivity. (See Attachment A of Applicants' response dated May 
14, 1998 [Attachment 23] and See Attachment H of Applicants' response dated 
November 28, 1 997 [Attachment 24]). The Examiner's view that the skill of the art was 
insufficient at the time of the filing date of the present application is untenable in the 
view of Poole et al. and Applicants' 132 affidavits of Tsuei [Attachment 18], Mitzi 
[Attachment 16], Shaw [Attachment 19], Dinger [Attachment 17] and Duncombe 
[Attachment 20], in particular that of Peter Duncombe which reports data prior to the 
Applicants' filing date. 

Applicants note that it is generally recognized that it is not difficult to fabricate transition 
metal oxides and in particular copper metal oxides that are superconductive after the 
discovery by Applicants of composition, such as transition metal oxides, are high T c 
superconductors. Chapter 5 of the Poole et al. [Attachment 21] book entitled 
"Preparation and Characterization of Samples" states at page 59 "[c]opper oxide 
superconductors with a purity sufficient to exhibit zero resistivity or to demonstrate 
levitation (Early) are not difficult to synthesize. We believe that this is at least partially 
responsible for the explosive worldwide growth in these materials". Poole et al. further 



YO987-074BZ 



Page 100 of 187 



08/479,810 




states at page 61 "[i]n this section three methods of preparation will be described, 
namely, the solid state, the coprecipitation, and the sol-gel techniques (Hatfi). The 
widely used solid-state technique permits off-the-shelf chemicals to be directly calcined 
into superconductors, and it requires little familiarity with the subtle physicochemical 
process involved in the transformation of a mixture of compounds into a 
superconductor." Poole et al. further states at pages 61-62 "[i]n the solid state reaction 
technique one starts with oxygen-rich compounds of the desired components such as 
oxides, nitrates or carbonates of Ba, Bi, La, Sr, Ti, Y or other elements. ... These 
compounds are mixed in the desired atomic ratios and ground to a fine powder to 
facilitate the calcination process. Then these room-temperature-stabile salts are 
reacted by calcination for an extended period (~20hr) at elevated temperatures 
(~900°C). This process may be repeated several times, with pulverizing and mixing of 
the partially calcined material at each step." This is generally the same as the specific 
examples provided by Applicants and as generally described at pages 8, line 19, to 
page 9, line 5, of Applicants' specification which states "[t]he methods by which these 
superconductive compositions can be made can use known principals of ceramic 
fabrication, including the mixing of powders containing the rare earth or rare earth-like, 
alkaline earth, and transition metal elements, coprecipitation of these materials, and 
heating steps in oxygen or air. A particularly suitable superconducting material in 
accordance with this invention is one containing copper as the transition metal." (See 
Attachment A of Applicants' response dated May 14, 1998 [Attachment 23] and See 
Attachment H of Applicants' response dated November 28, 1997 [Attachment 24]). 



YO987-074BZ 



Page 101 of 187 



08/479,810 




Consequently, Applicants have fully enabled high T c transition metal oxides and their 
claims. 

As stated in the affidavit of Dr. Mitzi [Attachment 16], Dr. Dinger [Attachment 17], Dr. 
Tsuei [Attachment 18], Dr. Shaw [Attachment 19] and Mr. Doncombe [Attachment 20] 
the preface of the book by Poole et al., quoted above, the work of Applicants initiated 
the field of high temperature superconductors and these materials are not difficult to 
synthesize . And according In re Fisher "it is apparent that such an inventor should be 
allowed to dominate future patentable inventions of others where those inventions were 
based in some way on his teaching." (166 USPQ 18, 24) 

The Examiner further states in the final rejection of the parent application: 

Moreover, the present claims are directed to processes of using metal 
oxide superconductors, not processes of making them. Even if the Poole 
article provided direct evidence of the state of the art at the time the 
invention was made, which it apparently does not, that evidence still does 
not pertain to the issue at hand, namely, the process of using metal oxide 
superconductors to conduct electricity under superconducting conditions. 

Applicants disagree. Poole et al. [Attachment 21] Chapter X entitled "Transport 
Properties" describes a process of using metal oxides superconductors to conduct 
electricity under superconducting conditions. Section B of Chapter X is entitled "Current 
Flow". A copy of Chapter X is in Attachment 40 of this paper. 



YO987-074BZ 



Page 102 of 187 



08/479,810 




The Examiner further states in the final rejection of the parent application in regard to 
Poole et al. [Attachment 21]: 

(3) Finally, the Preface states in part at A3: "The unprecedented 
worldwide effort in superconductivity research that has taken place over 
the past two years has produced an enormous amount of experimental 
data on the properties of the copper oxide type materials that exhibit 
superconductivity above the temperature of liquid nitrogen. ... During this 
period a consistent experimental description of many of the properties of 
the principal superconducting compounds such as BiSrCaCuO, LaSrCuO, 
TIBaCaCuO, and YBaCuO has emerged. ... The field of high-temperature 
superconductivity is still evolving ..." That preface is deemed to show that 
the field of high-temperature superconductivity continued to grow, on the 
basis of on-going basic research, after the Bednorz and Meuller article 
was published. 

The continued growth referred to in the passage from Poole et al. [Attachment 21] 
quoted above does not mean that this work is not based on Applicants' initial 
fundamental teaching. Poole et al. as quoted above states that the unprecedented 
amount of work done in the short period of time after Applicants' work was because the 
materials "are not difficult to synthesize." Moreover, as quoted above the CCPA In re 
Fisher states "such an inventor should be allowed to dominate future patentable 
inventions of other where those inventors were based on in some way on his 
teachings." Moreover, the referred to future developments in the passage above are 
not necessarily patentably distinct from Applicants' teachings. Those who developed 



YO987-074BZ 



Page 103 of 187 



08/479,810 




these compounds would have a reasonable expectation of success based on 
Applicants' teaching. The Examiner has provided no evidence to the contrary. 

The Examiner acknowledges that the three affidavits of Dr. Tsuei [Attachment 18], Dr. 
Dinger [Attachment 17] and Dr. Mitzi [Attachment 16] which were signed in May of 1998 
states that the present application "includes all known principles of ceramic fabrication 
known at the time the application was filed." However, the Examiner further in the final 
rejection of the parent application states that the "additional indication also is 
considered to be a conclusory statement unsupported by particular evidence". The 
advisory action dated February 25, 1998 acknowledges the revised 1 .132 affidavits of 
Mitzi [Attachment 16], Tsuei [Attachment 18] and Dinger [Attachment 17] (filed 
12/16/98) and the newly provided affidavit of Shaw [Attachment 19] (filed 12/16/98) and 
Dumcombe [Attachment 20] (filed 12/21/98). These revised and additional affidavits 
cite numerous articles and books, all published before the Applicants' filing date, which 
provide evidence of the general teaching of ceramic science, and in particular, ceramic 
fabrication techniques for transition metal oxides, more particularly for Perovskites and 
most particularly for the type of Perovskites of Applicants' preferred embodiments. 
Applicants disagree that their affidavits are conclusory. The facts are provided by 
Poole et al. [Attachment 21]. The affidavits corroborate what Poole et al. [Attachment 
21] states. 

In view of these arguments all the added claims are enabled under 35 USC 112, first 
paragraph, and withdrawal of rejected claims are respectfully requested. 



YO987-074BZ 



Page 104 of 187 



08/479,810 



REJECTIONS UNDER 35 USC 112, SECOND PARAGRAPH 

Claims 86-87, 96-108, 115, 118, 120, 122, 123, 129-135, and 137-142 of the parent 
application were rejected under 35 U.S.C. § 1 12, second paragraph, as being indefinite 
for failing to particularly point out and distinctly claim the subject matter which applicant 
regards as the invention. These claims correspond to added claims. 

In paragraph 6-7 on page 12-16 of the final rejection of the parent application, Claims 
86-87, 96-108, 115, 118, 120, 122, 123, 129-135 and 137-142 were rejected under 35 
USC 112. The Examiner finds the terms "layer-like", "perovskite-like", "rare-earth-like", 
and "layer-type" indefinite. These terms occur in claims 86-87, 96-108, 1 12, 1 13, 1 17, 
1 1 8, 1 22 and 1 23 of the parent application in added corresponding claims 235, 236, 
240-252, 256, 257, 261 , 262, 266 and 268 of the present application. As stated by the 
Applicants in the prosecution these are terms of art and well understood by persons of 
skill in the art. 

The Examiner states in the final rejection of the parent application: 

a. With respect to claims 86-87 and 96-108, the terms "layer-type", 
"perovskite-like", "rare-earth-like" are vague and confusing, 
i. The question arises: What is meant by these terms? 



YO987-074BZ 



Page 105 of 187 



08/479,810 



(1) The terms "layer-type" and "perovskite-like" are unclear because the 
"type" or "like" terms are deemed to be indefinite. Terms such as "like", 
"similar", and "type" are indefinite." It is suggested that "layer-type 
perovskite-like crystal structure" be changed - a substantially layered 
perovskite crystal structure --. 

In support of the Examiner's view of term such as "type" and "like", the Examiner cites: 
Ex parte Remark, 15 USPQ 2d 1498, 1500 (BPAI 1990); Ex parte Kristensen, 10 USPQ 
2d 1701, 1703 (BPAI 1989); Ex parte Attig, 7 USPQ 2d 1092, 1093 (BPAI 1988); and 
Ex 'parte Copenhaver, 109 USPQ 118 (POBA 1955). 

Ex parte Remark is not on point since the Board found the term "and the like" in a claim 
to be indefinite under §112. Applicants claims do not use this terminology. 

Ex parte Kristensen is not on point since the Board found the term "similar" in the phase 
"for high pressure cleaning units or similar apparatus" in a claim indefinite under §112, 
second paragraph. Applicants do not use the terminology "or similar". The Board held 
with respect to the second paragraph of §112, the inquiry is "to determine whether the 
claims do, in fact, set out and circumscribe a particular area with a reasonable degree 
of precision and particularity". In the present application the terms "perovskite-like", 
"perovskite-type", "layered-like", "layered-type" and "rare-earth-like" are terms used in 
the art and these are well known and understood by a person of skill in the art. Thus 
the present specification satisfies the Ex parte Kristensen standard. 



YO987-074BZ 



Page 106 of 187 



08/479,810 




Ex parte Attig is also not on point. The Board found the term "ZSM-5-type" indefinite 
under §1 12, second paragraph, because the prior art cited during prosecution gave 
different meanings to the term "ZSM-5-type". But the Board did not find the use of the 
term "type" in a claim per se indefinite. The Board says "[i]t is true that the zeolites 
have been defined in various patents and claimed with the terminology "ZSM-5-type". 
However, clearly the art of record in this case, all of it cited by Applicants themselves, in 
the aggregate serve to render the term indefinite rather that definite". 7 USPQ 1092, 
1093. The Examiner has not shown that the terms "perovskite-like", "perovskite-type", 
"layered-like", "layered-type" and "rare-earth-like" as used in Applicants claims have 
different meanings in different cited prior art. To the contrary, Applicants have shown 
that these terms have a uniform meaning in the high T c art. 

In Ex parte Copenhaver, the Board stated in regard to the terminology "Friedel-Graftz 
type" catalyst. 

"[w]e are of the view that the word "type" when appended to another wise 
definite expression so extends the scope of such an expression as to 
render it objectionably indefinite from the stand point of patent law and 
procedures. 

We are not led to a different conclusion by the fact that the expression 
may have been used in certain technical and scientific publications which 
are not subject to the rigid legal requirements for definitions that apply to 
patent claims. The fact that the expression may have been used in claims 
of certain patents likewise does not alter our view on the question." 



YO987-074BZ 



Page 107 of 187 



08/479,810 




Applicants note that Ex parte Copenhaver decided in 1955 was not cited by the Board 
in the later Board decisions cited by the Examiner. This decision has not been cited by 
any other Board or Court decision. 

The Examiner states that the term "rare earth-like element" is indefinite and that the 
terms "type and "like" are unclear. Applicants respectfully disagree. Attachment A of 
Applicants' response dated November 28, 1997 [Attachment 25] is the result of a Lexis 
search done by the undersigned attorney. This search shows the term "rare earth like" 
or "rare earth and the like" used in 68 US patents. The sections of the 68 patents 
where these terms appears are printed using the "KWICK" function of Lexis. 
Attachment B of Applicants' response dated November 28, 1997 [Attachment 26] is the 
results of a Lexis search done by the undersigned attorney. This search shows the 
term "rare earth like" used in the claims of 4 issued US patents. The sections of the 
claims of the 4 patents where this term appears in the claims are printed using the 
"KWICK" function of Lexis. Consequently, the term "rare earth like" is a term use in the 
art, understood by a person of skill in the art and recognized as a definite term by the 
USPTO for use in US patent claims. 

The Examiner states that the term "perovskite-like" is indefinite. The term 
"perovskite-like" or "perovskite-type" is commonly used in the art. Attachment C of 
Applicants' response dated November 28, 1997 [Attachment 27] is the results of a Lexis 
search done by the undersigned attorney. This search shows that the terms "perovskite 
like" and "supercond!" (the "!" represents any combination of letters) are used in 107 US 



YO987-074BZ 



Page 108 of 187 



08/479,810 




patents. The section of the 107 patents where these terms appears are printed using 
the "KWICK" function of Lexis. Attachment D of Applicants' response dated November 
28,1997 [Attachment 28] is a result of a Lexis search done by the undersigned attorney. 
This search shows the terms "perovskite like" or 'perovskite type" used in the claims of 
two issued US patents. The sections of the claims of the 2 patents where this term 
appears in the claims are printed using the "KWICK" function of Lexis. Attachment E of 
Applicants' response dated November 28, 1997 [Attachment 29] is a copy of the first 
page of Chapter 2 of the book "Perovskites and High T c Superconductors" by F. S. 
Galasso, Gordon and Breach Scientific Publishers, 1990. Chapter 2 is entitled 
"Structure of Perovskite-type Compounds". Attachment F of Applicants' response 
dated November 28, 1997 [Attachment 30] is a copy of page 78 of the book by C. 
Poole, Jr. et al. Page 78 is the beginning of the section entitled "D. Perovskite-type 
Superconducting Structures". The first paragraph of the section states "[i]n their first 
report on high-temperature superconductors Bednorz and Muller [the Applicants] 
referred to their samples as 'metallic, oxygen deficient ... perovskite like mixed valent 
copper compounds.' Subsequent work has confirmed that the new superconductors do 
indeed have these characteristics. In this section we will comment on their 
perovskite-like aspects" (insert added). Consequently, the terms "perovskite like" or 
"perovskite type" are terms used in the art and recognized as a definite by the USPTO 
for use in US patent claims. (It is noted that this passage also shows that the 
terminology "mixed valent copper compounds" is used and understood in the art. 
Applicant further notes that one of the books cited in the affidavit of Peter Duncombe 
[Attachment 20] to demonstrate the general teaching of ceramic science includes in the 



YO987-074BZ 



Page 109 of 187 



08/479,810 




title "Perovskite-Type Compounds". This book was published in 1969 showing that this 
term was well known and understood by those of the skill in the art long before the filing 
date of the present application. 

The Poole et al. in Chapter VI on "Crystallographic Structures" [Attachment 21] states 
at page 73 "[m]uch has been said about the oxide superconductor compounds being 
perovskite types, so we will begin with a description of the perovskite structure." 
(emphasis added) (See Attachment I of Applicants response dated November 28, 
1997 [Attachment 31]). Thus, the Poole book uses the term " perovskite type" and 
explains its meaning. 

