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PRELIMINARY REMARKS 



The Office Action dated July 28, 2004 does not respond to all of Applicants' 
arguments and factual data as to why all of Applicants' claims are fully enabled. Prior 
to final rejection Applicants are entitled to the Examiner's reasons why Applicants' 
arguments and factual evidence in support of Applicants' position are not found 
persuasive by the Examiner. A final rejection is improper without the Examiner's 
comments. To finally reject Applicants' claims without the missing Examiner's 
comments means that Applicants for the first time will, if at all, know of the Examiner's 
missing reasons either in a final rejection, the Examiner's Answer to Applicants' Brief on 
Appeal or in a Decision by the Board of Appeals. This will substantially disadvantage 
Applicants since after final rejection, Applicants have limited ability (or none at all) to 
introduce new arguments and evidence to rebut the reason for why Applicants 
non-responded to arguments and evidence do not overcome the rejections for lack of 
enablement. 

The Examiner did not respond to Applicants' arguments and evidence in support 
of full enablement of all the claims as specifically indicated in the following list: 

1 . The article by Rao "Synthesis of Cuprate Superconductors" referred to in the 
Fifth Supplemental Amendment dated March 1 , 2004 at page 119, lines 7-17, page 
143, line 17 to page 150, line 17; and page 174, line 14 to page 176, line 4 from the 
bottom. 

2. The Handbook of Chemistry and Physics Table of High Tc Superconductors 
referred to at page 176, line 3 from the bottom to page 178, last line of the Fifth 
Supplementary Amendment dated March 1 , 2004. 

3. Applicants' Remarks on the ancestral file history pages 179 to 183 of the Fifth 
Supplementary Amendment dated March 1 , 2004. 



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4. Applicants' remarks on why Rejections under 35 USC 1 02 and 1 03 over the 
Asahi Shinbum article necessarily lead to the conclusion that all of Applicants' claims 
are enabled referred to on page 23 to page 25 of the Fifth Supplementary Amendment 
dated March 1 , 2004. 



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REMARKS 



Reconsideration is respectfully requested in view of any changes to the claims 
and the remarks herein. Please contact the undersigned to conduct a telephone 
interview in accordance with MPEP 713.01 to resolve any remaining requirements 
and/or issues prior to sending another Office Action. Relevant portions of MPEP 
713.01 are included on the signature page of this amendment. 

Applicants gratefully acknowledge the allowance of claims 1 13, 1 14, 123-125, 
135-138, 140, 151, 157, 167-169, 172-174, 177-179, 185, 186, 189-191, 196, 197, 
213-216, 220, 221, 224-226, 231, 258-260, 264, 265, 269, 270, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 31 1 , 312 and 315-317. 

Applicants disagree with the rejection of the following claims for the reasons 
given herein. 1-72, 77-81, 84-112, 115-122, 126-134, 139, 141-150, 152-156, 158-166, 
170, 171, 175, 176, 180-184, 187, 188, 192-195, 198-212, 217-219, 222, 223, 227-230, 
232-257, 261-263, 266-268, 271-275, 278, 279, 283-286, 289-295, 303, 308-310, 313, 
314, 318-376 and 379-413. 

Applicants acknowledge that the Examiner entered Applicants' amendment and 
the six supplementary amendments, collectively referred to herein as Applicants' prior 
responses. Applicants acknowledge that the attachment(s) filed with the Sixth 
Supplemental Amendment have been entered and that claims 1-413 are currently 
pending. Applicants note that the Examiner has not commented on all of Applicants' 
arguments in the Applicants' amendment and six supplementary amendments. 
Therefore, Applicants request that the Examiner either allow all the pending claims or 
issue a non final action responding to all of Applicants' arguments. Applicants are 
entitled to the Examiner's comments to all of Applicants' arguments before a final 
rejection. 



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Claims 73-76, 82-83 and 377-378 are withdrawn from consideration as being 
drawn to a non-elected invention (process). Applicants disagree. Applicants have put 
claims 73-76, 82-83 and 377-378 in apparatus form. 

The Examiner states at page 3: 

Accordingly, the issue of the instant claims being supported by the priority 
document is believed moot in view of the withdrawal of the prior art 
rejections. 

Applicants disagree that the "issue of the instant claims being supported by the 
priority document is ... moot in view of the withdrawal of the prior art rejections." 
Whether the claims are supported by the priority document is not dependent of whether 
there are prior art rejections. For the reasons given in Applicants' prior responses it is 
Applicants' view that all their claims are supported by the priority document and request 
that priority be granted to the priority document. Applicants disagree that the issue of 
the instant claims being supported by the priority document is moot. 

The Examiner further states at page 3: 

Claims 322-360 are rejected under 35 U.S.C. 112, first paragraph, as 
failing to comply with the written description requirement. The claim(s) 
contains subject matter which was not described in the specification in 
such a way as to reasonably convey to one skilled in the relevant art that 
the inventor(s), at the time the application was filed, had possession of the 
claimed invention. Specifically, the examiner fails to find support for the 
claim terminology "...can be made in bulk according to a principle 
comprising a general principle of ceramic science". The specification 
makes no specific mention of "bulk", nor is there any description of 



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"general principle". The examiner suggests changing the terminology to 
"...wherein said compositions can be made according to known principles 
of ceramic fabrication". See specification, pages 8 and 15. 

Applicants disagree that the claim terminology "... can be made in bulk according 
to a principle comprising a general principle of ceramic science" is not supported by the 
specification. Added claim language does not have to have literal or in haec verba 
support in the specification. All that is necessary is that a person of ordinary skill in the 
art would recognize from the specification that the inventor was in possession of that 
which is claimed. The Examiner has provided no justification for why a person of 
ordinary skill in the art would not recognize that the Applicants were not in possession 
of "... can be made in bulk according to a principle comprising a general principle of 
ceramic science." The term "in bulk" is recognized by a person of ordinary skill in the 
art to correspond to a macroscopic sample and "general principle" corresponds to what 
is generally know to a person of ordinary skill in the art at the time the application was 
filed. To satisfy the written description requirement the claim language does not have 
to be mentioned in the specification. 

Claims 322-360 have been amended to change the terminology "can be made in 
bulk according to a principle comprising a general principle of ceramic science" to the 
language suggested by the Examiner "wherein said compositions can be made 
according to known principles of ceramic fabrication." The language suggested by the 
Examiner includes within its meaning both in bulk and general principles of ceramic 
science." 

The Examiner further states at page 3: 

Claims 21 1 , 256, 302 and 394 are objected to because of the following 
Informalities: in part (a), applicant should clarify the claim language to 
clearly require both a (Group MA element or rare earth element) and a 



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Group 1MB element must be present (if such is the case). Appropriate 
correction is required. 