The undersigned attorney did a search in Lexis for the terms "like" in issued US 
patents. As shown in Attachment A of Applicants' response dated December 27, 1997 
[Attachment 32], this search Lexis found 140,058 issued US patents using the 
terminology "like" in the claims. The USPTO has, therefore, accepted this terminology 
as definite within the meaning of 35 USC 1 12. A number of specific examples are 
provided in Attachments B of Applicants' response dated December 27, 1997 
[Attachment 33], to Attachment J of Applicants' response dated December 27, 1997, 
each of which are the results of a similar Lexis search. (Lists of the patent numbers will 
be provided at the request of the Board.) Attachment B [Attachment 33] shows that 
there are 443 issued US patents having the term "diamond like" in the claims. 
Attachment C [Attachment 33] of Applicants' response dated December 27, 1997, 
shows that there are 319 issued US patents having the term "diamond like carbon" in 



YO987-074BZ 



Page 110 of 187 



08/479,810 




the claims. Attachment D [Attachment 33] of Applicants' response dated December 27, 
1997, shows that there are 10 issued US patents having the term "halogen like" in the 
claims. Attachment E [Attachment 33] of Applicants' response dated December 27, 
1997, shows that there are 1 1 issued US patents having the term "oxygen like" in the 
claims. Attachment F [Attachment 33] of Applicants' response dated December 27, 
1997, shows that there are 79 issued US patents having the term "ceramic like" in the 
claims. Attachment G [Attachment 33] of Applicants' response dated December 27, 
1997, shows that there are 31 issued US patents having the term "carbon like" in the 
claims. Attachment H [Attachment 33] of Applicants' response dated December 27, 
1997, shows that there are 5 issued US patents having the term "silicon like" in the 
claims. Attachment I [Attachment 33] of Applicants' response dated December 27, 
1997, shows that there are 10 issued US patents having the term "nitrogen like" in the 
claims. Attachment J [Attachment 33] of Applicants' response dated December 27, 
1997, shows that there are 17 issued US patents having the term "copper like" in the 
claims. In view thereof Applicants respectfully submit that the terminology "layer-like", 
"perovskite like" and "rare-earth-like" are definite since use of the term "like" is 
recognized as definite under 35 USC 1 12 by the USPTO. 

Also the term "ceramic-like" is a term commonly used in the art. Attachment M of 
Applicants' response dated November 28, 1997 [Attachment 34] is the result of a Lexis 
search performed by the undersigned attorney using the search criteria "ceramic" with 
one word of "like" and "copper" within one word of "oxide" and "rare" within one word of 
"earth". This search identified 23 issued US patents. These patents are listed in the 



YO987-074BZ 



Page 111 of 187 



08/479,810 




attachment using the Lexis KWICK feature which list only those portions of the patents 
where these terms appear. The search was limited to this criteria since a search on 
"ceramic" within one word of "like" identified more than 1 ,000 issued US patents and a 
search on "ceramic" within one word of "like: in the same document as "copper" within 
one word of "oxide" identified more than 1000 US patents. It is clear that the term 
"ceramic like" is well understood in the art and is thus definite. 

An affidavit under 37 CFR 1 .132 of Dr. James W. Leonard, IBM research librarian was 
submitted on December 15, 1998 [Attachment 22]. Dr. Leonard did a search of articles 
referencing Applicants article J. G. Bednorz and K. A. Muller, Zeitschrift fur Physik B- 
Condensed Matter, 64 , pp. 189-193 (Sept. 1986) [Attachment 3] which is incorporated 
by reference in the specification at page 6, lines 8-10. As stated at page 6 this article is 
the basis for Applicants invention. More than 5800 articles have referenced Applicants' 
article. This is evidence that Applicants' teaching in the present application has 
motivated persons of skill in the art to work in the field of high T c superconductivity and 
that Applicants teaching has fully enabled the invention of their claims. All these articles 
citing Applicants' article acknowledge that their work is based on Applicants' teaching. 

Claims 1 1 2, 1 1 3, 1 1 7, 1 1 8, 1 22 and 1 23 of the parent application were rejected under 
35 USC 1 12 as indefinite for using terminology "layer-type". These claims correspond 
to added claims 256, 257, 261, 262, 266 and 267 herein. Applicants respectfully 
disagree. 



YO987-074BZ 



Page 112 of 187 



08/479,810 




The undersigned attorney did a search in Lexis for the terms "layer-type" and the term 
"layer" preceding the term "type" by one word (layer pre/1 type). In this search Lexis 
found 225 issued US patents using this terminology in the claims. The USPTO has, 
therefore, accepted this terminology as definite within the meaning of 35 USC 112. 
Attachment A of the Applicants' response dated December 22, 1998 [Attachment 35], is 
the results of this search printed out using the .kw or "kwick" feature which prints the 
searched term and words before and after the searched term. The searched 
terminology appears in a number of forms such as "layer type", "layer-type", "layer of 
type". In view thereof Applicants request the Examiner to withdraw the rejection of 
claims 1 1 2, 1 1 3, 1 1 7, 1 1 8, 1 22 and 1 23 under 35 USC 1 1 2 as indefinite for using the 
terminology "layer-type". 

In attachment B of the Applicants' response dated December 22, 1998 [Attachment 36], 
there is a search done by Jim Leonard, an IBM Research librarian, at the request of the 
undersigned attorney of the term "Layered like" and "layered type" in on-line non-patent 
literature prior to Applicants' filing date. From Attachment B of the Applicants' response 
dated December 22, 1998 [Attachment 36], it is clear that these terms are used and 
understood by persons of skill in the art. 

In attachment C of the Applicants' response dated December 22, 1998 [Attachment 37], 
there is a search done by Jim Leonard, an IBM Research librarian, at the request of the 
undersigned attorney of the term "rare earth like" in on-line non-patent literature prior to 
Applicants' filing date. From this Attachment C it is clear that this term is used and 



YO987-074BZ 



Page 113 of 187 



08/479,810 




understood by persons of skill in the art. This is in addition to the other evidence of the 
definiteness of this term to overcome the rejection of Applicants' claims as indefinite for 
using the term "rare earth like" which Applicants respectfully request the Board to 
reverse. 

In Attachment D of the Applicants' response dated December 22, 1998 [Attachment 
38], there is a search done by Jim Leonard, an IBM Research librarian, at the request 
of the undersigned attorney of the term "perovskite like" in on-line non-patent literature 
prior to Applicants' filing date. From this Attachment D it is clear that this term is used 
and understood by persons of skill in the art. This is in addition to the other evidence of 
the definiteness of this term to overcome the rejection of Applicants' claims as indefinite 
for using the term "perovskite like" which Applicants respectfully request the Board to 
reverse. 

The Examiner Further states in the final rejection of the parent application: 

(1) The terms "layer-type" and "perovskite-like" are unclear because the 
"type" or "like" terms are deemed to be indefinite. Terms such as "like", 
"similar", and "type" are indefinite." It is suggested that "layer-type 
perovskite-like crystal structure" be changed - a substantially layered 
perovskite crystal structure 

Applicants have said that person of skill in the art would understand (rare earth-like) to 
mean that a location occupied by a rare earth element can also be occupied by another 
element which would have chemical properties similar enough to the rare earth 

YO987-074BZ Page 1 1 4 of 1 87 08/479,81 0 




elements such that it would fit in to the lattice site occupied by the rare earth element 
and act chemically as a rare earth element. To this the Examiner has responded "[t]hat 
response does not alleviate the problem, however. Other elements may 'fit' into the 
lattice but they may not necessarily be 'rare-earth-like'". This comment does not 
address the issue. There are only about 100 elements of which 14 or 15 are rare-earth 
elements leaving about 86 other elements. It is not difficult for a person of skill in the 
art to determine which elements will behave like a rare-earth element when placed in 
the lattice. 

Claims 112, 113, 115, 117, 118, 120, 122, and 1 23 of the parent application were found 
to be indefinite for the reasons that follow. Corresponding claims herein are 256, 257, 
261,262, 264, 266 and 267. 

i. In claim 112, line 5, has the terms "layer-type" and "perovskite-like", 
both of which are indefinite. 

ii. In claim 113, line 5, has the terms "layer-type" and "perovskite-like", 
both of which are indefinite. 

iv. In claim 117, line 5, has the terms "layer-type" and "perovskite-like", 
both of which are indefinite. 

v. In claim II 8, line 5, has the terms "layer-type" and "perovskite-like", 
both of which are indefinite. 

viii. In claim 122, line 5, has the terms "layer-type" and "perovskite-like", 
both of which are indefinite. 



YO987-074BZ 



Page 115 of 187 



08/479,810 



ix. In claim 123, line 5, has the terms "layer-type" and "perovskite-like", 
both of which are indefinite. 



d. Applicants' arguments filed March 7, 1997 (#59) have been fully 
considered but they are not persuasive. 

These issues have been addressed above. 

Applicants have cited numerous issued U.S. patents using "type" and "like" in the 
claims. Many of these patents used the identical terminology objected to by the 
Examiner which has been used by Applicants. Many issued U.S. patents similar 
terminology to that used by Applicants. The Examiner has provided no reason for 
rejecting Applicants claims using the terminology "layer-type", "perovskite like", 
"perovskite type" and "rare earth like" under §112, second paragraph as indefinite 
when there are issued patents using these and related terms in the claims. 

In view of these arguments Applicants request withdrawal of the rejections of claims 
using this terminology as being indefinite under 35 U.S.C. § 1 12, second paragraph. 



YO987-074BZ 



Page 116 of 187 



08/479,810 




ARGUMENTS IN RESPONSE TO THE EXAMINER'S ANSWER 
IN THE PARENT APPLICATION 

In the parent application, Applicants submitted an appeal brief to which the Examiner 
responded with an Answer. 

In the answer of the parent application the Examiner states: 

In the answer at section (10) "Grounds of Rejection" the Examiner states: 
The following ground(s) of rejection are applicable to the appealed claims: 

The specification is objected to under 35 U.S.C. § 1 12, first paragraph, as 
failing to provide an enabling disclosure commensurate with the scope of 
the claims. 

The present specification is deemed to be enabled only for compositions 
comprising a transition metal oxide containing at least a) an alkaline earth 
element and b) a rare-earth element or Group III B element. 

Note that the above 112, first paragraph, rejection has been modified in 
scope from the Final Office Action. Upon careful consideration of the 
evidence as a whole, including the specification teachings and examples, 
and applicant's affidavits and remarks, the Examiner has determined 
that the instant specification is enabled for compositions comprising 
a transition metal oxide containing an alkaline earth element and a 
rare-earth or Group 1MB element (as opposed to only compositions 
comprising BaLa 5x CU 5 0 v . as stated in the Final Office action). 



YO987-074BZ 



Page 117 of 187 



08/479,810 




Applicant has provided guidance throughout the instant specification that various 
compounds, such as transition metal oxides (such as copper oxide) containing an 
alkaline earth element and a rare earth or Group 1MB element result in superconductive 
compounds which may in turn be utilized in the instantly claimed methods. 

Applicants disagree that they have only enabled compositions containing an alkaline 
earth element and a rare earth or Group 1MB element to result in superconductive 
compounds which may in turn be utilized in the method claims of the parent application 
132, 133, 136-138, 143, 144, 146, 148, 152-157, 160-163, 167-168, 171-173, which 
correspond to 258-260, 263-265 and 268-270 herein. Applicants respectfully disagree 
with the Examiner. There are numerous examples of high T c superconductors made 
using the general principals of ceramic science as taught by Applicants that existed 
prior to Applicants' earliest filing date. The affidavit of Duncombe [Attachment 20] 
submitted by Applicants specifically recites some of the compounds reported on in the 
several hundred pages included from his lab note books which include: Y, Ba 2 Cu 3 (X, 
Y; Ba 2 Cu 3 0 3 ; Bi 215 Sr 198 Cai 7 Cu 2 0,^; Ca (2x > Sr x Cu O* and Bi 2 Sr 2 Cu O*. Even though the 
last three compounds are made according to Applicants' teaching they do not come 
within the scope of the claims allowed by the Examiner in the answer of the parent 
application since they do not include a rare earth or a group NIB element. Moreover, in 
the answer the Examiner quotes from the preface of the Poole article [Attachment 21] 
which states in part at A3: "The unprecedented worldwide effort in superconductivity 
research that has taken place over the past two years has produced an enormous 
amount of experimental data on the properties of the copper oxide type materials that 



YO987-074BZ 



Page 118 of 187 



08/479,810 




exhibit superconductivity above the temperature of liquid nitrogen. ... During this period 
a consistent experimental description of many of the properties of the principal 
superconducting compounds such as BiSrCaCuo, LaSrCuO, TIBaCaCuO. and 
YBaCuO has emerged". The first and third of these compositions does not come within 
the scope of the claims allowed by the Examiner in the answer of the parent application 
even though Poole states that they are easy to make following the general principals of 
ceramic science as taught by Applicants. Other data supporting Applicants' view is 
reported in the Review Article "Synthesis of Cuprate Superconductors" by Rao et al., 
IOP Publishing Ltd. 1 993. A copy of this article is in Attachment 44 of this response. 
This article lists in Table 1 the properties of 29 cuperate superconductors made 
according to Applicants 1 teaching. Twelve (#'s 1, 8-13, 16, 17, 20, 21, 27 and 28) of 
those listed do not come within the scope of the claims allowed by the Examiner. Only 
three of the 29 have a T c < 26° K. Those twelve do not contain one or more of a rare 
earth, a group NIB element or an alkaline earth element. It is thus clear that claims of 
broader scope than allowed in the answer of the parent application should be allowed 
since it is clear that the allowed claims can be avoided following Applicants* teaching 
without undue experimentation. 

At page 21 of the answer of the parent application, the Examiner comments in regard to 
the claims rejected under 35 USC 112, second paragraph, the Examiner states that 
"[n]ote the Examiner declines to comment on Applicants' remarks regarding the 
after-final submissions which have not been entered or considered by the Examiner." 
These after final submissions of the parent application have been submitted in the 



YO987-074BZ 



Page 119 of 187 



08/479,810 




present application. These unentered after final submissions provide evidence that the 
terminology "perokskite-like", perovskite-type", and "rare-earth-like" were understood by 
persons of skill in the art prior to Applicants' filing date. This evidence is in addition to 
evidence previously submitted to show that these terms were well understood in the art. 
Thus this new evidence is not directed to any new issues but is additional evidence on 
the same issue. Some of the additional evidence is issued US patents having claims 
containing the identical terminology which the Examiner finds indefinite. Other 
evidence is issued US patents using similar terminology in issued claims indicates that 
the use of such terminology in US patent claims is standard USPTO practice. 



YO987-074BZ 



Page 120 of 187 



08/479,810 




SUMMARY OF ARGUMENT IN REPLY 
THE EXAMINER'S ANSWER IN THE PARENT 

THE EXAMINER HAS NOT REBUTTED APPELLANTS' 
CLAIM OF PRIORITY IN THE ANSWER IN THE PARENT APPLICATION 

In the answer of the parent application the Examiner has not rebutted Applicants' 
arguments in support of their claim of priority. Therefore, Applicants request the grant 
of Applicants' claim of priority. 

REJECTIONS UNDER 35 USC 102 AND 103 NECESSARILY 
REQUIRES THAT ALL CLAIMS ARE FULLY ENABLED 

In the answer of the parent application the Examiner has withdrawn the rejections 
under 35 USC 102 and 103 over the Asahi Shinbum article since Applicants have 
shown that they conceived prior to the date of this article and were diligent to a 
reduction to practice. The Examiner has not commented on nor rebutted Applicants' 
argument that in rejecting claims under 35 USC 102 and 103 over the Asahi Shinbum 
article [Attachment 6], the Examiner necessarily concludes that Applicants' claims are 
fully enabled. The Asahi Shinbum article refers to Applicants' work which was reported 
in their original article which is incorporated by reference in Applicants' specification. 
Since Applicants' original article is the only information enabling the Asahi Shinbum 
article, it logically follows that the Examiner necessarily concludes that all Applicants' 
claims are fully enabled. 



YO987-074BZ 



Page 121 of 187 



08/479,810 




OBJECTION TO SPECIFICATION AND REJECTION OF CLAIMS 

UNDER 35 USC 1 12, FIRST PARAGRAPH 
THE EXAMINER HAS FAILED TO MEET HIS BURDEN OF PROOF 

The only support for the objection to the specification and rejection of claims as not 
enabled under 35 USC 112, first paragraph, is the Examiner's unsupported statement 
that the field of high T c superconductivity is unpredictable, the Examiner's unsupported 
statement that the theoretical mechanism of superconductivity in these materials was 
not well understood, and two examples in Applicants' specification that show metal 
oxides having a T c < 26°K. The Examiner provides no extrinsic evidence to support the 
Examiner's position of nonenablement. Applicants have submitted five affidavits of 
experts rebutting the Examiner's position of nonenablement, the article by Rao et al. 
[Attachment 44] and the book by Poole et al. [Attachment 21] which clearly states that it 
is easy to fabricate high T c materials. Moreover, the book by Poole [Attachment 21], 
the Affidavit of Duncombe [Attachment 20] and the article by Rao [Attachment 44] 
shows numerous examples of high T c compositions fabricated according to Applicants' 
teaching which do not fall within the scope of the claims allowed by the Examiner in the 
answer of the parent application and the corresponding added claims herein, but do fall 
within the scope of the claims which have not been allowed by the Examiner in the 
answer to the parent application and the corresponding added claims added herein. 
The Examiner has not rebutted Applicants' application of case law which holds that 35 
USC 112, first paragraph, permits claims to read on inoperable species. 
Notwithstanding, Applicant's claims do not read on any inoperative species. Under In 



YO987-074BZ 



Page 122 of 187 



08/479,810 



re Angstadt 190 USPQ 219, to sustain a rejection under 35 USC 112, first paragraph, it 
is the Examiner's burden to show that a person of skill in the art must engage in undue 
experimentation or require ingenuity beyond that expected of a person of skill in the art 
to practice the claimed invention. According to In re Wands 8 USPQ2d 1400, an 
application does not fail to meet the 35 USC 112 enablement requirement even though 
experimentation is needed to determine samples useful to practice the claimed 
invention when the experimentation is not undue. The Examiner has not meet his 
burden under 35 USC 112, first paragraph, as articulated in In re Angstadt and In re 
Wands. Moreover under In re Angstadt, providing the examples in Applicants' 
specification with a T c < 26°K is commendable frankness and part of Applicants' 
teaching on how to select a high T c material. In re Angstadt and In re Wands hold that 
a claim is enabled if undue experimentation is not needed to determine if a particular 
species with in the scope of the claim is effective to practice the claimed invention. This 
is the situation in the present application and the Examiner has not rebutted Applicants 
showing that only routine experimentation is needed to fabricate materials useful to 
practice Applicants' invention. It is Applicants' view that there can be no question that 
the record as a whole supports Applicants' view that all the claims are fully enabled. 
Thus, Applicants request withdrawal of the objection to the specification and the 
rejection of claims under 35 USC 112, first paragraph. 



YO987-074BZ 



Page 123 of 187 



08/479,810 




THE EXAMINER HAS NOT REBUTTED APPELLANTS' 
PROOF THAT THE TERMINOLOGY OF THE CLAIMS REJECTED 
UNDER 35 USC 112, SECOND PARAGRAPH, 
ARE UNDERSTOOD BY PERSONS OF SKILL IN THE ART 

The Examiners' rejection of claims as indefinite under 35 U.S.C. 112, second 
paragraph, for using terminology, such as "rare-earth like", "perovskite-like", 
"perovskite-type", "layer-like" and "layer-type" is a clear error since there are many 
issued patents having claims using terminology which is a combination of '"-type", and 
"-like " and there are issued United States Patents having claims including the exact 
terminology objected to by the Examiner. The Examiner has given no reasons why the 
claims in the instant application are indefinite because of terminology using "-type" and 
"-like" while they are definite in the many cited issued patents. In the answer of the 
parent application, the Examiner has not rebutted Applicants' arguments in the brief. 
Applicants have provided extensive proof that this terminology was understood by 
persons of skill in the art at the time Applicants published their original article. 
Moreover, Applicants' original article was published about eight months before the filing 
date of the first application in the lineage of the present application. Since Applicants 
used this terminology in their original article, the use of this terminology was part of the 
vernacular of persons of skill in the art and is thus understood by persons of skill in the 
art as of the earliest filing date of the instant application. The book by Poole 
[Attachment 21] acknowledges this and uses this terminology. Thus Applicants 
respectfully request the Examiner to withdraw the rejection of claims under 35 USC 
1 1 2, second paragraph. 

YO987-074BZ Page 1 24 of 1 87 08/479,81 0 



DETAILED ARGUMENT IN REPLY TO THE 
EXAMINER'S ANSWER IN THE PARENT APPLICATION 

Claim 136 of the parent application was allowed at the time of Final Rejection of the 
parent application. Claims 114-116, 119-121, 124-126, 132, 133, 137, 138, 143, 144, 
146, 148, 152-157, 160-163, 167, 168, 171, 172 and 173 of the parent application were 
subsequently allowed in the Examiner's answer of the parent application. These claims 
correspond to added claims herein 238-260, 263-265, 268-270, 276, 277, 280-282, 
287, 288, 290, 293, 297-301 , 304-307, 311,312 and 31 5-31 7. 

Claims herein remain rejected under 35 U.S.C. 112, first paragraph. 

Claims herein remain rejected under 35 U.S.C. 112, second paragraph. 

The 35 USC 102/103 Rejections Withdrawn 
In the Parent Application In View of Applicants' Argument 

Applicants acknowledge the Examiner's statement in the answer of the parent 
application that "[t]he prior art rejection over Asahi Shinbum, International Satellite 
Edition (London) November 28, 1986 (hereinafter, "the Asahi Shinbum article" 
[Attachment 6]) is withdrawn in view of applicant's remarks .... appearing at pages 
39-44 of the supplemental response filed 8/5/99" of the parent application. Applicants 
respectfully submit that the Examiner has not withdrawn the rejection but has found the 
rejection moot in view of the fact that the Examiner has agreed that Applicants have 



YO987-074BZ 



Page 125 of 187 



08/479,810 




sufficiently demonstrated conception in the United States before the publication date of 
the Asahi Shinbum article and diligence to a reduction to practice. 



The Examiner Has Not Rebutted Applicants' 
Claim of Priority to the Priority Document 
In the Answer in the Parent Application 



Applicants disagree with the Examiner's statement "Accordingly, the issue of claims ... 
being supported by the priority document is believed moot in view of the withdrawal of 
the prior art rejections." Support for claims in a priority document is a separate and 
distinct issue from whether the claims are anticipated by a reference under 35 USC 102 
or obvious over a reference under 35 USC 103. Therefore, the issue of claims 
supported by the priority document is not moot in view of the withdrawal of the prior art 
rejections. Since the Examiner in the answer did not rebut Applicants' detailed and 
specific argument rebutting the Examiner's view that Applicants' claims are not 
supported by the priority document, Applicants respectfully request the Examiner to 
grant Applicants' claim of priority to the priority document. 

The Examiner Has Not Rebutted Applicants' Argument In the In The Parent 
Application That The Prior Art Rejections Necessarily Require That All Of 
Applicants' Claims Rejected Under 35 USC 120/103 Are Fully Enabled 

In paragraph 9 of the Answer of the parent application entitled "Prior Art of Record" the 
Examiner states "No prior art is relied upon by the Examiner in the rejection of the 
claims under appeal". Applicants disagree. Claims have been rejected as anticipated 

YO987-074BZ Page 126 of 187 08/479,810 



• 



under 35 USC 1 02(a) by the Asahi Shinbum article [Attachment 6], and claims have 
been rejected as obvious under 35 USC 103(a) in view of the Asahi Shinbum article. 
These rejections have not in fact been withdrawn, but, as stated above, have in fact 
been found to be moot. 

In the Final Action of the parent application all the claims, except claim 136 
corresponding added claim 280 herein, were rejected either under 35 USC 102 or 35 
USC 103 over the Asahi Shinbum article. Thus in the Final Action of the parent 
application, the Examiner is stating that everything within Applicants' non-allowed 
claims rejected under 35 USC 102 over this article, is found in the Asahi Shinbum 
article and a person of skill in the art can practice the invention of Applicants' claims 
rejected under 35 USC 1 02 with what is taught in the Asahi Shinbum article alone. 
Moreover, in the Final Action, the Examiner is stating that all the claims rejected under 
35 USC 103 over the Asahi Shinbum article alone can be practiced by a person of skill 
in the art with what is taught in the Asahi Shinbum article in combination with what is 
known to a person of skill in the art. All of Applicants' claims rejected over the Asahi 
Shinbum article are dominant to (or generic to) the one claim, claim 136 corresponding 
added claim 280 herein, allowed in the Final Action of the parent application. Thus by 
stating that all the non-allowed claims are anticipated or obvious over the Asahi 
Shinbum article alone, the Examiner is stating that a person of skill in the art needs 
nothing more that what is taught in the Asahi Shinbum article [Attachment 6] or what is 
taught therein in combination with what is known to a person of skill in the art to practice 
that part of each of Applicants' non-allowed claims which does not overlap Applicants' 



YO987-074BZ 



Page 127 of 187 



08/479,810 



allowed claims. Thus, it logically follows from the 35 USC 102/103 rejections that all of 
Applicants' claims are fully enabled. 

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

and in the second paragraph: 

The ceramic newly discovered, is an oxide compound of La and Cu with 
Barium which has a structure of the so-called perovskite and shows 
metal-like properties. Prof. Tanaka's laboratory confirmed that this 
material shows diamagnitism (Meisner effect) which is the most important 
indication of the existence of superconductivity. 

The Swiss scientist are the inventors of the present application. Thus this clearly refers 
to Applicants 1 work which was reported in Applicants' article [Attachment 3] which is 
incorporated by reference in the present application. These passages say that Prof. 
Tanaka confirmed Applicants' work. The newly discovered ceramic referred to in the 
article is the ceramic reported on in Applicants' article. It is thus clear that for the 
Examiner to have rejected Applicants' claim over the Asahi Shinbum article under 35 



YO987-074BZ 



Page 128 of 187 



08/479,810 



USC 102 or 35 USC 103, the Examiner necessarily had to find that Applicants' article 
fully enabled their claims. 

In the answer of the parent application the Examiner has not commented on nor 
rebutted these arguments. In Applicants' brief in the parent application at pages 21-22 
and at pages 49-51 Applicants apply these arguments in detail to the rejection of 
Applicants' claims under 35 USC 102 and 35 USC 103, respectively. The Examiner, 
therefore, must be taken to agree with Applicants' argument in the brief of the parent 
application that their teaching has fully enabled all of their claims. 

At pages 50-52 of the brief in the parent application, at the beginning of Applicants' 
arguments in regard to the objections and rejection based on 35 USC 1 12, first 
paragraph, Applicants have repeated these arguments, that is that the 35 USC 102/103 
rejections over the Asahi Shinbum article logically requires that all of Applicants' claims 
are fully enabled by Applicants' teaching. The Examiner has again not responded nor 
rebutted them. The Examiner, therefore, must be taken to agree with Applicants' 
argument in the brief that their teaching has fully enabled all of their claims. 

The Examiners rejections under 35 USC 102 and 103 over the Asahi Shinbum articles 
have been maintained since the Office Action dated August 26, 1992. Thus, the 
Examiner has maintained the view that all of Applicants' claims are fully enabled for 
about 12 years. The Examiner has not rebutted Applicants' arguments in rebuttal of the 
Examiner's objection under 35 USC 112, first paragraph, that the specification fails to 



YO987-074BZ 



Page 129 of 187 



08/479,810 



provide an enabling disclosure commensurate with the scope of the claims and the 
rejections of claims under 35 USC 112, first paragraphs, for lack of enablement. 

In summary, all of Applicants' claims on appeal in the parent application added 
corresponding claims herein are 232-321 , except for claim 136 added corresponding 
claim 280, were originally rejected under 35 USC 102 and/or 103 as being anticipated 
or obvious over the Asahi Sinbum article which only stated that a professor in Japan 
reproduced Applicants' work reported in Applicants' published article which was 
incorporated by reference in the present application. The only logical conclusion from 
these rejections is that Applicants' teaching fully enabled the claims originally rejected 
under 35 USC 102 and/or 103. The Examiner in the answer in the present application 
has not rebutted this. The Examiner has, therefore, conceded, and is estopped from 
denying, that all of Applicants' claims are fully enabled by Applicants' teaching. 

Grounds For Rejection 

In paragraph 10 of the answer of the parent application entitled 'Grounds of Rejection". 

The Examiner states: 

The following ground(s) of rejection are applicable to the appealed claims: 

The specification is objected to under 35 U.S.C. § 1 12, first paragraph, as 
failing to provide an enabling disclosure commensurate with the scope of 
the claims. 



YO987-074BZ 



Page 130 of 187 



08/479,810 




In support of this statement the Examiner states: 

The present specification is deemed to be enabled only for compositions 
comprising a transition metal oxide containing at least a) an alkaline earth 
element and b) a rare-earth element or Group 1MB element. The art of 
high temperature (above 30'K) superconductors is an extremely 
unpredictable one. Small changes in composition can result in dramatic 
changes in or loss of superconducting properties. The amount and type 
of examples necessary to support broad claims increases as the 
predictability of the art decreases. Claims broad enough to cover a large 
number of compositions that do not exhibit the desired properties fail to 
satisfy the requirements of 35 U.S.C. 112. Merely reciting a desired result 
does not overcome this failure. In particular, the question arises: Will any 
layered perovskite material exhibit superconductivity. 

A large number of examples are needed to support a broad claim in an unpredictable 
art only if a person of skill in the art has to engage in undue experimentation to 
determine embodiments not specifically recited in Applicants' teachings. It is the 
Examiner's burden to show that undue experimentation is necessary. The Examiner 
has presented no extrinsic evidence that a person of skill in the art would have to 
engage in undue experimentation. The Examiner has stated without support that the 
art of high temperature superconductivity is an extremely unpredictable one. Applicants 
have not merely stated a desired result as clearly shown by the five affidavits submitted 
by experts in the field, the Poole book [Attachment 21] and the Rao article [Attachment 
42]. And it is not necessary for any layered perovskite to work to satisfy 35 USC 1 1 2, 



YO987-074BZ 



Page 131 of 187 



08/479,810 




first paragraph, it is only necessary that they can be determined without undue 
experimentation. 

The Examiner in the answer in the parent application restates without support that "It 
should be noted that at the time the invention was made, the theoretical mechanism of 
superconductivity in these materials was not well understood. That mechanism still is 
not understood." Applicants note that the theory of superconductivity has been 
understood for some time. For example, at page 20 of the brief in the parent 
application the book by Von Laue is referred to [Attachment 5], This book was 
published in English in 1952 and presents a comprehensive theory of superconductivity. 
The entire text of this book is included in Attachment 42 of this response. 
Notwithstanding, for a claim to be enabled under section 112, it does not require an 
understanding of the theory. The Examiner then conclusorily states in the answer in 
the parent application "Accordingly, there appears to be little factual or theoretical basis 
for extending the scope of the claims much beyond the proportions and materials 
actually demonstrated to exhibit high temperature superconductivity". This statement is 
clearly inconsistent with In re Angstadt 190 USPQ 219 and In re Wands 8 USPQ2d 
1400 which hold that to satisfy the first paragraph of 35 USC 1 12 it is only necessary 
that a person of skill in the art not exercise undue experimentation to make samples 
that come within the scope of the Applicants' claims. Applicants have clearly shown 
that only routine experimentation is needed to fabricate samples to practice Applicants' 
claimed invention. The Examiner has not denied, nor rebutted this. The Examiner 
again in the answer in the parent application incorrectly cites Brenner v. Morrison 



YO987-074BZ 



Page 132 of 187 



08/479,810 




stating a "patent is not a hunting license. It is not a reward for the search, but a reward 
for its successful conclusion". As stated in the brief of the parent application, this quote 
applies to utility not to enablement and is thus incorrectly cited by the Examiner. 