Claims 21 1 , 256, 302 and 394 are correct in their present form since a High T c 
superconductor does not require both a Group IIA element or a rare earth element and 
a Group NIB element. 

The Examiner further states at page 4: 

Claims 1-5, 7-11, 17, 19, 23, 28, 52-54, 59, 65, 72, 77-81, 86, 87, 94, 
96-108, 144, 145, 149,150,152-156,158-161,165,196,170,171,175,176, 
180, 181, 235, 236, 240, 241-252, 257, 261, 262, 266, 267, 271, 272 and 
361-413 are 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. 

Applicants respectfully disagree for the reasons given herein below. 

The Examiner further states at page 4: 

The terms "layer-type", "perovskite-like", "rare-earth-like" and "near-rare 
earth" (claim 65) are vague and confusing. See MPEP 2173.05. The 
question arises: What is meant by these terms? 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. Additionally, the newly added claims terminology "comprising a 
rare-earth characteristic", "comprising a layer characteristic" and 
"comprising a perovskite characteristic" are considered indefinite. The 
terms are considered identical in scope to the previously rejected 
terminology and are indefinite for the same reasons. 

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Applicants respectfully disagree. Applicants have shown that the USPTO 
routinely issues patents with claims having elements containing the language as "like", 
"similar" and "type". Thus it is accepted USPTO practice to not find such claims 
indefinite. Applicants have listed the issued claims of many of these patents in prior 
responses. There are many issued patents with claims having the identical terminology 
in the identical art such as for example "layer-type", "perovskite-like", "rare-earth-like" 
and "near-rare earth". There is no per se indefiniteness in these claim terms as 
recognized by the USPTO in issuing so many patents with claims containing this and 
related terminology. 

The Examiner further states at page 4 in the footnote: 

See Ex parte Remark, 15 USPQ 2d 1498, 1500 (BPA1 1990); Ex parte 
Kristensen, 10 USPQ 2d 1701, 1703 (BPAI 1989); Ex parte Attig, 7 USPQ 
2d 1092, 1093 (BPA1 1988); and Ex parte Copenhaver, 109 USPQ 118 
(POBA 1955). 

' Applicants have addressed the holding of these decisions in prior responses and 
have given extensive reasons why they do not apply in the present application. The 
Examiner has provided no rebuttal of these comments. As stated by Applicants and as 
proven by Applicants by reference to literature from the field of high T c 
superconductivity. This terminology is the accepted terminology of the high T c art. 
Thus persons of skill in the art recognize and understand the terminology 
"rare-earth-like", "perovskite-like", "perovskite-type" and "layer-type". There is no other 
better terminology. 

The lack of antecedent basis for the terminology "said copper oxide" in claim 
263, line 6, has been corrected. 

The Examiner further states at page 5: 



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The Applicants argue that the terms "rare-earth like", "perovskite-like", 
and "perovskite-type" are definite. Those arguments are not found to be 
persuasive. 

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. As suggested above, 
"rare-earth like" should be changed to -rare earth or Group 1 1 IB element--. 
The terms "like" or "type" also should be removed from "perovskite-like" or 
"perovskite-type". 

The Examiner states "Each patent is considered on its own merits. ... In the 
present case; however, the term "rare-earth-like" and "perovskite-like" are unclear." 
However, the Examiner has not stated why these terms are in the Examiner's view 
"unclear", but the identical terms in the cited issued patents are not unclear. The 
Examiner provides no standard against which to make such a determination. 
Therefore, the Examiner's reasons for rejection are arbitrary and capricious in violation 
of the Administrative Procedures Act. The Court of Appeals states in Orthokinetics Inc. 
v. Safety Travel Chars Inc. USPQ 2d 1081 , 1088 in relation to a claim term asserted to 
be indefinite: 

The phrase "so dimensioned" is as accurate as the subject matter 
permits, automobiles being of various sizes ... As long as those of 
ordinary skill in the art realized that dimensions could be easily obtained, 
§112, 2d H requires nothing more. The patent law does not require that all 
possible lengths corresponding to the space in hundreds of different 
automobiles be listed in the patent, let alone that they be listed in the 
claim. 



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In the present invention Applicants have shown that the terms "perovskite-like", 
"rare-earth-like", "perovskite-type"; "layer-like" and "layer-type" are understood by 
persons of ordinary skill in the art. Nothing more is required by § 1 12, 2d paragraph. 
As stated by Applicants, the term "perovskite-type" and "perovskite-like" are used since 
the crystal structures referred to are not perovskite. As shown in prior responses the 
crystal structures are close to but not identical to perovskite. 

The Examiner further states at page 5: 

Claims 1-64, 66-72, 84, 85, 88-96,100-102, 109-1 12, 1 15-122, 126-134, 
139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 
198-212, 217-219, 222, 223, 227-230, 232-234, 237-240, 244-246, 
253-257, 268, 273-275, 278, 279, 283-286, 289-295, 302, 303, 308-310, 
313, 314, 318-329, 331-334, 337-345, 347-357, 359-374, 376, 379, 380, 
382, 383, 389, 394, 395, 402, 407 and 408 are rejected under 35 U.S.C. 
112, first paragraph, because the specification, while being enabling for 
compositions comprising a transition metal oxide containing at least a) an 
alkaline earth element or Group IIA element and b) a rare-earth element 
or Group IIIB element, does not reasonably provide enablement for the 
invention as claimed. The specification does not enable any person skilled 
in the art to which it pertains, or with which it is most nearly connected, to 
make the invention commensurate in scope with these claims. 

Applicants respectfully disagree. The claims are directed to an apparatus or 
structure. The claims are not directed to a composition of matter. The Examiner 
provides no reasons for why the specification does not enable an apparatus or structure 
comprising an element having at T c ^ 26 2 K and conducting a superconductive current at 
a temperature £ 26 9 K wherein the superconducting element does not comprise a 
transition metal oxide containing at least a) an alkaline earth element or Group IIA 
element and b) a rare earth element or Group IIIB element. 



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The Examiner further states at page 6: 

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 300K) 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. 2 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. 1 12. 3 Merely reciting a desired 
result does not overcome this failure. 4 In particular, the question arises: 
will any layered perovskite material exhibit superconductivity? 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these 
grounds for rejection. 