Reply to Answer in the Parent Application 
Paragraph (11) Entitled "Response to Argument" 

■i 

The Examiner states in the answer of the parent application: 

As discussed above in section 6 Issues, the prior art rejection over Asahi 
Shinbum, International Satellite Edition (London), November 28, 1986 
(hereinafter, "the Asahi Shinbum article") is withdrawn in view of 
applicant's remarks. It is believed that the withdrawn of the prior art 
rejection addresses each of applicant's remarks appearing at pages 7-51 
and pages 1 14-173 of the Substitute Brief filed 1/18/00 (paper #89). 

Applicants disagree-with the Examiner that "that the withdrawn of the prior art rejection 
addresses each of applicant's remarks appearing at pages 7-51 and pages 1 14-173 of 
the Substitute Brief". This is only true in so far as these pages contains arguments in 
rebuttal of the rejections under 35 USC 102 and 103 which have been rendered moot 
since the Examiner has been convinced by their arguments that Applicants conceived 
their invention in the United States prior to the date of the Asahi Sinbum article and 
were diligent to a reduction to practice. As noted above, the Examiner has not rebutted 
Applicants' argument that the 35 USC 102 and 103 rejections over the Asahi Sinbum 
article necessarily requires that Applicants have fully enabled all their claims. 



YO987-074BZ 



Page 133 of 187 



08/479,810 





Applicants acknowledge that the rejection under under 35 USC 112, first paragraph, in 
the Final Office Action of the parent application, has been modified in scope in the 
answer of the parent application. The Examiner in the answer of the parent application 
has determined that the instant specification is enabled for compositions comprising a 
transition metal oxide containing an alkaline earth element and a rare-earth or Group 
NIB element. Applicants disagree with this. As shown below there are numerous 
materials made according to Applicants' teaching which do not come within the scope 
of the claims allowed by the Examiner in the answer of the parent application. 

The Examiner logically inconsistently with the 35 USC 102/103 rejection of Applicants' 
claims objects to Applicants' specification and rejects claims as not enabled under 35 
USC 112, first paragraph. With respect to the remaining claims rejected under 35 
U.S.C. 112, first paragraph, the Examiners referring to: 

1 . Applicants' remarks appearing at pages 52-101 of the Substitute Brief 
of the parent application; 

2. Applicants' arguments filed 1/18/00; 

3. the Affidavits filed September 29, 1995, January 3, 1996 (paper nos. 49 



and 52); 



4. the after-final submissions December 15, 1998: (1.132 Declarations of 
Mitzi, Tsuei, Dinger, Shaw and Duncombe) (Advisory mailed 2/25/99 



YO987-074BZ 



Page 134 of 187 



08/479,810 




(Paper 77E)) states they "have been fully considered but they are not 
deemed to be persuasive." (emphasis added) 

All after final submissions in the parent application are submitted in the present 
application. As noted at page 8 above "deemed" means to have an opinion: believe. 
The Examiner uses the word "deemed" often in the Examiner's answer of the parent 
application, that is, it is the Examiner's opinion or belief unsupported by any factual 
evidence. Applicants' view is that the Examiner's use of the word "deemed" 
necessarily requires a finding that the Examiner has not meet the Examiner's burden 
for establishing a case of lack of eneablement since the argument is only based on the 
Examiner's opinion or belief and not on any significant factual evidence and is 
therefore, an unsupported conclusory statement. As noted at page 64 of the Brief In re 
Angstadt states at 190 USPQ 219: 

We note that the PTO has the burden of giving reasons, supported by the record as a 
whole, why the specification is not enabling. In re Armbruster, 512 F.2d 676, 185 
USPQ 152 (CCPA 1975). Showing that the disclosure entails undue experimentation is 
part of the PTO's initial burden under Armbruster; this court has never held that 
evidence of the necessity for any experimentation, however slight, is sufficient to 
require the applicant to prove that the type and amount of experimentation needed is 
not undue. 



YO987-074BZ 



Page 135 of 187 



08/479,810 




The Examiner in the answer of the parent application has not commented on 
Applicants' arguments rebutting the Examiner's reasons for non-enablement. The 
Examiner has not satisfied his burden of giving reasons, supported by the record as a 
whole, why the specification is not enabling. Applicants have provided extensive 
evidence that to practice Applicants' claimed invention does not require undue 
experimentation but only requires routine experimentation. That only routine 
experimentation is needed to practice Applicants' claimed invention is shown for 
example by the affidavits of Mitzi [Attachment 16], Dinger [Attachment 17], Tsuei 
[Attachment 18], Shaw [Attachment 19] and Duncombe [Attachment 20], the article of 
Rao et al. [Attachment 44] and the book of Poole et al. [Attachment 21] all of which 
state or show it is straight forward to use the general principles of ceramic science to 
make high T c compositions, such as transition metal oxide superconductors, which is 
Applicants' teaching. 

The Examiner has not rebutted this but merely deems Applicants' specification to be 
non-enabling, that is, it is the Examiners opinion or belief that Applicants' specification 
is nonenabling. 

The Examiner further states in the answer of the parent application: 

The additional case law and arguments by the Applicants have been duly 
noted. For the reasons that follow, however, the record as a whole is 
deemed to support the initial determination that the originally filed 



YO987-074BZ 



Page 136 of 187 



08/479,810 




disclosure would not have enabled one skilled in the art to make and use 
the invention to the scope that it is presently claimed. (Emphasis Added) 

The Examiner has not commented upon nor rebutted Applicants' application of these 
cases to the facts of the present claims under examination. The Examiner merely 
deems (that is in the Examiner's unsupported conclusory opinion or belief that) "the 
originally filed disclosure would not have enabled one skilled in the art to make and use 
the invention to the scope that it is presently claimed." The Examiner presents no 
intrinsic or extrinsic facts to support the Examiner's opinion or belief. The Examiner 
has, therefore, not met his burden "of giving reasons, supported by the record as a 
whole, why the specification is not enabling." In re Armbruster, 512 F.2d 676, 185 
USPQ 152 (CCPA 1975). Merely stating without evidentiary support that the art of high 
T c superconductivity is unpredictable and stating without support that the theoretical 
mechanism is not understood does not satisfy the Examiner's burden. 

The Examiner further states in the answer of the parent application: 

The Applicants quote several passages from their specification at pp. 13-15 of 
their September 29, 1 995 Amendment, but the issue is the scope of enablement, 
not support. The present disclosure may or may not provide support for 
particular embodiments, but the issue here is the scope to which that disclosure 
would have taught one skilled in the art how to make and use a composition 
which shows the onset of superconductivity at above 26°K. Construed in light of 
that issue, the invention is not deemed to have been fully enabled by the 
disclosure to the extent presently claimed. (Emphasis Added) 



YO987-074BZ 



Page 137 of 187 



08/479,810 




Again the Examiner deems Applicants' claims not enabled. At page 54 of the 
substitute brief of the parent application Applicants state "Applicants do not have to 
provide experimental results for every composition that fall within the scope of their 
claims when a person of skill in the art exercising routine experimentation has a 
reasonable expectation of success following Applicants' teaching to achieve a 
composition through which can be flowed a superconducting current according to the 
teaching of Applicants' specification." The Examiner has not commented upon nor 
rebutted this argument. As extensively shown in the substitute brief of the parent 
application, it is a matter of routine experimentation to make the compounds which 
come with in the scope of Applicants' claims. The Examiner has not commented on nor 
rebutted this. The Examiner merely states "Construed in light of that issue, the 
invention is not deemed to have been fully enabled by the disclosure to the extent 
presently claimed." Again, the Examiner is merely stating without any intrinsic or 
extrinsic evidence that it is the Examiners' conclusory opinion or belief that the invention 
is not fully enabled by the disclosure to the extent presently claimed. Again the 
Examiner has not met his burden "of giving reasons, supported by the record as a 
whole, why the specification is not enabling." In re Armbruster, 512 F.2d 676, 185 
USPQ152 (CCPA 1975). 

The Examiner further states in the answer of the parent application: 

(1) In their September 29, 1995 Amendment, the Applicants argue that 
their disclosure refers to "the composition represented by the formula 
RE-TM-0, where RE is a rare earth or rare earth-like element, TM is a 



YO987-074BZ 



Page 138 of 187 



08/479,810 




nonmagnetic transition metal, and 0 is oxygen", and list several species 
such as "La2-x,BaxCU0 4 -y" which they indicate are found in the present 
disclosure. 

(2) Notwithstanding that argument, it still does not follow that the invention 
is fully enabled for the scope presently claimed. The claims include 
formulae which are much broader than the RE-TM-0 formula cited in the 
disclosure. Claim 24 recites "a transition metal oxide", claim 88 "a 
composition", and claim 96 "a copper-oxide compound". 

Applicants note that their disclosure is not limited to any particular formula as implied by 
the Examiner. See for example the Summary of The Invention which states at page 7, 
lines 2-5, "In general, the compositors are characterized as mixed transition metal oxide 
systems where the transition metal can exhibit multivalent behavior". 

As stated in the substitute brief of the parent application at pages 54-55: 

According to In re Angstadt 190 USPQ 214, 218 in an unpredictable art, 
§112 does not require disclosure of a test with every species covered by a 
claim. The CCPA states: 

To require such a complete disclosure would apparently necessitate a 
patent application or applications with "thousands" of examples or the 
disclosure of "thousands" of catalysts along with information as to whether 
each exhibits catalytic behavior resulting in the production of 
hydroperoxides. More importantly, such a requirement would force an 
inventor seeking adequate patent protection to carry out a prohibitive 
number of actual experiments. This would tend to discourage inventors 



YO987-074BZ 



Page 139 of 187 



08/479,810 




from filing patent applications in an unpredictable area since the patent 
claims would have to be limited to those embodiments which are 
expressly disclosed. A potential infringer could readily avoid "literal" 
infringement of such claims by merely finding another analogous catalyst 
complex which could be used in "forming hydroperoxides." 

This is exactly the situation in the present application. If Applicants are limited to the 
claims of scope that are allowed by the Examiner in the parent application, a potential 
infringer could readily avoid "literal" infringement of such claims by merely finding, 
through routine experimentation, other compounds having a high T c . As shown below 
there are numerous materials made according to Applicants' teaching which do not 
come within the scope of the claims allowed by the Examiner in the answer of the 
present application. 

The Examiner further essentially repeats in the answer of the parent application what 
was stated in the Final Action of the parent application: 

The present specification actually shows that known forms of a "transition 
metal oxide", "a composition", and "a copper-oxide compound" do not 
show the onset of superconductivity at above 26- K. At p. 3, line 20, 
through p. 4, line 9, of their disclosure, the Applicants state that the prior 
art includes a "Li-Ti-O system with superconducting onsets as high as 
13.7°K." Official Notice is taken of the well-known fact that Ti is a 
transition metal. That disclosure also refers to "a second, nonconducting 
CuO phase" at p. 14, line 18. 



YO987-074BZ 



Page 140 of 187 



08/479,810 




In response to this Applicants stated at page 7 in the brief: 

Applicants' claims are directed to "transition metal oxides", "a 
composition" and "a copper-oxide compound" having a T c in excess of 
26°K which is carrying a superconducting current. Applicants' claims do 
not include in the claimed method compositions having T 0 < 26°K. Thus 
the examples on page 3, line 20 - page 4, line 9, are not included in 
Applicants' claims. That these are transition metal oxides having T c < 
26°K does not mean that Applicants' claims directed to transition metal 
oxides, compositions and copper oxides having T c > 26°K are not 
enabled. Applicants provide the teaching on how to fabricate such oxides 
having T c > 26°K. The "second non-conducting CuO phase" referred to at 
page 14, line 18, again does not mean that Applicants' claims are not 
enabled. Applicants' statements at page 14 is part of Applicants' teaching 
on how to achieve an oxide having a T c > 26°K. The Examiner is 
attempting to use Applicants' complete description of their teaching to 
show lack of enablement when, in fact, this complete teaching provides 
full enablement by showing how samples are and are not to be prepared. 
Applicants have claimed their invention functionally, that is, as a method 
of use so the Applicants' claim do not read on inoperable species. What 
the Examiner "seems to be obsessed with is the thought of transition 
metal oxidesl which won't work to produce the intended result. 
Applicants have enabled those of skill in the art to see that this is a 
real possibility which is commendable frankness in a disclosure ." In 
re Angstadt, Supra. (Emphasis Added) 



YO987-074BZ 



Page 141 of 187 



08/479,810 




The Examiner in the parent application and in this application has not commented on 
Applicants' citation of In re Angstadt in support of their position which has been 
presented as bolded and underlined above. The bolded section above applies to all 
Applicants' claims whether directed to "compositions", "transition metal oxide", "copper 
oxides", "ceramics" etc. The Examiner seams to be of the view that the first paragraph 
of 35 USC 112 requires absolute certainty. As stated in the substituted brief of the 
parent application at pages 54-55 according to In re Angstadt 190 USPQ 214, 218 in an 
unpredictable art, §1 12 does not require disclosure of a test with every species covered 
by a claim. In the answer of the parent application the Examiner has not responded nor 
rebutted Applicants' argument. 

As stated by Applicants in the substitute brief of the parent application, in particular at 
page 63, according to In re Angstadt all that is necessary is that the experimentation 
required to determine which combinations have the desired result (i.e. T c greater than 
26-K) can be produced without undue experimentation and would not "require ingenuity 
beyond that to be expected of one of ordinary skill in the art". 190 USPQ, 214, 218 in 
re Field v. Connover 170 USPQ, 276, 279 (1971). Applicants have provided extensive 
evidence that compounds, for example transition metal oxides, can be made according 
to Applicants' teaching without undue experimentation and without requiring "ingenuity 
beyond that to be expected of one of ordinary skill in the art". In the answer of the 
parent application, the Examiner has not responded to nor rebutted Applicants' 
arguments. 



YO987-074BZ 



Page 142 of 187 



08/479,810 




The Examiner further states: 

Accordingly, the present disclosure is not deemed to have been fully 
enabling with respect to the "transition metal oxide" of claim 24, the 
"composition" of claim 88,, or the "copper-oxide compound" of claim 96. 
(Emphasis added.) 

Again without facts or acceptable reasons the Examiner "deems" Applicants' claims 
not enabled and for the reasons given above Applicants disagree. Applicants 
discovered that compositions, such as metal oxides, have T c > 26°K that is why they 
were awarded a Nobel Prize. With respect to the transition metal oxide of claim 24 of 
the parent application and corresponding claim 232 of the present application, the 
"composition" of claim 88 of the parent application and corresponding claim 237 of the 
present application and the "copper-oxide compound" of claim 96 of the present 
application and corresponding claim 240 of the present application, there is no 
evidence in the record that a person of skill in the art cannot practice the claimed 
invention without undue experimentation. The only attempt made by the Examiner to 
factually support the Examiner's statement that the claims "are deemed not enabled" 
are the examples provided by Applicants which show T c < 26°K. Applicants provide this 
teaching so that a person of skill in the art will be fully informed on how to practice 
Applicants' invention. In this regard the Examiner states on in the answer of the parent 
application: 

The examples at p. 18, lines 1-20, of the present specification further 
substantiates the finding that the invention is not fully enabled for the 



YO987-074BZ 



Page 143 of 187 



08/479,810 




scope presently claimed. With a 1 :1 ratio of (Ba. La) to Cu and an x 
value of 0.02, the La-Ba-Cu-0 form (i.e., "RE-AE-TM-0", per p. 8, line 11) 
shows no superconductivity". With a 2:1 ratio of (Ba, La) to Cu and an x 
value of 0.15, the La-Ba-Cu-0 form shows an onset of superconductivity at 
"T c = 26 -K". It should be noted, however, that all of the claims in this 
application require the critical temperature (T c ) to be "in excess of 26 S K" 
or "greater than 26 Q K". 

Applicants note that all claims herein recite T c > 26°K and Applicants note that 
Examiner states that "the present specification further substantiates the finding that 
the invention is not fully enabled" (Emphasis added) misrepresents the Examiner's 
argument up to this point since up to this point the Examiner has only used the 
unsupported statements that the theory of high T c art is very unpredictable and that the 
theory of high T c in these materials is not understood. These unsupported statements 
do not substantiate anything. 

Applicants note that the Examiner cites in the answer of the parent application 3 
examples from Applicants' specification which are transition metal oxides which do not 
have a have T c > 26°K: 1) a Li-Ti-0 system with superconducting onsets as high as 
13.7°K ( cited at p. 3, line 20, through p. 4, line 9), 2) the 1:1 ratio with an x=0.02 
sample cited on page 18, line 7, which did not show superconductivity, and 3) the 2:1 
composition with x=0.15 with a resistivity drop that occurs at 26 °K. Since in the 
present application all claims recite T c > 26°K, they are only two examples in the 
specification with T c what is recited in the claims. Thus there are only two examples 
upon which the Examiner is "deeming" Applicants' claims not enabled. The Examiner 



YO987-074BZ 



Page 144 of 187 



08/479,810 




seems to be of the view that Applicants must have 100% predictability. Applicants and 
the courts disagree. The fact that there are compounds having T c < 26 9 K does not 
mean that Applicants have not fully enabled their claimed invention. If only routine 
experimentation is needed to determine which compounds have T c > 26-K, without 
requiring ingenuity beyond that to be expected of one of ordinary skill in the art, then 
Applicants' disclosure enables Applicants' claims. In the substitute brief of the parent 
application at page 65 Applicants note that In re Angstadt states at 190 USPQ 219: 

We note that the PTO has the burden of giving reasons, supported by the 
record as a whole, why the specification is not enabling. In re Armbruster, 
512 F.2d 676, 1 85 USPQ 1 52 (CCPA 1 975). Showing that the 
disclosure entails undue experimentation is part of the PTO's initial 
burden under Armbruster; this court has never held that evidence of 
the necessity for any experimentation, however slight, is sufficient 
to require the applicant to prove that the type and amount of 
experimentation needed is not undue. ... Without undue 
experimentation or effort or expense the combinations which do not 
work will readily be discovered and, of course, nobody will use them 
and the claims do not cover them. The [Examiner] wants Applicants 
to make everything predictable in advance, which is impracticable 
and unreasonable. ... The key word is "undue," not 
"experimentation. 9 ' (Emphasis Added) 

The Examiner has not commented on nor rebutted this argument. The Examiner's 
statement that "the present disclosure is not deemed to have been fully enabling" is not 
sufficient to meet the Examiner's burden under In re Armbruster and the Examiner has 
thus failed to establish that Applicants' claims are not enabled. Applicants do not have 



YO987-074BZ 



Page 145 of 187 



08/479,810 




to make everything predictable in advance where, as here, the experimentation to make 
samples that can be used within the scope of the Applicants' claims is not undue. 

The Examiner further states in the answer of the parent application: 

The Applicants also have submitted three affidavits attesting to the 
Applicants' status as the discoverers of materials that superconduct > 
26 Q K. Each of the affidavits further states that "all the high temperature 
superconductors which have been developed based on the work of 
Bednorz and Muller behave in a similar manner (way) 1 '. Each of the 
affidavits add "(t)hat once a person of skill in the art knows of a specific 
transition metal oxide composition which is superconducting above 26 9 K, 
such a person of skill in the art, using the techniques described in the 
(present) application, which includes all known principles of ceramic 
fabrication, can make the transition metal oxide compositions 
encompassed by (the present) claims ... without undue experimentation or 
without requiring ingenuity beyond that expected of a person of skill in the 
art." All three affiants apparently are the employees of the assignee of 
the present application. Those affidavits do not set forth particular facts to 
support the conclusions that all superconductors based on the work 
behave in the same way and that one skilled in Applicants' work behave in 
the same way and that one skilled in the art can make those 
superconductors without undue experimentation. Conclusory statements 
in an affidavit or specification do not provide the factual evidence needed 
for patentability. 



YO987-074BZ 



Page 146 of 187 



08/479,810 




The Examiner in the answer of the parent application has incorrectly stated that 
Applicants have produced three affidavits. Applicants have produced five affidavits of 
affiants who are employed at the IBM, Thomas J. Watson Research Center. The 
affidavits of Shaw [Attachment 19] and Duncombe [Attachment 20] were reviewed and 
considered in paper 77E, page 2 and are referred to at page 10 of the answer of the 
parent application. The affidavits of Mitzi [Attachment 16], Dinger [Attachment 17], 
Tsuei [Attachment 18], Shaw [Attachment 19] and Duncombe [Attachment 20] and the 
book of Poole et al. [Attachment 21] state it is straight forward to use the general 
principles of ceramic science to make high T c transition metal oxide superconductors 
following Applicants' teaching. The book of Poole et al. and the affidavit of Duncombe 
show numerous example of high T c superconductors produced according to Applicants' 
teaching. The affidavits of Shaw and Duncombe cites numerous books and articles 
which provide the general teaching of ceramic science at the time of and prior to the 
filing date of the present application. The affidavit of Duncombe [Attachment 20] also 
provides several hundred pages copied from Mr. Duncombe's notebooks starting from 
before Applicants' filing date showing the fabrication of numerous samples. In regards 
to these pages, Mr. Duncombe states "I have recorded research notes relating to 
superconductor oxide (perovskite) compounds in technical notebook IV with entries 
from November 12, 1987 to June 14, 1998 and in technical notebook V with entries 
continuing from June 7, 1988 to May 1989." Mr. Duncombe's affidavit list some of the 
compounds prepared using the general principles of ceramic science: Yi Ba 2 Cu 3 O x ; Yi 
Ba 2 Cu 3 0 3 ; Bi 2 .i5 Sn . 98 Cai. 7 Cu 2 O d+8 ; Ca {2 - X ) Sr x Cu O x and Bi 2 Sr 2 Cu O x . Applicants note 

that the last three examples do not come within the scope of the claims allowed by the 



YO987-074BZ 



Page 147 of 187 



08/479,810 



Examiner in the answer since they do not contain a rare earth or group 1MB element. 
The Examiner in the answer of the parent application has not commented on the data 
in Mr. Duncombe's affidavit [Attachment 20]. Mr. Duncombe's affidavit [Attachment 20] 
provides direct evidence that these examples were made following Applicants' teaching 
without undue experimentation. Moreover, in the answer in the parent application the 
Examiner quotes from the preface of the Poole article [Attachment 21] which states in 
part at A3: "The unprecedented worldwide effort in superconductivity research that has 
taken place over the past two years has produced an enormous amount of 
experimental data on the properties of the copper oxide type materials that exhibit 
superconductivity above the temperature of liquid nitrogen. ... During this period a 
consistent experimental description of many of the properties of the principal 
superconducting compounds such as BiSrCaCuo, LaSrCuO, TIBaCaCuO. and 
YBaCuO has emerged". The first and third of these compositions does not come within 
the scope of the claims allowed by the Examiner in the answer of the parent application 
since they do not contain a rare earth or group 1MB element, even though Poole states 
that they are easy to make following the general principals of ceramic science as taught 
by Applicants. Other data supporting Applicants' view is reported in the Review Article 
"Synthesis of Cuprate Superconductors" by Rao et al., IOP Publishing Ltd. 1993. A 
copy of this article is in Attachment 44 to this paper. This article lists in Table 1 the 
properties of 29 cuperate superconductors made according to Applicants' teaching. 
Twelve (#'s 1 , 8-1 3, 1 6, 1 7, 20, 21 , 27 and 28) of those listed do not come within the 
scope of the claims allowed by the Examiner. Only three of the 29 have a T c < 26° K. 
Those twelve do not contain one or more of a rare earth, a group NIB element or an 



YO987-074BZ 



Page 148 of 187 



08/479,810 



alkaline earth element. It is thus clear that broader claims than allowed in the answer of 
the parent application should be allowed since it is clear that the allowed claims in the 
parent application can be avoided following Applicants' teaching without undue 
experimentation. Applicants are entitled to claims which encompass these materials 
since they were made following Applicants' teaching. 

The article of Rao et al. [Attachment 44] in the first sentence of the introduction citing 
Applicants' article - which is incorporated by reference in their application - 
acknowledges that Applicants initiated the field of high T c superconductivity. Applicants 
further note that the Rao article acknowledges that "a large variety of oxides" are 
prepared by the general principles of ceramic science and that Applicants discovered 
that metal oxides are high T c superconductors. Citing reference 5 therein - the book 
"New Directions in Solid State Chemistry", Rao et al. 1989 (Cambridge; Cambridge 
University Press) for which there is a 1986 edition which predates Applicants' filing date 
Rao (See Attachments 43 and 45) - Rao et al. states: 

Several methods of synthesis have been employed for preparing 
cuprates, with the objective of obtaining pure monophasic products with 
good superconducting characteristics [3, 4]. The most common method 
of synthesis of cuprate superconductors is the traditional ceramic method 
which has been employed for the preparation of a large variety of oxide 
materials [5]. Although the ceramic method has yielded many of the 
cuprates with satisfactory characteristics, different synthetic strategies 
have become necessary in order to control factors such as the cation 
composition, oxygen stoichiometry, cation oxidation states and carrier 
concentration. Specifically noteworthy amongst these methods are 



YO987-074BZ 



Page 149 of 187 



08/479,810 




chemical or solution routes which permit better mixing of the constituent 
cations in order to reduce the diffusion distance in the solid state [5, 6]. 
Such methods include coprecipitation, use of precursors, the sol-gel 
method and the use of alkali fluxes. The combustion method or 
self-propagating high-temperature synthesis (SHS) has also been 
employed. 

Reference 5 is another example of a reference to the general principles of ceramic 
science incorporated into Applicants* teaching. The Rao et al. article [Attachment 44] 
states that the 29 materials reported on in the article and fabricated in Table 1 are 
fabricated using the general principles of ceramic science. Moreover, the Rao article 
states that these materials are fabricated by what the Rao article calls the "ceramic 
method" which is the preferred embodiment in Applicants' specification, yet 12 of the 29 
materials in Table 1 do not come within the scope of the claims allowed by the 
Examiner in the answer of the parent application. Thus known examples fabricated 
according to Applicants' teaching will not be literally infringed by the Rao, Duncombe 
and Poole examples. 

The Examiner further states in the answer of the parent application: 

Those affidavits do not overcome the non-enablement rejection. The 
present specification discloses on its face that only certain oxide 
compositions of rare earth, alkaline earth, and transition metals made 
according to certain steps will superconduct at > 26 g K. 



YO987-074BZ 



Page 150 of 187 



08/479,810 




As stated above, In re Angstadt 190 USPQ 214, 218 held that in an unpredictable art, 
§112 does not require disclosure of a test with every species covered by a claim. As 
stated above, Applicants note that the Examiner has presented no extrinsic evidence 
that the art of high T c superconductivity is unpredictable. It is the Examiner's burden to 
show that a person of skill in the art would have to engage in undue experimentation to 
practice Applicants' claimed invention. The Examiner has clearly not done this. The 
only evidence that the Examiner offers in support of his determination of 
nonenablement are two examples of metal oxide with T c < 26°K which the Applicants 
with commendable frankness have included in their specification. Applicants also note, 
as stated above, there are many other materials made according to Applicants' 
teaching reported in the literature made following Applicants' teaching which do not 
come within the scope of the claims allowed in the Examiner's answer of the parent 
application. 

The Examiner further states in the answer of the parent application: 

Those affidavits are not deemed to shed light on the state of the art and 
enablement at the time the invention was made. One may know now of a 
material that superconducts at more than 26°K, but the affidavits do not 
establish the existence of that knowledge on the filing date for the present 
application. Even if the present application "includes all known principles 
of ceramic fabrication", those affidavits do not establish the level of skill in 
the ceramic art as of the filing date of that application. 



YO987-074BZ 



Page 151 of 187 



08/479,810 



The Examiner stated to the contrary in paper 77E page 2, that "It is the Examiner's 
maintained position that [the] general principles a ceramic fabrication were most 
certainly known prior to the filing date of the instant application." Thus the Examiner 
acknowledges that the general principles of ceramic science were known prior to 
Applicants' filing date. There is no evidence in the record to indicate that anything more 
is needed to fabricate compositions which can be used to practice Applicants' invention 
to the full scope that it is claimed in the present invention. To the contrary, Applicants 
have shown numerous examples in the affidavits and references of samples fabricated 
according to Applicants' teaching useful to practice their claimed invention. 
Notwithstanding, since the claims are apparatus for use claims, Applicants do not 
believe that they are required to provide a teaching of how to fabricate all compositions 
which may be used within the full scope of Applicants' claimed invention. 

The Examiner acknowledges that the Applicants are the pioneers in high temperature 
metal oxide superconductivity. However, the Examiner states The finding remains, 
nonetheless, that the disclosure is not fully enabling for the scope of the present 
claims". The Examiner has not commented on Applicants' comments in the substitute 
brief of the parent application that once Applicants discovered high T c in metal oxides, it 
was straight forward for others following Applicants' teaching to make other examples of 
high T c metal oxides. That Applicants were the pioneers in T c metal oxides is not the 
only issue. The relative ease of making other compounds, such as, metal oxides, is 
equally important. Applicants' discovery is materials that are dielectric at room 
temperature had high T c . The fabrication techniques are not Applicants' discovery 



YO987-074BZ 



Page 152 of 187 



08/479,810 



* 



since these techniques, as acknowledged by the Examiner, were well known prior to 
Applicants' discovery. 

The Examiner has cited seven decisions as providing the legal basis for this 
determination of non-enablement. In the substitute brief of the parent application 
Applicants have extensively shown how these seven cases support Applicants' position 
that they have fully enabled their claims. In the answer of the parent application, the 
Examiner has not rebutted Applicants' extensive analysis of these cases and how they 
apply to the present invention to support Applicants' view that Applicants' claims are 
fully enabled. The Examiner has not rebutted Applicants' arguments as to how the 
Examiner has misapplied these cases to the present application. The Examiner states 
"That case law speaks for itself". Applicants agree that the case law speaks for itself, 
that is, it supports Applicants' position that their claims are fully enabled. The Examiner 
apparently means by this statement that the case law supports the Examiner's position 
that the rejected claims are not enabled. The Examiner has not attempted to show how 
the facts of the cited cases relate to the facts of the present application. The Examiner 
has essentially taken statements out of context from these cases to support the 
Examiner's view. However, when the cases are analyzed as Applicants have done in 
the substitute brief of the parent application, it is clear that theses cases support 
Applicants' view that their claims are fully enabled. 