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 which is the Examiner's burden. 
The examiner has stated without support that the art of high temperative 
superconductivity is an extremely unpredictable one. Applicants request that the 
Examiner support this statement with factual evidence or to withdraw the statement or 
to provide an Examiner's affidavit showing that the Examiner has the expertise to make 
such a statement not supported by documented factual evidence. Applicants have not 
merely stated a desired result as clearly shown by the five affidavits submitted by five 



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experts (Mitzi, Tsuei, Dinger, Duncombe and Shaw - Attachments 16, 18, 17, 20 and 19 
of the Fifth Supplemental Amendment dated March 1 , 2004, respectively) in the field, 
the Poole book (Attachment 21 of The Fifth Supplemental Amendment dated March 1 , 
2004) and the Rao article (Attachment C of the response submitted August 4, 2000) 
and the list of known high T c superconductors Attachment 48 and 49, of the Fifth 
Supplemental Amendment dated March 1 , 2004). And it is not necessary for any 
layered perovskite to work to satisfy 35 USC 1 12, first paragraph. It is only necessary 
that they can be determined without undue experimentation. 

The Examiner 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, the book by Von Laue entitled "Superconductivity", published in English in 
1 952, presents a comprehensive theory of superconductivity. The entire text of this 
book is included in Attachment A of the response submitted August 4, 2000. 
Notwithstanding, for a claim to be enabled under section 112, it does not require an 
understanding of the theory. The examiner then conclusorily states "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 held 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 incorrectly cites Brenner v. 
Manson, 383 US 519, 148 USPQ 689. 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 
Applicants' prior response, this quote applies to utility (a requirement under 35 USC 
101) not to enablement (a requirement under 35 USC 112) and is thus incorrectly cited 
by the examiner. 



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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 of the Fifth Supplemental Amendment 
submitted March 1 , 2004]. 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, §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 
from filing patent applications in an unpredictable area since the patent 



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claims would have to be limited to those embodiments which are 
expressly disclosed. A potential infringer could readily avoid "literal" 
infringement of such claims bv merely finding another analogous catalyst 
complex which could be used in "forming hydroperoxides." (Emphasis 
Added) 

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 apparatus or structures comprising superconductors having T c > 26 e K which 
carry a superconductive current. Applicants' claims are not composition of matter 
claims. Under In Re. Angstadt, a patent application is not limited to claims covering 
embodiments expressly disclosed in their specification. 

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: 



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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 O 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." 

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 1 1 , 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: 



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Ba4La 5 .xCu 5 05(3-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 12, line 13 
La2-xSn x Ni04- y at page 12, line 17 
Ce 2 -xCuxNi04- y at page 12, line 19 
La 2 Cu0 4 at page 12, line 21 

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

La 2 -xSnxCu04- y at page 1 7, line 21 

La 2 .xCa x CuC>4-y at page 17, line 21 

La 2 .xBa x Cu04^ at page 1 8, line 6 

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

La 2 Cu0 4 :Ba at page 24, line 6 

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

La 2 Cu0 4 - y doped with Sn 2x , Ca 2x and Ba 2 * 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 of the Fifth Supplemental Amendment dated 
March 1, 2004], and to C. Michel et al. in Rev. Claim. Min. 21 (1984) 407 [Attachment 
15B of the Fifth Supplemental Amendment dated March 1 , 2004], both of which are 
incorporated by reference at page 13, lines 4-5 of the specification. 

The Examiner cites In re Fisher, 166 USPQ 18, In re Angstadt and Griffen, 150 
USPO 214, and In re Colianni, 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: 



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"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). 

The Examiner has not shown that Applicants' claims include compositions "in 
excess of those obtainable from his teaching plus ordinary skill." 

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 wav 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) (Emphasis 
added) 



Applicants of the present invention have provided the first teaching that 
compositions, for example such as transition metal oxides, can form a superconductor 
having a critical temperature greater than or equal to 26 a K, therefore, "is apparent that 



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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. All known high Tc superconductors are 
based on Applicants' teachings. The Examiner has acknowledged this by rejection of 
all claims over the Asahi Shinbum article under 35 USC 103 as described in detail 
below. 

In the present invention, Applicants are acknowledged to be the pioneers of high 
T c superconducting compositions, such as for example metal oxides. The Examiner 
has produced no evidence that inventions 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 of the Fifth Supplemental Amendment dated 
March 1, 2004], Dinger [Attachment 17 of the Fifth Supplemental Amendment dated 
March 1, 2004], Tsuei [Attachment 18 of the Fifth Supplemental Amendment dated 
March 1 , 2004], Shaw [Attachment 19 of the Fifth Supplemental Amendment dated 
March 1 , 2004], Duncombe [Attachment 20 of the Fifth Supplemental Amendment 
dated March 1 , 2004] and the book of Poole et al. state [Attachment 21 of the Fifth 
Supplemental Amendment dated March 1 , 2004] 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: 



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"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 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 of the 
Fifth Supplemental Amendment dated March 1 , 2004], Dr. Tsuei [Attachment 18 of the 
Fifth Supplemental Amendment dated March 1 , 2004], Dr. Shaw [Attachment 19 of the 
Fifth Supplemental Amendment dated March 1 , 2004], Mr. Duncombe [Attachment 20 
of the Fifth Supplemental Amendment dated March 1 , 2004] and Dr. D. Mitzi 
[Attachment 16 of the Fifth Supplemental Amendment dated March 1 , 2004] 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 



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generally follows the known principles of ceramic fabrication." Thereafter, an example 
of a typical manufacturing process is given. 

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

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



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"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 of the Fifth Supplemental 
Amendment dated March 1, 2004], Dr. Tsuei [Attachment 18 of the Fifth Supplemental 
Amendment dated March 1, 2004], Dr. Shaw [Attachment 19 of the Fifth Supplemental 
Amendment dated March 1 , 2004], Mr. Duncombe [Attachment 20 of the Fifth 
Supplemental Amendment dated March 1 , 2004] and Dr. Mitzi [Attachment 16 of the 
Fifth Supplemental Amendment dated March 1 , 2004], 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. 

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. 



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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 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. 

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 while 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, 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." 



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The passage quoted from the CCPA decision in In re Angstadt above provide 
the following eight factors: 

1 . The PTO has the burden of giving reasons why the specification is 
not enabling. 

2. Showing that a disclosure requires undue experimentation is the 
PTO's initial burden. 

3. That experimentation is needed to practice the claimed invention 
does not require the applicant to prove the experimentation 
needed is undue 

4. Depriving inventors of claims that adequately protect them invites 
others to practice their invention while avoiding infringement will 
suppress disclosure. 

5. When an applicant discloses compositions that are within the 
scope of the claims that will not work to practice the invention, this 
does not result in the claim being not enabled but is commendable 
honesty on the part of the inventor. 

6. Examples that come within the scope of the claim that can be 
determined not to work without undue experimentation do not result 
in the claims not being enabled. 

7. Everything does not have to be made predictable in advance. 

8. To require everything to be made predictable in advance is 
impracticable and unreasonable. 

These factors will be referred to herein as In re Angstadt Factors 1 to 8. 