YO987-074BZ 



Page 153 of 187 



08/479,810 



# 



The MPEP SECTION— 2164.01(a) entitled "Undue Experimentation Factors" citing In 
re Wands 8USPQ2d 1400 states: 

There are many factors to be considered when determining whether there 
is sufficient evidence to support a determination that a disclosure does not 
satisfy the enablement requirement and whether any necessary 
experimentation is "undue." These factors include, but are not limited to: 

(A) The breadth of the claims; 

(B) The nature of the invention; 

(C) The state of the prior art; 

(D) The level of one of ordinary skill; 

(E) The level of predictability in the art; 

(F) The amount of direction provided by the inventor; 

(G) The existence of working examples; and 

(H) The quantity of experimentation needed to make or use the invention 
based on the content of the disclosure. 

The Examiner has not applied these factors. Applicants have shown that: 

(A) Their claims are as broad as their discovery which is that compounds, 
such as metal oxides, can carry a superconductive current for a T c > 26 Q 
K; 

(B) The invention is easily practiced by a person of skill in the art; 

(C) The state of the prior art clearly shows how to fabricate materials 
which can be used to practice Applicants' invention; 



YO987-074BZ 



Page 154 of 187 



08/479,810 




(D) The level of one of ordinary skill in the are is not high since as sated in 
the Poole et al. book [Attachment 21] materials to practice Applicants' 
invention are easily made and all that is needed to practice Applicants' 
claimed invention is to cool the material below the T c and to provide a 
current which will be a superconductive current. It has been well known 
how to do this since the discovery of superconductivity in 191 1 . (See page 
1 of "Superconductivity" by M. Von Laue) [Attachment 42] 

(E) There is no unpredictability in how to make materials to practice 
Applicants' invention and there is no unpredictability in how to practice 
Applicants' invention. The only unpredictability is which particular 
composition will have a T c > 26 2 K. As extensively shown by Applicants 
this is a matter of routine experimentation. The Examiner has not denied 
not rebutted this.; 

(F) Applicants have provided extensive direction to make materials to 
practice their claimed invention. They have included all known principles 
of ceramic science. Also, as stated in the Poole book these materials are 
easily made. The Examiner has not denied nor rebutted this. The 
Examiner has made no comment on the amount of direction provided by 
the Applicants; 

(G) Applicants have provided sufficient working examples and examples 
of compositions that have T c > 26°K for a person of skill in the art to 
fabricate materials that can be used to practice Applicants' claimed 
invention; and 

(H) Applicants have shown that the quantity of experimentation needed to 
make samples to use the invention based on the content of the disclosure 
in the specification is routine experimentation. 



YO987-074BZ 



Page 155 of 187 



08/479,810 



The MPEP SECTION— 2164.01(a) further states: 

The fact that experimentation may be complex does not necessarily make 
it undue, if the art typically engages in such experimentation. In re Certain 
Limited-Charge Cell Culture Microcarriers, 221 USPQ 1 165, 1 174 (Int'l 
Trade Comm'n 1983), affd. sub nom., Massachusetts Institute of 
Technology v. A.B. Fortia, 774 F.2d 1104, 227 USPQ 428 (Fed. Cir. 
1985). 

See also In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The test of 
enablement is not whether any experimentation is necessary, but 
whether, if experimentation is necessary, it is undue. In re Angstadt, 537 
F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). MPEP 2164 

There is no statement by the Examiner nor any evidence in the record that the 
experimentation to make materials to practice Applicants' claimed invention is complex 
or undue. But it is clear that even if the experimentation was complex to make samples 
to practice Applicants' claimed invention it would not render Applicants' claims not 
enabled since the art typically engages in the type of experimentation taught by 
Applicants to make samples to practice their claimed invention. 

The facts of In re Wands have similarity to the facts of the present application under 
examination. The Court at 8 USPQ2d 1406 held that: 

The nature of monoclonal antibody technology is that it involves screening 
hybridomas to determine which ones secrete antibody with desired 



YO987-074BZ 



Page 156 of 187 



08/479,810 



characteristics. Practitioners of this art are prepared to screen negative 
hybridomas in order to find one that makes the desired antibody. 

Correspondingly Applicants have shown that the nature of high T c technology is that it 
involves preparing samples to determine which ones have T c > 26°K - the desired 
characteristic. Practitioners of this art are prepared to prepare samples in order to find 
one that have the desired T c . Nothing more is required under In re Wands. 

Applicants have shown that their specification is enabling with respect to the claims at 
issue and that there is considerable direction and guidance in the 
specification; with respect to Applicants' claimed invention there was a high level of skill 
in the art to fabricate samples at the time the application was filed; and all of the 
methods needed to practice the invention were well known. Thus Applicants have 
shown that after considering all the factors related to the enablement issue, it would 
not require undue experimentation to obtain the materials needed to practice the 
claimed invention. The Examiner has not denied nor rebutted this. 

A conclusion of lack of enablement means that, based on the evidence regarding each 
of the above factors, the specification, at the time the application was filed, would not 
have taught one skilled in the art how to make and/or use the full scope of the claimed 
invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 
USPQ2d 1510, 1513 (Fed. Cir. 1993). It is the Examiner's burden to show this and the 
Examiner has clearly not done so. 



YO987-074BZ 



Page 157 of 187 



08/479,810 



The breadth of the claims was a factor considered in Amgen v. Chugai Pharmaceutical 
Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir.), cert, denied, 502 U.S. 856 (1991). In 
the Amgen case, the patent claims were directed to a purified DNA sequence encoding 
polypeptides which are analogs of erythropoietin (EPO). The Court stated that: 

Amgen has not enabled preparation of DNA sequences sufficient to 

support its all-encompassing claims [D]espite extensive statements in 

the specification concerning all the analogs of the EPO gene that can be 
made, there is little enabling disclosure of particular analogs and how to 
make them. Details for preparing only a few EPO analog genes are 
disclosed. . . . This disclosure might well justify a generic claim 
encompassing these and similar analogs, but it represents inadequate 
support for Amgen's desire to claim all EPO gene analogs. There may be 
many other genetic sequences that code for EPO-type products. Amgen 
has told how to make and use only a few of them and is therefore not 
entitled to claim all of them. 927 F.2d at 1213-14, 18 USPQ2d at 1027. 

In the present application Applicants have provided a teaching (and proof thereof) of 
how to make all known high T c materials useful to practice their claimed invention. As 
the Amgen court states this type of disclosure justifies a generic claim. As the In re 
Angstadt court states the disclosure does not have to provide examples of all species 
within Applicants' claims where it is within the skill of the art to make them. There is no 
evidence to the contrary. 




YO987-074BZ 



Page 158 of 187 



08/479,810 




The Examiner states in the answer of the parent application M [t]he appellants argue that 
their own examples do not support the determination of non-enabling scope of the 
invention. Nevertheless, the record is viewed as a whole. If the Applicants could not 
show superconductivity with a T c > 26°K for certain compositions falling within the 
scope of the present claims, it is unclear how someone else skilled in the art would 
have been enabled to do so at the time the invention was made." The Examiner avoids 
the essential issues. Even though Applicants' claims do not cover inoperable species, 
In re Angstadt clearly permits a claim to include inoperable species where to determine 
which species works does not require undue experimentation. The Examiner has not 
presented any substantial evidence that undue experimentation is required to practice 
Applicants' claim. This is the Examiner's burden. On the other hand, Applicants have 
presented five affidavits of experts, the book of Poole [Attachment 21] and the article of 
Rao all of which agree that once a person of skill in the art knows of Applicants' 
invention, it is straight forward to fabricate other sample. Also, in response to the 
Examiner's inquiry, "if the Applicants could not show superconductivity with a T c > 26°K 
for certain compositions falling within the scope of the present claims, it is unclear how 
someone else skilled in the art would have been enabled to do so at the time the 
invention was made", it is clear that a person of skill in the art would have been enabled 
by routine experimentation following Applicants' teaching to determine other samples 
with T c > 26°K. This is all that is required, and there is no evidence in the record to the 
contrary. 



YO987-074BZ 



Page 159 of 187 



08/479,810 




In the prosecution and the substitute brief of the parent application, Applicants have 
noted that the Examiner has taken a contrary view to Applicants' five affiants each of 
whom has qualified himself as an expert in the field of ceramic technology and in 
superconductivity. Also, the Examiners' argument for nonenablement is primarily based 
on the Examiner "deeming" the rejected claims nonenabled based on the unsupported 
assertion that the art of high T c is unpredictable and not theoretically understood, that 
is, the Examiner's conclusory opinion or belief that the claims are not enabled. In the 
prosecution and the substitute brief of the parent application Applicants requested the 
Examiner to submit an affidavit to qualify himself as an expert to conclusorily "deem" 
the rejected claims nonenabled and to substantiate the unsupported assertions. The 
Examiner has not submitted an affidavit. 37 CFR 104(d)(2) states "[w]hen a rejection in 
an application is based on facts within the personal knowledge of an employee of the 
office ... the reference must be supported when called for by the Applicants, by an 
affidavit of such employee." (Emphasis Added) 

The Examiner further states in the answer of the parent application: 

The Applicants argue that the "Examiner has provided no substantial 
evidence to support this assertion (of non-enabling scope of the 
invention). It is respectfully requested that the Examiner support (his) 
assertion with factual evidence and not unsupported statements." 
Nevertheless, the determination of nonenabling scope is maintained for 
the reasons of record. 



YO987-074BZ 



Page 160 of 187 



08/479,810 




Applicants note the Examiner has not responded to Applicants' request that the 
Examiner support his view on nonenablement with an affidavit of facts rather than 
unqualified conslusory statements. 

The Examiner further states in the answer of the parent application: 

The appellants argue that the "standard of enablement for a method of 
use is not the same as the standard of enablement for a composition of 
matter" and that their claimed invention is enabling because it is directed 
to a method of use rather than a composition. Basis is not seen for that 
argument, to the extent that it is understood. 

Applicants discovered that compositions, such as metal oxides, had T c > 26 Q K. This 
was not known prior to Applicants' discovery. Once this is realized, the only 
enablement required for Applicants' claims are to cool a metal oxide below the T c and to 
provides a superconducting current. It is not necessary for Applicants to provide a 
detailed method of making every composition which can be used within the scope of 
their claims. Applicants' claims are not directed to the composition of matter. They are 
directed only to the use of the metal oxide as a superconductor with a T c > 26°K, that is, 
as a circuit element in operation. It was within the skill of the art to fabricate 
compositions using the Applicants' teaching and test them for a T c > 26°K using 
techniques well known prior to Applicants' filing date. 



YO987-074BZ 



Page 161 of 187 



08/479,810 




Applicants agree that apparatus for use claims are subject to the statutory provisions of 
35 U.S.C. 112, first paragraph. However, those provisions are directed to the claimed 
apparatus for use invention and not to a composition of matter claim. It is not relevant 
how a composition, which can be used to practice Applicants' claims, is made since the 
invention is how the composition is used. Thus the type of enablement is different. For 
example, if a circuit containing a resister is claimed, the Applicant does not have to 
teach all known methods to fabricate the resistor and the claim will read on circuits 
including resistors made by methods discovered after the filing date of the application. 
Here Applicants are claiming a high T c superconductor (a type of resistor) that carries a 
superconducting current below a temperature of T c > 26°K. This is a circuit element in 
operation. 

The Applicants asserted in the substitute brief of the parent application and in the 
prosecution that the Examiner has not shown by evidence not contained within 
Applicants' teaching that the art of high T c superconductors is unpredictable. In 
response the Examiner states in the answer of the parent application "[t]o the extent 
that the same assertion is understood, the rejection is maintained for the reasons of 
record." Applicants' statement is very clear. The Examiner is trying to avoid the issue 
since the Examiner has not shown by evidence not contained within Applicants' 
teaching that the art of high T c superconductors is unpredictable. The Examiner has 
merely "deemed" it to be so. 



YO987-074BZ 



Page 162 of 187 



08/479,810 




Applicants have extensively referred to "Copper Oxide Superconductors" by Charles P. 
Poole, Jr., et al., (hereinafter, "the Poole book" or "the Poole article" [Attachment 21]) 
as supporting their position that higher temperature superconductors were not that 
difficult to make after their original discovery. This is because methods of making 
compositions which could be used to practice Applicants' claimed invention were well 
known prior to Applicants' discovery that metal oxides had a T c > 26°K. In response the 
Examiner states "Initially, however, it should be noted that the Poole article [Attachment 
21] was published after the priority date presently claimed". It is not relevant that the 
Poole article [Attachment 21] was published after the priority date since it is clear 
evidence that only routine experimentation was needed to practice Applicants' claimed 
invention and there is no indication that anything more than Applicants' teaching is 
needed. The Examiner further comments on the Poole book [Attachment 21] stating, 
"[a]s such, it does not provide evidence of the state of the art at the time the presently 
claimed invention was made". As noted in the substitute brief of the parent application, 
Poole clearly states that the materials that can be used within the scope of Applicants' 
claims were easily made. And as stated above the Examiner has acknowledged that 
the fabrication techniques were well known prior to Applicants' invention. Poole states 
that is why so much work was done in so short a period of time. This is clear and 
convincing evidence that persons of skill in the art were fully enabled by Applicants' 
teaching to practice Applicants' claimed invention. It is not necessary for Applicants to 
show that the data was generated prior to Applicants' filing date. The Examiner has not 
stated, nor is there any evidence presented by the Examiner, nor is there any indication 
in the Poole book that anything more than what Applicants taught was necessary to 



YO987-074BZ 



Page 163 of 187 



08/479,810 




practice Applicants' claimed invention. It is only necessary that persons of skill in the 
art can practice Applicants' claimed invention from Applicants' teaching without undue 
experimentation. As stated in In re Angstadt there is no requirement of no 
experimentation to practice the claimed invention which is the standard the Examiner is 
apparently applying. 

The Examiner further states in the answer of the parent application: 

Moreover, the present claims are directed to processes of using metal 
oxide superconductors, not processes of making them. Even if the Poole 
article provided direct evidence of the state of the art at the time the 
invention was made, which it apparently does not, that evidence still does 
not pertain to the issue at hand, namely, the process of using metal oxide 
superconductors to conduct electricity under superconducting conditions. 

The Poole article clearly does not pertain to the process of using metal oxide 
superconductors to conduct electricity under superconducting conditions prior to 
Applicants' invention since this is Applicants' discovery and their invention. The Poole 
article [Attachment 21] clearly shows that once Applicants revealed their discovery, it 
was easy to practice Applicants' invention and to fabricate other materials to practice 
Applicants' claimed invention. It is not relevant that the Poole article is after the date of 
Applicants' patent application since there is no indication in Poole that anything more 
than what Applicants have taught was used to create the easily created high T c 
materials referred to by Poole. The Poole article clearly shows how these easily made 
materials can be used to practice Applicants' claimed invention. The Poole book 



YO987-074BZ 



Page 164 of 187 



08/479,810 




[Attachment 21] is directed to materials carrying a superconducting current at T c > 26°K 
which can be used in a variety of circuit configurations. Chapter 10 pp. 196-218 of the 
Poole book [Attachment 21] is directed to the process of using superconductors 
according to Applicants' teaching to conduct electricity under superconducting 
conditions. The first paragraph of Chapter 10 states: 

The principal applications of superconductors are based upon their ability 
to carry electric current without any loss, and therefore it is important to 
understand their transport properties. This chapter begins with a 
discussion of resistivity and critical current flow in the absence of 
externally applied fields. This is followed by a discussion of several 
techniques involving applied fields and thermal effects. The chapter 
concludes with sections on tunneling and the Josephson effect. 

Applicants acknowledge the Preface of the Poole Article states in part at A3:" The field 
of high-temperature superconductivity is still evolving ..." And Applicants agree with the 
Examiner that "the field of high-temperature superconductivity continued to grow, on the 
basis of on-going basic research, after the Bednorz and Meuller article was published." 
The automobile was discovered prior to 1900 and that field still, more than 100 years 
latter, continues to grow. The inventor of the automobile would have been able to claim 
an "automatically moving carriage under the power of an engine" which would be 
dominant to every automobile manufacture today even through the automobile 
technology of today was unknown 1 00 years ago. Notwithstanding such a dominant 
claim, others could invent more specific improvements as the field continued to grow, 
on the basis of on-going basic research. That the field of high-temperature 



YO987-074BZ 



Page 165 of 187 



08/479,810 




superconductivity continued to grow, on the basis of on-going basic research, after the 
Bednorz and Meuller article was published does not mean that Applicants are not 
entitled to a claim to their discovery event though it may dominate the inventions of 
others based on subsequent on-going basic research where that ongoing basic 
research followed Applicants' teaching to fabricate, as taught by Applicants, other 
specific materials to use as taught by Applicants. 

In the first two full paragraphs on page 20 of the answer of the parent application the 
Examiner incorrectly refers to three affidavits submitted by Applicants. Applicants have 
submitted five affidavits [Attachment 16, 17, 18, 19, 20] all of which, as noted above, 
have been considered and entered. The affidavits of Shaw [Attachment 19] and 
Duncombe [Attachment 20] cited numerous text and articles in support of their 
affidavits. The affidavit of Duncombe [Attachment 20] provides several hundred pages 
of experimental data in regards to fabrication of numerous examples of metal oxides to 
practice Applicants' claimed invention. 

Applicants disagree that they have only enabled compositions containing an alkaline 
earth element and a rare earth or Group 1MB element to result in superconductive 
compounds which may in turn be utilized in the instantly claimed methods. As noted 
above, there are numerous examples of high T c superconductors made using the 
general principals of ceramic science as taught by Applicants that existed prior to 
Applicants' earliest filing date. Some of that data is in the affidavit of Duncombe 
[Attachment 20], the Poole book [Attachment 21] and the Rao article. 



YO987-074BZ 



Page 166 of 187 



08/479,810 



In regards to the affidavits of Tsui [Attachment 18], Dinger [Attachment 17] and Mitzi 
[Attachment 16] the Examiner states "However, that additional indication also is 
considered to be a conclusory statement unsupported by particular evidence." To the 
extent that this statement is true the affidavits of Shaw [Attachment 19] and Duncombe 
[Attachment 20], the book by Poole an the article by Rao provide particular evidence. 
In the answer of the parent application even though these affidavits and the book by 
Poole [Attachment 21] have been considered, the Examiner has not commented on this 
particular evidence and the Examiner has not stated that this particular evidence does 
not support Applicants' view that their claims are fully enabled. 

The Examiner in the answer of the parent application restates what is stated in the 
affidavits and comments in the answer of the parent application: 

It is the Examiner's maintained position that while general principles of 
ceramic fabrication were most certainly known prior to the filing date of the 
instant application, the utilization of such techniques to produce 
superconductive materials within the scope of the instant claims were not 
known. The affidavits are not effective to demonstrate enablement at the 
time the invention was made. As stated in paper #66, page 8, one may 
now know of a material that superconducts at more than 26K, but the 
affidavits do not establish the existence of that knowledge on the filing 
date of the present application. 



YO987-074BZ 



Page 167 of 187 



08/479,810 




The Examiner states: " The affidavits are not effective to demonstrate enablement at 
the time of the invention was made". Applicants disagree that Applicants' five affidavits 
do not demonstrate enablement at the time the invention was made. The affidavits 
clearly state that the knowledge that existed prior to Applicants' filing date permitted a 
person of skill in the art to practice Applicants' invention as claimed without undue 
experimentation. The Examiner has presented no evidence to the contrary. 

It is not necessary for Applicants to provide experimental evidence for all materials that 
come within the scope of Applicants' claims. It is only necessary that a person of skill 
in the art can practice Applicants' claimed invention without undue experimentation or 
without requiring ingenuity beyond that expected of a person of skill in the art. It is the 
Examiner's burden to show that undue experimentation is required. The Examiner has 
not done this. Also, that there may be specific compounds having high T C) which are 
not specifically identified in Applicants' specification does not mean that Applicants are 
not entitled to a claim generic to such a species where that species can be made 
without undue experimentation following Applicants' teaching. In re Robins 166 USPQ 
552, 555, CCPA 1970. Representative samples are not required by the statute and are 
not an end in themselves. The Examiner has not shown that a person of skill in the art 
must exercise undue experimentation to make such a species. Thus the Examiner has 
failed to meet his burden. 



YO987-074BZ 



Page 168 of 187 



08/479,810 




The Examiner concedes that "that while general principles of ceramic fabrication were 
most certainly known prior to the filing date of the instant application, the utilization of 
such techniques to produce superconductive materials within the scope of the instant 
claims were not known." The Examiner has acknowledged that techniques to fabricate 
materials for use within the scope of Applicants' claims were know prior to Applicants' 
invention. Applicants agree that "the utilization of such techniques to produce 
superconductive materials within the scope of the instant claims were not known," since 
this was Applicants' invention. If "the utilization of such techniques to produce 
superconductive materials within the scope of the instant claims" were known prior to 
Applicants' invention, Applicants would not be the inventor. Prior to Applicants' 
discovery persons of skill in the art would not make materials, such as metal oxides, to 
use as a superconductor with a T c > 26 Q K since such use had to await Applicants' 
discovery. Such fabrication techniques have been used to produce materials, such as 
metal oxides, for use for some other purpose for a very long time as shown by 
Applicants' evidence. 

The affidavit of Leonard submitted December 15, 1998 [Attachment 22] shows that 
5,689 articles reference Applicants' article. The Examiner apparently wants to limit 
Applicants' claims to their specific embodiments when the record as a whole clearly 
shows that all known high T c materials can be made according to Applicants' teaching. 
If the Applicants are limited, as the Examiner would have them limited, they should not 
have revealed their discovery and instead spent the rest of their life, in secret, 



YO987-074BZ 



Page 169 of 187 



08/479,810 




experimenting to generate these 5,689 experimental efforts, according to their original 
teaching, so that they could get generic claims to their original discovery. 

For the reasons given above and Applicants respectfully request withdrawal of rejection 
of claims under 35 USC 1 1 2, first paragraph. 

35 USC 112, Second Paragraph Rejections 

With respect to the claims rejected under 35 U.S.C. 112, second paragraph, the 
Examiner in the answer of the parent application has not rebutted Applicant's remarks 
appearing at pages 102-1 13 of the Substitute Brief of the parent applicant. In response 
to Applicants' arguments that the terms "rare-earth like", " perovskite-like", "layer-type", 
"layer-like" and "perovskite-type" are definite, the Examiner states "those arguments are 
not found to be persuasive," but the Examiner gives no reasons for this view. 

At page 21 of the answer of the parent application, the Examiner comments in regard to 
the claims rejected under 35 UCS 112, second paragraph, the Examiner states that 
"[n]ote the Examiner declines to comment on Applicants' remarks regarding the 
after-final submissions which have not been entered or considered by the Examiner." 
All those after final submission of the parent application have been submitted in the 
present prosecution. These submissions provide evidence that the terminology 
"perokskite-like", perovskite-type", and "rare-earth-like" were understood by persons of 
skill in the art prior to Applicants' filing date. This evidence is in addition to evidence 
previously submitted to show that theres terms were well understood in the art. Some 

YO987-074BZ Page 1 70 of 1 87 08/479,81 0 




of the additional evidence is issued US patents having claims containing the identical 
terminology which the Examiner finds indefinite. Other evidence is issued US patents 
using similar terminology in issued claims indicates that the use of such terminology in 
US patent claims is standard USPTO practice. 

The Examiner states in the answer of the parent application: 

Each patent application is considered on its own merits. In some contexts 
it may have been clear in the art to use the term "like", such as when the 
"like" term is sufficiently defined. In the present case, however, the terms 
"rare-earth like" and " perovskite-like" are unclear. 

There are many issued patents having claims including terminology "-type", "-like" and 
similar combination terms. The Examiner's refusal to give reasons for rejecting 
Applicants' use of this terminology while there are many issued patents using this 
terminology in the claims is "arbitrary and capricious". The Examiner must give 
reasons. It is not sufficient to say "Each patent application is considered on its own 
merits" without giving reasons as to what the merits are in the present application which 
render these terms indefinite while not indefinite in the claims of very many issued 
patents. 

Appellant's published their publication in Z. Phys. B - Condensed Matter 64 (1986) 
189-193 (Sept. 1986) [Attachment 3] which is incorporated by reference in the present 
specification at page 6, lines 7-10. Applicants filed the first application in the lineage for 



YO987-074BZ 



Page 171 of 187 



08/479,810 




the present application on May 22, 1987. To the extent that the terminology 
"perovskite-tpye", "perovskite-like", etc. were not know prior to Applicants' discovery, it 
was placed into the vernacular of persons of skill in the art in the approximately eight 
months between the publication of Applicants' article the earliest filing date of the 
present application. Applicants' article was published in a highly regarded physics 
journal. The referees for the article apparently understood what Applicants meant by 
this terminology. The Applicants were awarded a Nobel Prize based on this article. 
The Nobel committee apparently understood what Applicants were referring to. 
Applicants' article at page 1 89, fourth line of the abstract, refers to "a perovskite-like 
mixed-valent copper compound"; at page 189, lines 14-15 of the right column, refers to 
"perovskite-type or related metallic oxides"; at page 192, line 12 of the left column, 
refers to "layer-like phases"; and the 8th line of the conclusion at page 192 refers to "a 
metallic perovskite-type layer-like structure". As stated in the substitute brief of the 
parent application at pages 106-107 the book by Poole uses this terminology attributing 
it to Applicants' article. Chapter VI, Section D, of the Poole Book [Attachment 21] is 
entitled "Pervoskite-type Superconducting Structures" pp. 78-81 . It is thus clear that the 
objected to terminology is understood by persons of skill in the art as of the earliest 
filing date of the present application. Moreover, as shown in the substitute brief of the 
parent application 102 issued United States Patents uses the terminology "pervoskite 
like", two of which use this term in the claims. It is thus accepted USPTO practice to 
accept this term as definite. Also, as shown in the brief there are many issued patents 
using combinations of "-type" and "-like" with claims. Thus it is accepted USPTO 
practice to accept such terminology as definite. 



YO987-074BZ 



Page 172 of 187 



08/479,810 



# 



Moreover, in the substitute brief of the parent application at pages 7-20, Applicants 
extensively discuss the terminology of the present application which incorporates by 
reference Applicants' article. 

Moreover, the affidavits of Duncombe [Attachment 20] and Shaw [Attachment 1 9] refer 
to a number of articles and texts on the general principles of ceramic science. One of 
these texts is "Structures, Properties and Preparation of Peroskite-type Compounds", F. 
S. Galasso (1969). This book was published about eighteen years before Applicants' 
filing date. A copy of the complete text of this book was provided with the affidavits. 
The Examiner does not comment on why a person of skill in the art would not know 
what a perovskite-type compound was in view of this book and the teaching of 
Applicants' article. 

At page 105 of the substitute brief of the parent application Applicants note that in 
Attachment A of their response of December 1 1 , 1998, there are listed 68 United States 
Patents using the terminology "rare earth like" or rare earth and the like" and in 
Attachment 43 of this response there are listed 4 United States Patents with the term 
"rare earth like" or similar term in the claims. The Examiner has not commented on why 
this term is not understood by a person of skill in the art in view of the use of this term in 
the specification and claims of issued United States Patents. In the substitute brief of 
the parent application Applicants refer to numerous articles using the terminology 
"rare-earth-like" published before Applicants' filing date. The Examiner has not 



YO987-074BZ 



Page 173 of 187 



08/479,810 




commented on this. Applicants explain the meaning of "rare-earth-like" at page 7, lines 
8-25, "[a] rare earth-like element (sometimes termed a near rare earth element) is one 
whose properties make it essentially a rare earth element 

It is thus clear that the meaning of "perovskite-type", "perovskite-like", "rare-earth-like", 
"layer-type" and "layer-like" are apparent from Applicants' teaching and the prior art, 
and that it is accepted USPTO practice to use such terminology in the claims. The 
Examiner has not commented on nor rebutted Applicants' arguments. The Examiner 
has merely stated that there terms are indefinite without further comment. 

For reasons given above, Applicants respectfully request the Examiner to withdraw the 
rejection of claims under 35 USC 112, second paragraph. 

Above, reference was made to the article "Synthesis of Cuprate Superconductors" by 
Rao et al., IOP Publishing Ltd. 1993. A copy of this article is in Attachment 44 to this 
paper. This article lists in Table 1 the properties of 29 cuperate superconductors made 
according to Applicants' teaching. Twelve (#'s 1 , 8-1 3,16,1 7, 20, 21 , 27 and 28) of 
those listed do not come within the scope of the claims allowed by the Examiner in the 
answer of the parent application. Only three of the 29 have a T c < 26° K. Those twelve 
do not contain one or more of a rare earth, a group 1MB element or an alkaline earth 
element. It is thus clear that claims of broader scope than allowed in the answer of the 
parent application should be allowed since it is clear that the scope allowed claims can 
be avoided following Applicants' teaching without undue experimentation. 



YO987-074BZ 



Page 174 of 187 



08/479,810 



The article of Rao et al. in the first sentence of the introduction citing Applicants' article - 
which is incorporated by reference in their application - acknowledges that Applicants 
initiated the field of high T c superconductivity. Applicants further note that the Rao 
article acknowledges that "a large variety of oxides" are prepared by the general 
principles of ceramic science and that Applicants discovered that metal oxides are high 
T c superconductors. 

Citing reference 5 therein - the book "New Directions in Solid State Chemistry", Rao et 
al. 1989 (Cambridge; Cambridge University Press) for which there is a 1986 edition 
which predates Applicants' filing date Rao (See Attachment 47) - Rao et al. states: 

Several methods of synthesis have been employed for preparing 
cuprates, with the objective of obtaining pure monophasic products with 
good superconducting characteristics [3, 4]. The most common method 
of synthesis of cuprate superconductors is the traditional ceramic method 
which has been employed for the preparation of a large variety of oxide 
materials [5]. Although the ceramic method has yielded many of the 
cuprates with satisfactory characteristics, different synthetic strategies 
have become necessary in order to control factors such as the cation 
composition, oxygen stoichiometry, cation oxidation states and carrier 
concentration. Specifically noteworthy amongst these methods are 
chemical or solution routes which permit better mixing of the constituent 
cations in order to reduce the diffusion distance in the solid state [5, 6]. 
Such methods include coprecipitation, use of precursors, the sol-gel 
method and the use of alkali fluxes. The combustion method or 



YO987-074BZ 



Page 175 of 187 



08/479,810 



self-propagating high-temperature synthesis (SHS) has also been 
employed. 

Reference 5 is another example of a reference to the general principles of ceramic 
science incorporated into Applicants' teaching. The Rao et al. article states that the 29 
materials reported on in the article and listed in Table 1 are fabricated using the general 
principles of ceramic science. Moreover, the Rao article states that these materials are 
fabricated by what the Rao article calls the "ceramic method" which is the preferred 
embodiment in Applicants' specification, yet 1 2 of the 29 materials in Table 1 do not 
come within the scope of the claims allowed by the Examiner in the answer. Thus 
known examples fabricated according to Applicants' teaching will not be literally 
infringed by the Rao, Duncombe [Attachment 20] and Poole [Attachment 21] examples. 