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 



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undue experimentation to practice Applicants' non-allowed claims. The affidavits of 
Mitzi [Attachment 16 of the Fifth Supplemental Amendment dated March 1, 2004], 
Dinger [Attachment 17 of the Fifth Supplemental Amendment dated March 1, 2004], 
Tsuei [Attachment 18 of the Fifth Supplemental Amendment dated March 1, 2004], 
Shaw [Attachment 19 of the Fifth Supplemental Amendment dated March 1 , 2004] and 
Duncombe [Attachment 20 of the Fifth Supplemental Amendment dated March 1 , 2004] 
and the book of Poole et al. [Attachment 21 of the Fifth Supplemental Amendment 
dated March 1 , 2004] explicitly indicate that persons of skill in the art do not have to 
engage in undue experimentation to practice Applicants' invention. 

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 
point. 

"Showing that the disclosure entails undue experimentation is part of the PTO's 
initial burden." In re Armbruster 1 85 USPQ 152, 504. The Examiner has not shown 
that undue experimentation is required to practice Applicants' claims to their full scope. 

"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. Notwithstanding that the Examiner has not satisfied this initial 
burden, Applicants have provided evidence to show that their claims are fully enabled 
even though the burden for such a showing has not shifted to them. 

"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 



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of high temperature superconductivity is unpredictable..." and noted that Applicants 
identify examples of compounds that do not have T c £ 26 2 K. But example that do not 
work that come within the scope of a does not result in the claim not being enabled. 

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 



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to go to the trouble and expense of supporting his presumptively accurate 
disclosure. [Emphasis in original footnote deleted]. 

Applicants have submitted affidavits of Dr. Mitzi [Attachment 16 of the Fifth 
Supplemental Amendment dated March 1 , 2004], Dr. Tsuei [Attachment 18 of the Fifth 
Supplemental Amendment dated March 1, 2004], Dr. Shaw [Attachment 19 of the Fifth 
Supplemental Amendment dated March 1 , 2004], Mr. Duncombe [Attachment 20 of the 
Fifth Supplemental Amendment dated March 1 , 2004] and Dr. Dinger [Attachment 17 of 
the Fifth Supplemental Amendment dated March 1, 2004] 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 Cook 169 USPQ 298, 302 and Cosden Oil v. American 
Hoechst 214 USPQ 244, 262 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." The quoted language is from Cosden Oil v. American 
Hoechst which is directed to claims to compositions of matter. The present claims are 
not directed to compositions of matter. 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. 
Applicants note that Cosden Oil v. American Hoechst is a distinct court decision 
decided in 1982 and has not been cited to or followed by the CAFC in the more that 22 
years since this decision. Thus these decisions are not on point. Moreover, such 
examples are not evidence of lack of enablement according to In re Angstadt. (Factors 
5 and 6) 



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The Examiner cites In re Corkill 226 USPQ 1005, 1009 as support for this 
statement "[m]erely reciting a desired result does not overcome this failure". In 
sustaining a rejection for indefiniteness the CAFC held "[c]laims which include a 
substantial measure of inoperatives ... are fairly rejected under 35 USC 112." Thus In 
re Corkill holds claims indefinite when the "claims do not correspond in scope to what 
they regard as their invention." The Examiner has cited In re Corkill for a rejection 
under 35 USC 112, first paragraph, to which it does not apply. 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 language is 
sanctioned specifically by ... section 1 12." In re Angstadt 190 USPQ 214, 217. 

The Examiner cited Brenner v. Manson 148 USPQ 689 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 
Nobel Prize and initiated and enabled the high T c art. 

The Examiner queries "[wjill 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 9 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. 



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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^ 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 1MB element, such as La." Group 1MB 
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 1MB 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 at page 7: 

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". 5 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these 
grounds for rejection. 

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." 



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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 of the Fifth Supplemental Amendment dated March 1 , 2004], 
Dinger [Attachment 17 of the Fifth Supplemental Amendment dated March 1, 2004], 
Tsuei [Attachment 18 of the Fifth Supplemental Amendment dated March 1 , 2004], 
Shaw [Attachment 19 of the Fifth Supplemental Amendment dated March 1 , 2004] and 
Duncombe [Attachment 20 of the Fifth Supplemental Amendment dated March 1 , 2004] 
under 37 CFR 1 .132 and the book to Poole et al. [Attachment 21 of the Fifth 
Supplemental Amendment dated March 1 , 2004] 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 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. 

The Examiner further states at page 7: 



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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 BaxLas-xCusOy as stated in the 
Final Office action). Applicant has provided guidance throughout the 
instant specification that various transition metal oxides (such as copper 
oxide) containing an alkaline earth element and a rare-earth or Group NIB 
element result in superconductive compounds which may in turn be 
utilized in the instantly claimed apparatus. 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these 
grounds for rejection. 

Applicants disagree that they have only enabled compositions containing an 
alkaline earth element and a rare earth or Group III B element to result in 
superconductive compounds which may in turn be utilized in the instantly claimed 
methods. There are numerous examples of high T c superconductors made using the 
general principals of ceramic science as taught by Applicants. These principals that 
existed prior to Applicants' priority date. 

The Examiner further states at page 8: 

Applicant's remarks have been carefully considered. The following 
remarks are believed to address each of the issues raised by applicant, 
applicants' arguments, as well as the Affidavits filed 5/1/98, 5/14/98, 
12/16/98 and 3/3/04 (1.132 Declarations of Mitzi, Tsuei, Dinger and Shaw) 
(Advisory mailed 2/25/99 (Paper 77E)) have been fully considered but 
they are not deemed to be persuasive. 



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The Examiner has provided no reason for why the 1 .132 Declarations of 
Mitzi.Tsuei, Dinger and Shaw are not persuasive. 

The Examiner further states at page 8: 

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 
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 has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these 
grounds for rejection. 

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 of 
the Fifth Supplemental Amendment dated March 1 , 2004] 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 
of the Fifth Supplemental Amendment dated March 1 , 2004]. Applicants' view is further 
supported by the five affidavits of Mitzi [Attachment 16 of the Fifth Supplemental 
Amendment dated March 1, 2004], Tsuei [Attachment 18 of the Fifth Supplemental 
Amendment dated March 1 , 2004], Dinger [Attachment 17 of the Fifth Supplemental 
Amendment dated March 1, 2004], Shaw [Attachment 19 of the Fifth Supplemental 
Amendment dated March 1 , 2004] and Duncombe [Attachment 20 of the Fifth 
Supplemental Amendment dated March 1 , 2004] under 37 CFR 1 .1 32 and the book of 
Poole [Attachment 21 of the Fifth Supplemental Amendment dated March 1 , 2004] 



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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 on pages 8-9: 

Applicants argue that their disclosure refers to "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 O is 
oxygen", and list several species such as "La2-xBaxCU04-y" which they 
indicate are found In the present disclosure. 