Attachment 46 there are copies of the table of contents and Chapter 3 the 1989 edition 
of reference 5. Chapter 3 is entitled "Preparative Strategies". In Attachment 47 there 
are copies of the table of contents and Chapter 3 of the 1986 edition of reference 5. 
Chapter 3 in each edition is substantially the same. Since the publication date of the 
1986 edition is before Applicants' filing date, all 29 of the high T c materials in table 1 of 
the Rao article are made according to the general principals of ceramic science as 
taught by Applicants. 

Attachment 48 is a Table of high T c materials from the "CRC Handbook of Chemistry 
and Physics" 2000-2001 Edition. Attachment 49 is a copy of this table with hand written 
numbers to the left of the materials. There are a total of 42 materials listed in Table 1 



YO987-074BZ 



Page 176 of 187 



08/479,810 




(those marked with an asterisk in the table in Attachment 49 #'s 1, 7-13, 16-18, 20, 21, 
27, 28, 30, 31 and 41 -44) of which 21 do not contain one or more of a rare earth, a 
group III element or an alkaline earth element. Yet all 42 are made according to the 
general principals or ceramic science taught by Applicants. Two of the 42 materials 
have a T c of 25 9 K. Thus a person of skill in the art following Applicants' teaching can 
fabricate materials which do not infringe the claims allowed by the Examiner in the 
parent application but do not infringe claims not allowed by the Examiner in the parent 
application. 



Table 1 in Attachment 48 list 7 references as the source of the information on the 42 
high T c materials. Those references are listed below. For references 1-5 Attachments 
50 to 56, respectively, contain the title page and table of contents of the corresponding 
book. References 6 and 7 are article, copies of which are in Attachments 55 and 56 
respectively. 



1 . Attachment 50 

Ginsburg, D.M., Ed., Physical Properties of High-Temperature Superconductors, Vols. 
Mil, World Scientific, Singapore, 1989-1992. 

2. Attachment 51 

Rao, C.N.R., Ed., Chemistry of High-Temperature Superconductors, World Scientific, 
Singapore, 1991. 

3. Attachment 52 

Shackelford, J.F., The CRC Materials Science and Engineering Handbook, CRC Press, 
Boca Raton, 1992, 98-99 and 122-123. 

4. Attachment 53 

Kaldis, E., Ed., Materials and Crystallographic Aspects of HTc-Superconductivity, 
Kluwer Academic Publ., Dordrecht, The Netherlands, 1992. 



YO987-074BZ 



Page 177 of 187 



08/479,810 




5. Attachment 54 

Malik, S.K. and Shah, S.S., Ed., Physical and Material Properties of High Temperature 
Superconductors, Nova Science Publ., Commack, N.Y., 1994. 

6. Attachment 55 

Chmaissem,0. et al., Physica C230, 231-238, 1994. 

7. Attachment 56 

Antipov E. V. et al., Physica C215, 1-10, 1993, 231-238, 1994. 

Copies of the books corresponding to #'s 1 to 5 were submitted on the parent 
application. Since these books are expensive and difficult to acquire, Examiner Kopec 
informed the undersigned attorney that additional copies do not have to be submitted in 
the present application and that the copies of the books submitted in the parent 
application will be used in the examination of the present application. The is no 
evidence in these references that the 42 high T c materials of Attachment 48 cannot be 
made following Applicants' teaching. 



YO987-074BZ 



Page 178 of 187 



08/479,810 



• 



ADDITIONAL REMARKS CITING PORTIONS OF THE FILE HISTORY 

Claims of the present application have been rejected as not enabled under 35 U.S.C. 
112, first paragraph. Applicants disagree for the reasons previously noted. Applicants 
in addition point out the following. 

The present application is a Continuation of 08/060,470 filed on 05/1 1/93, which is a 
Continuation of 07/875,003 filed on 04/24/92, which is a Divisional of 07/053,307 filed 
on 05/22/87 all now abandoned. 

In the 07/053,307 ancestral application composition of matter claims where presented 
for examination. A copy of the Final Rejection referred to below in this application is in 
Attachment 57 of this paper. 

In the 07/053,307 ancestral application composition of matter, claims 1 through 1 1 
inclusive, 27 through 35 inclusive, 40 through 54 inclusive, 60 through 63 inclusive, and 
65 through 68 were finally rejected under 35 U.S.C. 102(b) or in the alternative under 
35 U.S.C. 103 as unpatentable over each of a publication by Shaplygin et al. in the 
Russian Journal of Inorganic Chemistry , volume 24, pages 820-824 (1979) ("the 
Shaplygin et al. publication"); a publication by Nguyen et al. in the Journal of Solid State 
Chemistry , volume 39, pages 120-127 (1981) ("the Nguyen et al. publication"); a 
publication by Michel et al. in the Materials Research Bulletin , volume 20, pages 
667-671 (1985) ("the 1985 Michel et al. publication"); and a publication by Michel and 
Raveau in the Revue de Chimie Minerale . volume 21, pages 407-425 (1984) ("the 1984 

YO987-074BZ Page 1 79 of 1 87 08/479,81 0 



Michel and Raveau publication"). See the final rejection dated 4-25-1991 in the 
07/053,307 ancestral application. 



In the 07/053,307 ancestral application, claims 1, 2, 5 through 1 1 inclusive, 40 through 
44 inclusive, 46, 48, 51 through 54 inclusive, 60, 62, and 66 were finally rejected under 
35 U.S.C. 102(b) or in the alternative under 35 U.S.C. 103 as unpatentable over a 
publication by Perron-Simon et al. in C R. Acad. Sc. Paris , volume 283, pages 33 
through 35 (12 July 1976) ("the Perron-Simon et al. publication"); a publication by 
Mossner and Kemmler-Scak in the Journal of the Less-Common Metals , volume 105, 
pages 165 through 168 (1985) ("the Mossner and Kemmler-Sack publication"), a 
publication by Chincholkar and Vyawahare in Thermal Analysis 6th, volume 2, pages 
251 through 256 (1980) ("the Chincholkar and Vyawahare publication"); a publication by 
Ahmad and Sanyal in S pectroscopy Letters , volume 9, pages 39 through 55 (1976) 
("the Ahmad and Sanyal publication"); a publication by Blasse and Corsmit in the 
Journal of Solid State Chemistry , volume 6, pages 513 through 518 (1973) ("the Blasse 
and Corsmit publication"); United States Patent No. 3,472,779 to Kurihara et al. ("the 
Kurihara et al. 779 patent"); a publication by Anderton and Sale in Powder Metallurgy 
No. 1 , pages 14 through 21 (1979) ("the Anderton and Sale publication"). (See the final 
rejection dated 4-25-1991). 

In the 07/053,307 ancestral application the Examiner asserted that the cited references 
appeared to disclose materials, which inherently provided superconductive properties 
and consequently therefore, rendered the claims unpatentable. Applicants rebutted the 



YO987-074BZ 



Page 180 of 187 



08/479,810 




Examiner's reasons for rejection based on limitations in the claims directed to 
Applicants' new discovery of the superconductive properties of these materials. 

The claims of the present application are directed to apparatus for flowing a 
superconducting current in a superconductive composition of matter having a transition 
temperature greater than or equal to 26 Q K. This is Applicants' discovery for which they 
received the 1987 Nobel Prize in Physics. The Examiner in the 07/053,307 ancestral 
application stated by the 35 U.S.C. 102 and 103 rejections therein that persons of skill 
in the art knew how to make the compositions of matter based on the references cited 
therein. In that same final rejection the Examiner states at page 4 thereof "these 
materials appear to be identical to those presently claimed except that the 
superconductive properties are not disclosed." Applicants discovered the 
superconductive properties and in the present application are claiming apparatus using 
this property. Thus, by the Examiner's reasoning all of the present claims are fully 
enabled because the Examiner has stated that the compositions of matter recited in the 
claims can be made with the knowledge of a person of skill in the art prior to Applicant's 
filing date. Thus the Examiner, in the 07/053,307 ancestral application, agrees with the 
Applicants' Arguments and the Affidavits of Shaw, Duncombe, Tsuei, Dinger and Mitzi 
submitted by Applicants in support of their position that all their claims are enabled. In 
view thereof, Applicants respectfully request the Examiner to withdraw the rejection of 
the claims under 35 U.S.C. 112, first paragraph as not enabled. 

Claims herein have been rejected as indefinite under 35 U.S.C. 112, second paragraph. 



YO987-074BZ 



Page 181 of 187 



08/479,810 




These claims have been rejected under 35 USC 112, second paragraph, as indefinite 
for using language of the type "rare earth like" and "pervskite-like", etc. As previously 
stated the Examiner has arbitrarily rejected Applicants' claims without providing a 
reason for why Applicants' terms are indefinite while similar terms are not indefinite in 
the claims of many issued patents. Applicants note that article incorporated by 
reference at page 6 of the specification were published in September 1986 (which lead 
to Applicants' Nobel Prize) and the present application was filed in May 1987 thereby 
clearly making this terminology part the high T c superconductor art. As shown this is 
the vernacular of the field and well understood by persons of skill in the art. Applicants 
request withdrawal of the rejections of claims under 35 U.S.C. 1 12, second paragraph. 

Applicants' invention is a pioneering invention. "The Supreme Court in Westinghouse 
v. Boyden Power Brake Co., 170 U.S. 537, 562 (1898), characterized a pioneering 
invention as "a distinct step in the progress of the art, distinguished from a mere 
improvement or perfection of what had gone before." Texas Instruments ICC 6 USPQ 
2d 1886 (CAFC 1988). Applicants received the 1987 Nobel Prize in Physics for there 
discovery of superconductivity at T c greater that or equal to 26 9 K which is about 8 9 K 
higher than the highest T 0 previously known. Even though others following Applicants' 
teaching identified compositions having T c more than 100 e K greater than 26 -K only 
Applicants have received a Nobel Prize for this subject matter. This is because the 
others followed Applicants' teaching to identify these other compositions. 



YO987-074BZ 



Page 182 of 187 



08/479,810 




Applicants respectfully request the Examiner to withdraw rejections of claims under 35 
USC 112, first paragraph and second paragraph. 



YO987-074BZ 



Page 183 of 187 



08/479,810 




SUMMARY OF THE QUESTIONS RAISED BY THIS PROSECUTION 

A number of Applicants' claims have been rejected under 35 USC 112, first paragraph, 
as not enabled by Applicants' specification. The Examiner has given these reasons in 
support of this rejection: 1) the Examiner's unsupported statements that the art of high 
T c superconductivity is unpredictable; 2) the Examiner's unsupported statement that the 
theory of high T c superconductivity is not well understood; and 3) the Examiner points to 
examples cited in Applicants' specification which do not show superconductivity greater 
than or equal to 26°K. The Examiner has provided no support for reasons 1 and 2 in 
response to Applicants' request that the Examiner provide evidence in support thereof 
or an Examiner's Affidavit in support thereof as required by 37 CFR 104(d)(2). The 
Examiner provided neither. Thus, reasons 1 and 2 are the Examiner's unsupported 
opinion. Applicants' examples that do not have a T c > 26°K (Reason 3) do not support 
the Examiner's lack of enablement rejection in view of the decisions cited by Applicants, 
in particular, In re Angstadt, Amgen v. Chugai Pharmaceutical Co. and In re Wands. 
Applicants have provided extensive evidence in support of their view that there claims 
are enabled: 1 ) the five affidavits of Tzui, Dinger, Duncombe, Shaw and Mitzi, 2) the 
books and articles cited in these affidavits, 3) the book of Poole that states that the 
reason so much work was done in such a short period of time after Applicants' first 
discovery was that the high T c materials were easy to make using well known 
fabrication techniques, 4) the article of Rao et al. entitled "Synthesis of Cuprate 
Superconductors" which cite numerous species of high T c materials which can be made 
according to Applicants' teaching and 5) the CRC Handbook of Chemistry and Physics 
which cites numerous species of high T c materials which can be made according to 

YO987-074BZ Page 184 of 187 08/479,810 




Applicants' teaching. Many of the species in 4 and 5 are not specifically recited in 
Applicants' specification, but they come within the genus of Applicants' claims that have 
been rejected as not enabled. Moreover, there is no evidence of record that a person 
of skill in the art cannot, without undue experimentation, make these species following 
Applicants' teaching. The Examiner has not denied that Applicants extensive proof 
shows that a person of skill in the art can fabricate these species following Applicants' 
teaching. Under In re Angstadt and In re Wards it is Examiner's burden to establish 
that undue experimentation is needed to practice Applicants' claimed invention. The 
Examiner has made no attempt to satisfy this burden. 

As stated all of Applicants' claims except for one was rejected in the final rejection of 
the parent application as anticipated or obvious over the Asahi Shinbum article under 
35 (JSC 102 and 103. In the Examiner's Answer in the parent application, these 
rejections were found moot in view of the Examiner agreeing that Applicants effectively 
swore behind the date of this article. The Examiner has not withdrawn the 35 USC 102 
and 103 rejections. Thus as alleged by Applicants from very early in the prosecution of 
this application, by these rejections, the Examiner has necessarily and unambiguously 
found all of Applicants' claims enabled. As stated, the Asahi Shinbum article 
[Attachment 6] derives its enablement from Applicants' publication [Attachment 3] which 
was published less than a year before Applicants' filing date and which is incorporated 
by reference in Applicants' specification. For a reference to anticipate a claimed 
invention the reference must enable from the teaching therein a person of skill in the art 
to practice the alleged anticipated claims and for a single reference to render obvious a 



YO987-074BZ 



Page 185 of 187 



08/479,810 




claimed invention the single reference must enable a person of skill in the art to practice 
the alleged obvious claims from the teaching of that reference in combination with what 
is know to a person of skill in the art. Thus, all of Applicants' claims that were rejected 
under 35 USC 102 and 103 over the Asahi Shinbum article must be fully enabled by the 
Examiner's own rational. 

Applicants' claims have been rejected under 35 USC 112, second paragraph, as 
indefinite for using language of the type "rare earth like" and "pervskite-like", etc. As 
shown by Applicants, the claims of many issued US Patents use such terms. The 
Examiner has arbitrarily rejected Applicants' claims without providing a reason for why 
Applicants' terms are indefinite while similar terms are not indefinite in the claims of 
these many issued patents. 

In view of the changes to the claims and the remarks herein, the Examiner is 
respectfully requested to reconsider the above-identified application. If the Examiner 
wishes to discuss the application further, or if additional information would be required, 
the undersigned will cooperate fully to assist in the prosecution of this application. 

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

If the above-identified Examiner's Action is a final Action, and if the above-identified 
application will be abandoned without further action by Applicants, Applicants file a 



YO987-074BZ 



Page 186 of 187 



08/479,810 





Notice of Appeal to the Board of Appeals and Interferences appealing the final rejection 
of the claims in the above-identified Examiner's Action. Please charge deposit account 
09-0468 any fee necessary to enter such Notice of Appeal. 

In the event that this amendment does not result in allowance of all such claims, the 
undersigned attorney respectfully requests a telephone interview at the Examiner's 
earliest convenience. 

MPEP 71 3.01 states in part as follows: 

Where the response to a first complete action includes a request for an 
interview or a telephone consultation to be initiated by the examiner, ... 
the examiner, as soon as he or she has considered the effect of the 
response, should grant such request if it appears that the interview or 
consultation would result in expediting the case to a final action. 




Pr DanielM^TMom 
Reg. No. 32,053 
(914) 945-3217 



IBM CORPORATION 
Intellectual Property Law Dept. 
P.O. Box 218 

Yorktown Heights, New York 10598 



YO987-074BZ 



Page 187 of 187 



08/479,810