Notwithstanding that argument, it still does not follow that the invention is 
fully enabled for the scope presently claimed. The claims include formulas 
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". 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these 
grounds for rejection. 

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 of the Fifth Supplemental Amendment dated March 1 , 
2004] further states at Col. 2, lines 22-25 "the lanthanum which belongs to the I IB group 
of elements is in part substituted by one member of the neighboring MA 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 



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(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 HA 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 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 at page 9: 

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. 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these 
grounds for rejection 



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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 1 4 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 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 at page 9: 

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. 



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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. 

The Examiner further states at page 10: 

The availability requirement of enablement must also be considered in 
light of the scope or breadth of the claim limitations. The Board of Appeals 
considered this issue in an application which claimed a fermentative 
method using microorganisms belonging to a species. Applicants had 
identified three novel individual strains of microorganisms that were 
related in such a way as to establish a new species of microorganism, a 
species being a broader classification than a strain. The three specific 
strains had been appropriately deposited. The issue focused on whether 
the specification enabled one skilled in the art to make any member of the 
species other than the three strains which had been deposited. The Board 
concluded that the verbal description of the species was inadequate to 
allow a skilled artisan to make any and all members of the claimed 
species. Ex parte Jackson 217 USPQ 804, 806 (Bd. App. 1982). 

Ex parte Jackson is not applicable to the present application. The board in Ex 
parte Jackson states at 217 USPQ 804, 806-807: 

The first paragraph of 35 U.S.C. 112 requires that the disclosure of an 
invention be "in such a full, clear, concise and exact terms as to enable 
any person skilled in the art to which it pertains or with which it is most 
nearly connected, to make and use the same ... Decisional law has 
interpreted the statutory requirement as dictating that sufficient 



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information be given in the application so that one of ordinary skill in the 
art can practice the invention without undue experimentation. ... 

The determination of what constitutes undue experimentation in a give 
case requires the application of a standard or reasonableness, having due 
regard for the nature of the invention and the state of the art. ... 

The test is not merely quantitative, since a considerable amount of 
experimentation is permissible if it is merely routine, or if the specification 
in question provides a reasonable amount of guidance with respect to the 
direction in which the experimentation should proceed to enable the 
determination of how to practice a desired embodiment of the invention 
claimed. 

The Board states at 217 USPQ 806 "The issue squarely raised by [the] rejection 
[of claims] is whether or not a description of several newly discovered strains of bacteria 
having a particularly desirable metabolic property in terms of the conventionally 
measured culture characteristic and a number of metabolic and physiological properties 
would enable one of ordinary skill in the relevant art to independently discover 
additional strains having the same specific desirable metabolic property, i.e., the 
production of a particular antibiotic." 

The Board in Ex parte Jackson further states at 217 USPQ 808 "The problem of 
enablement of processes carried out by microorganisms were uniquely different from 
the field of chemistry generally. Thus, we are convinced that such recent cases as In re 
Angstadt 537 F.2d 498, 190 USPQ 214 (CCPA 1976) and In re Geerdes 491 F.2d 
1260, 180 USPQ 789 (CCPA 1974) are in apposite to this case." Therefore, since the 
present application is not directed to biotechnology or microorganism invention, the 
decision of Ex parte Jackson does not apply. 



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The Board in Ex parte Jackson further states at 217 USPQ 808 "The 
experimentation involved in the ordinary chemical case, including [In re Angstadt and In 
re Geerdes], usually arise in testing to establish whether a particular species within the 
generic claim language will be operable in the claimed process." As stated herein the 
method of "testing" to establish whether a particular species within the generic claim 
language will be" superconductive with a T c £ 26 fi K is well known prior to Applicants' 
priority date. Also, the process for making the compositions is well known prior to the 
Applicants' priority date. 

The Board in Ex parte Jackson cited In re Geerdes 180 USPQ 789. The Court in 
In re Geerdes at 180 USPQ 793 states in reversing a rejection of claims under 35 
U.S.C. 112, first paragraph, for lack of enablement "the area of technology involved 
here in not particularly complex and there is no evidence in the record to indicate that 
one of skill in the art would not be able to make and use the claimed invention." The 
area of technology involved in the present application in regard to making high T e 
materials is well known. 

The Court in In re Geerdes further states at 180 USPQ 993 "The Board 
expressed concern that 'experimentation' is involved in the selection of proportions and 
particle sizes, but this is not determinative of the question of scope of enablement. It is 
only undue experimentation that is fatal." 

The Court further states at 180 USPQ 793 "we cannot agree with the Board's 
determination that the claims are inclusive of materials which would not apparently be 
operative in the claimed process ... of course it is possible to argue that process claims 
encompass inoperative embodiments on the premise of unrealistic or vague 
assumptions, but that is not a valid basis for rejection." The Examiner's basis for 
rejection of Applicants' claims is impermissibly premised on unrealistic or vague 
assumptions, such as examples cited by Applicant having a T c < 26 S K and unsupported 
statements such as the theory of Superconductivity is not understood. 



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Chapter 5 of the Poole et al. [Attachment 21 of the Fifth Supplemental 
Amendment] 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 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 of the Fifth 
Supplemental Amendment] and See Attachment H of Applicants' response dated 
November 28, 1997 [Attachment 24f the Fifth Supplemental Amendment]). 
Consequently, Applicants have fully enabled high T c transition metal oxides and their 
claims. 



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It is therefore clear that undue experimentation is not required to practice 
Applicants' claimed invention. 

The Examiner further states at page 10-11: 

In Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 
(Fed. Cir. 1999), the court held that claims in two patents directed to 
genetic antisense technology, (which aims to control gene expression in a 
particular organism), were invalid because the breadth of enablement was 
not commensurate in scope with the claims. Both specifications disclosed 
applying antisense technology in regulating three genes in E. coli. Despite 
the limited disclosures, the specifications asserted that the "[t]he practices 
of this invention are generally applicable with respect to any organism 
containing genetic material which is capable of being expressed." such as 
bacteria, yeast, and other cellular organisms." The claims of the patents 
encompassed application of antisense methodology in a broad range of 
organisms. Ultimately, the court relied on the fact that (1) the amount of 
direction presented and the number of working examples provided in the 
specification were very narrow compared to the wide breadth of the claims 
at issue, (2) antisense gene technology was highly unpredictable, and (3) 
the amount of experimentation required to adapt the practice of creating 
antisense DNA from E. coli to other types of cells was quite high, 
especially in light of the record, which included notable examples of the 
inventor's own failures to control the expression of other genes in E. coli 
and other types of cells. 

The Examiner cites Enzo v Calgene 52 USPQ2d 1 129 which is a biotechnology 
decision. This decision is not applicable to the present invention as stated by Ex parte 
Jackson as stated above. The Court in Enzo v. Calgene at 52 USPQ2d 1 129, 1 135 
applies the facts of In re Wands 8 USPQ2d 1400. 



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The CAFC in Enzo at 52 USPQ2d 1 129, 1 138 cites In re Vaeck 20 USPQ2d 
1438 stating: 

It is well settled that patent Applicants are not required to disclose every 
species encompassed by their claims, even in an unpredictable art. 
However, there must be sufficient disclosure, either through illustrative 
examples or terminology, to teach those of ordinary skill how to make and 
use the invention as broadly as it is claimed. 

Applicants have satisfied the standard of In re Vaeck. 

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



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(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 s 
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; 

(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 s 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; 



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(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. 

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), aff'd. sub nom., Massachusetts Institute of 
Technology v. A.B. Fortia, 774 F.2d 1 104, 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. 



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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 
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 e ^ 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. 

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 



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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. 

The Examiner states in the answer brief of the parent application "[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 



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inoperable species where to determine which species works does not require undue 
experimentation. The Examiner has not met the USPTO's burden of showing that 
undue experimentation is needed to determine which compositions have T c > 26°K 

and which have T c < 26° K as required by In re Angstadt, supra. 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. 

In the prosecution of this 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 e is unpredictable and not theoretically understood, that is, the 
Examiner's conclusory opinion or belief that the claims are not enabled. In the 
prosecution of this 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 



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supported when called for by the Applicants, by an affidavit of such employee." 
(Emphasis Added) 

The Examiner further states at page 11-12: 

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 
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-O" 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°K" or "greater than 26°K". 

Applicant respectfully disagrees with the Examiner. All of the claims require T c to 
be greater that of equal to 26°K. 

The Examiner further states at page 12: 

The state of the prior art provides evidence for the degree of predictability 
in the art and is related to the amount of direction or guidance needed in 
the specification as filed to meet the enablement requirement. The state 
of the prior art is also related to the need for working examples in the 
specification. The state of the art for a given technology is not static in 
time. It is entirely possible that a disclosure filed on January 2, 1990, 
would not have been enabled. However, if the same disclosure had been 
filed on January 2, 1996, it might I have enabled the claims. Therefore, 
the state of the prior art must be evaluated for each application based on 
its filing date. 35 U.S.C. 112 requires the specification to be enabling only 



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to a person skilled in the art to which it pertains, or with which it is most 
nearly connected." 

Notwithstanding the Examiner's comments the Examiner has the burden of 
showing that the claims are not enabled by a reasonable argument which the Examiner 
has not done. The Examiner has presented no evidence or argument that undue 
experimentation is required to make composition that can be used to practice in the full 
scope of Applicants' claims. 

The Examiner further states at page 1 2-1 3: 

The Applicants also have submitted three 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." 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 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. 



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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 132 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 five 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 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 at page 1 4: 

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 of the Fifth 
Supplemental Amendment dated March 1 , 2004] and Duncombe [Attachment 20 of the 
Fifth Supplemental Amendment dated March 1 , 2004] 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 



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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 .is Sri.wCai.7 Cu 2 0 8+ 8, Ca (2 . X ) Sr x Cu 
Ox and Bi 2 Sr 2 Cu O x . 

The Examiner further states at page 14: 

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. 

It is not relevant that Applicants disclosed specific compositions. 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 and device 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. This is not required even with respect to 
claims directed to a chemical composition as clearly stated by In re Angstadt Facto 8 
supra - "The dissent wants appellants to make everything predictable in advance, which 
is impracticable and unreasonable." 185 USPQ 152 

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 



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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 
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 at page 14: 

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. 



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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 further states at page 15-16: 

The applicants quote a statement from "part of the previous Office Action 
and asserts that the "Examiner does not support this statement with any 
case law citations." That assertion is incorrect. Seven decisions have 
been cited as providing the legal basis for this determination of 
non-enablement. 7 

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. 1 66 USPQ 1 8, 24; and In re Anastadt and Griffen . 1 90 USPQ 21 4, 21 8. lore 
Colianni . 195 USPQ 150, 153, 154 (CCPA 1977). In re Cook. 169 USPQ 298, 302; and 
Cosden Oil 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 case law, 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. 

The Examiner further states at page 15: 



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The applicants argue tat 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, an apparatus passing a superconductive current 
through a composition, such as a 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 at page 15: 

The applicants assert that "(b)y the Examiner's statement that these 
(statements in the affidavits) are conclusionary (sic) the Examiner appears 
to be placing himself up as an expert in the field of superconductivity" and 
"respectfully request that the Examiner submit an affidavit in the present 
application rebutting the position taken by applicants' 3 affiants." 
Notwithstanding those assertions, this Examiner has determined that 
those affidavits were insufficient because they were conclusory only, i.e., 
they lacked particular facts to support the conclusions reached. 



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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 of the Fifth Supplemental Amendment dated March 1 , 2004] 
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 
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 



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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 Examiner further states at page 16: 

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 non-enabling scope is maintained for 
the reasons of record. 

The Examiner has the burden of showing that the claims are not enabled. The 
Examiner has merely asserted that the theory of high T c superconductivity was not 
understood at the Applicants' priority date. Applicants do not have to have a theory 
high T c superconductivity in order for their teaching to enable their claims. It is only 
necessary that a person of ordinary skill in the art be able to practice the claimed 
invention from Applicants' teaching without undue experimentation. The Examiner has 
not shown that undue experimentation is necessary to practice the claims of Applicants' 
invention. The Examiner has merely stated that since Applicants' teaching shows that 
there are materials which are not superconducting with T c ^ 26 °K, this is evidence as 
lack of enablement. Such materials do not come within the scope of Applicants' claims 
since Applicants' claims only include those materials that are superconducting. 
Applicants' affidavits have shown that the method of making the materials was well 
known in the art prior to Applicants' priority date. Thus persons of ordinary skill in the 
art knew how to make these materials. Which particular compositions have T c ^ 26 °K 



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is determined by routine experimentation which is within the skill of the art as stated by 
Applicants' affidavits. 

The Examiner further states at page 16: 

The applicants argue that the "standard of enablement for an apparatus 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. It is noted that 35 U.S.C. 
112, first paragraph, reads as follows: 

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 
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. 



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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 
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 1 1 2, first paragraph. All that is necessary to satisfy §1 1 2 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 of the Fifth Supplemental 
Amendment dated March 1 , 2004]. 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 



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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 and contrary to the CCPA decision in In re Angstadt. 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 this. 

The Examiner further states at page 1 6: 

The specification shall contain a written description of the invention, and 
of the manner and process of making and using it, in such full, clear, 
concise, and exact terms as to enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make and 
use the same, and shall set forth the best mode contemplated by the 
inventor of carrying out his invention. Apparatus claims also would be 
subject to the statutory provisions of 35 U.S.C. 112, first paragraph. 

Applicants' invention is a device and a method of operation of a device having a 
T c > 26°K. Applicants discovered that materials had aT c > 26°K. Applicants did not 
discover how to make these materials, which was well known prior to Applicants' priority 
date. Also, it was well known prior to applicant's priority date how to cause 
superconducting currents in materials having a T c at lower temperatures. Applicants do 



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not have to specifically enable every composition that come within the scope of their 
claims. Applicants only have to provide a teaching based on which those compositions 
can be made by a person of ordinary skill in the art with out undue experimentation. 

The Examiner further states at page 17: 

The applicants assert that the "Examiner has not shown by evidence not 
contained within applicants' teaching that the art of high T c 
superconductors is unpredictable in view of applicants' teaching" (spelling 
and punctuation errors corrected). To 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. 

The Examiner further states at page 17: 

The applicants point to "Copper Oxide Superconductors" by Charles P. 
Pooler Jr., et al., (hereinafter, "the Poole article") as supporting their 
position that higher temperature superconductors were not that difficult to 
make after their original discovery. 

Initially however, it should be noted that the Poole article was published 
after the priority date presently claimed. As such, it does not provide 
evidence of the state of the art at the time the presently claimed invention 
was made. 

Applicants have extensively referred to "Copper Oxide Superconductors" by 
Charles P. Poole, Jr., et al., (hereinafter, "the Poole book" or "the Poole article" 



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[Attachment 21 of the Fifth Supplemental Amendment dated March 1 , 2004]) 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 of the 
Fifth Supplemental Amendment dated March 1 , 2004] was published after the priority 
date presently claimed". It is not relevant that the Poole article [Attachment 21 of the 
Fifth Supplemental Amendment dated March 1 , 2004] 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 of the Fifth Supplemental Amendment dated March 1 , 2004] 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 CCPA in In re 
Angstadt, supra, clear states this is not required. 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 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 for Applicants to 
prove that the experimentation to make compositions to practice Applicants' claimed 
invention is undue just because some experimentation is needed to select compositions 



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that come within the scope of the Applicants claims. The Examiner is not applying the 
standard of In re Angstadt. 

The Examiner further states at page 18: 

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 Mueller article 
was published. 

The continued growth referred to in the passage from Poole et al. [Attachment 
21 of the Fifth Supplemental Amendment dated March 1, 2004] 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 166 USPQ 1-8, supra, 
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 these compounds 
would have a reasonable expectation of success based on Applicants' teaching. The 
Examiner has provided no evidence to the contrary. 



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The first (BiSrCaCuO) and third (TiBaCaCuO) of these compositions does not 
come within the scope of the claims allowed by the examiner since they do not contain 
a rare earth or group NIB 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 C of the response submitted August 4, 2000. This 
article lists in Table 1 the properties of 29 superconductors made according to 
Applicants' 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 III 
B element or an alkaline earth element. It is thus clear that broader claims than allowed 
should be allowed since it is clear that the allowed claims 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. 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 0 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 (See Attachment B of the Response 
submitted August 4, 2000), Rao et al. states: 

Several methods of synthesis have been employed for preparing 
cuprates, with the objective of obtaining pure monophasic products with 



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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 
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 12 of the 29 materials in Table 1 
do not come within the scope of the claims allowed by the examiner. Thus known 
examples fabricated according to Applicants' teaching will not be literally infringed by 
the Rao, Duncombe and Poole examples. 

The Examiner further states at page 18-20: 

The applicants submitted three affidavits, one each from Drs. Tsuei, 
Dinger and Mitzi which were signed in May of 1998. Except for one 
change, those three affidavits are the same as the ones submitted before 
and discussed above. 



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Those affidavits have been changed to indicate that the present 
application "includes all known principles of ceramic fabrication known at 
the time the application was filed." 

However, the additional indication also is considered to be a conclusory 
statement unsupported by particular evidence. 

The Examiner further states at page 19: 

Application have submitted three affidavits attesting to the applicants' 
status as the discoverers of materials that superconduct > 26°K. Each of 
the affidavits states that "all the high temperature superconductors which 
have been developed based on the work of Bednorz and Mueller 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. 

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 



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may now know 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 of the present application. 

Applicants have submitted five affidavits. 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 T c £ 26°K. The Examiner incorrectly 
states "one may now learn 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 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 Moreover, according to the CCPA in In re Angstadt Supra. 
Applicants' teaching do not have to teach all examples that come within the scope of 
their claims in advance. See In re Angstadt Factor 7 and 8 above. 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 
of the Fifth Supplemental Amendment dated March 1, 2004] and Shaw [Attachment 19 
of the Fifth Supplemental Amendment dated March 1 , 2004] 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 



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21 of the Fifth Supplemental Amendment dated March 1 , 2004] 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, 
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, 1987. This passage is referring to Applicants 
and Applicants' article [Attachment 3 of the Fifth Supplemental Amendment dated 
March 1 , 2004] 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 of the Fifth Supplemental Amendment dated March 1 , 2004] and See 
Attachment H of Applicants' response dated November 28, 1997 [Attachment 24 of the 
Fifth Supplemental Amendment dated March 1 , 2004]). 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 of the Fifth Supplemental Amendment dated March 1 , 2004], Mitzi [Attachment 16 of 
the Fifth Supplemental Amendment dated March 1 , 2004], Shaw [Attachment 1 9 of the 
Fifth Supplemental Amendment dated March 1 , 2004], Dinger [Attachment 17 of the 
Fifth Supplemental Amendment dated March 1 , 2004] and Duncombe [Attachment 20 
of the Fifth Supplemental Amendment dated March 1 , 2004], in particular that of Peter 
Duncombe which reports data prior to the Applicants' filing date. 



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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 of the Fifth 
Supplemental Amendment dated March 1 , 2004] 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 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 of the Fifth Supplemental Amendment dated March 1 , 2004] 
and See Attachment H of Applicants' response dated November 28, 1997 [Attachment 



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24 of the Fifth Supplemental Amendment dated March 1 , 2004]). Consequently, 
Applicants have fully enabled high T c transition metal oxides and their claims. 

As stated in the affidavit of Dr. Mitzi [Attachment 16 of the Fifth Supplemental 
Amendment dated March 1 , 2004], Dr. Dinger [Attachment 17 of the Fifth Supplemental 
Amendment dated March 1, 2004], Dr. Tsuei [Attachment 18 of the Fifth Supplemental 
Amendment dated March 1 , 2004], Dr. Shaw [Attachment 19 of the Fifth Supplemental 
Amendment dated March 1 , 2004] and Mr. Doncombe [Attachment 20 of the Fifth 
Supplemental Amendment dated March 1 , 2004] 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 at page 20: 

A key issue that can arise when determining whether the specification is 
enabling is whether the starting materials or apparatus necessary to make 
the invention are available. In the biotechnical area, this is often true 
when the product or process requires a particular strain of microorganism 
and when the microorganism is available only after extensive screening. 
The Court in In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 
1971), made clear that if the practice of a method requires a particular 
apparatus, the application must provide a sufficient disclosure of the 
apparatus if the apparatus is not readily available. The same can be said 
if certain chemicals are required to make a compound or practice a 
chemical process. In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 
(CCPA 1981). 



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The examiner respectfully maintains, for the reasons of record, that the 
disclosure is not fully enabling for the scope of the present claims. 

The Examiner cites In re Ghiron, 169 USPQ 723, 727 stating In re Ghiron "made 
it clear that if practice of a method requires a particular apparatus, the application must 
provide a sufficient disclosure of the apparatus if the apparatus is not readily available." 
No special apparatus is needed to practice Applicants' claimed invention since the 
apparatus was readily available before inventor's priority date. For example, see 
"Theory of Superconductivity" M. Von Laue, Academic Press, Inc., 1952 [Attachment 15 
of the Fifth Supplemental Amendment dated March 1 , 2004]. 

The Examiner citing In re Howarth 210 USPQ 689, 691 states "The same can be 
said if certain chemicals are required to make a compound or practice a chemical 
process." Firstly, the claims of the present invention are not directed to a chemical 
process. In re Howarth at 210 USPQ 689, 692, The United States Supreme Court 
citing Webster v. Higgins 105 US 580, 586 states an applicant "may begin at the point 
where his invention begins, and describe what he has made that is new and what it 
replaces of the old. That which is common and well known is as if it were written out in 
the patent and delineated in the drawings." In the present invention how to create a 
superconducting current is well not known in the art before Applicants' priority date. 
The process for making the compounds through which the apparatus of Applicants' 
claims carry the superconducting current is not new. What is new is Applicants' 
discovery that materials exist having a T c ^ 26°K. This is what Applicants are claiming, 
their discovery of an apparatus carrying a superconductive current at a T c > 26°K. In re 
Howarth states at 210 USPQ 689, 691 "an inventor need not ... explain every detail 
since he is speaking to those skilled in the art. What is conventional knowledge will be 
read into the disclosure." The Examiner has not shown what information is missing 
from Applicants' specification that is not known to person of skill in the art prior to 
Applicants' priority date that is necessary for a person of skill in the art to practice 
Applicants' claimed invention. Specific examples that are not specifically identified in 



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Applicants' specification that have T c £ 26°K that can be made according to Applicants' 
teaching are enabled according to the CCPA in In re Angstadt, supra. 

Applicants gratefully acknowledge the allowance of claims 1 1 3, 1 14, 
123-125, 135-138, 140, 151, 157, 167-169, 172-174, 177-179, 185, 186, 189-191, 196, 
197, 213-216, 220, 221, 224-226, 231, 258-260, 264, 265, 269, 270, 276, 277, 
280-282, 287, 288, 296-301, 304-307, 311, 312 and 315-317. 



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REMARKS IN REGARD TO REJECTIONS OVER THE ASAHI SHINBUM ARTICLE 



Claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 77-81, 84-86, 91-96, 103, 109, 
1 1 1 -1 1 6, 1 1 9, 1 20 and 1 24 were rejected in the Office Action dated July 30, 1 998 as 
obvious over the Asahi Shinbum Article. Only claim 123 was allowed in that Office 
Action. Since this was a rejection for obviousness over a single reference that means 
that a person of ordinary skill in the art as, according to the Examiner, enabled to 
practice the claimed invention from the teaching of the Asahi Shinbum Article and what 
is generally known to a person of ordinary skill in the art. The Examiner's rejection of 
claims for lack of enablement is inconsistent with the obviousness rejection over the 
Asahi Shinbum Article. 

Applicants acknowledge the withdrawal of the prior art rejection over Asahi 
Shinbum, International Satellite Edition (London), November 28, 1986 (hereinafter, "the 
Asahi Shinbum article") in view of the remarks in Applicants' prior response. The 
Examiner states at page 2 "Applicant has sufficiently demonstrated conception, 
diligence and reduction to practice of the instant invention before the publication date of 
the Asahi Shinbum article." 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 Applicant has sufficiently demonstrated conception before 
the publication date of the Asahi Shinbum article in the United States and diligence to a 
reduction to practice of the instant invention. 

The Examiner has not commented on nor rebutted Applicants' argument that in 
rejecting claims under 35 USC 103 over the Asahi Shinbum article, 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. 



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Thus in the Office Action of 7-30-98, the Examiner is stating that everything 
within Applicants' non-allowed 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 123, allowed in the Office Action of 7-30-98. Thus 
by stating that all the non-allowed claims are 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 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 allowed claim 123. Thus, it logically follows 
from the 35 USC 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. 



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The Swiss scientist are the inventors of the present application. Thus this clearly 
refers to Applicants work which was reported in Applicants' article 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 USC 103, the 
Examiner necessarily had to find that Applicants' article fully enabled their claims. 

In the Office Action the Examiner has not commented on nor rebutted these 
arguments which are in Applicants' prior responses, included in the Fifth Supplementary 
Amendment dated March 1 , 2004. The Examiner, therefore, must be taken to agree 
with Applicants argument in the prior response that their teaching has fully enabled all 
of their claims. 

At the beginning of Applicants' arguments in the Fifth Supplementary Amendment 
dated March 1 , 2004, in regard to the objections and rejection based on 35 USC 112, 
first paragraph, Applicants' have repeated these arguments, that is that the 35 USC 1 03 
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 response of March 1 , 2004 that their teaching has fully enabled all of 
their claims. 

The Examiners rejections under 35 USC 103 over the Asahi Shinbum articles 
have been maintained since the Office Action dated August 26, 1992 of the parent 
application. Thus the Examiner has maintained the view that all of Applicants' claims 
are fully enabled for about twelve years. Thus the specification provides an enabling 
disclosure of all of Applicants' claims. 



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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 
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 

i 



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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 Spectroscopy 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 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 S 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 



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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. 1 12, first paragraph as not enabled. 

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

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. 112, 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 S K which is about 8 
e K higher than the highest T c previously known. Even though others following 
Applicants' teaching identified compositions having T c more than 100°K greater than 



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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. 

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



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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 e 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 m 
26 S 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 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 



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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 USC 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 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 of the Fifth Supplemental Amendment dated March 1 , 2004] derives its 
enablement from Applicants' publication [Attachment 3 of the Fifth Supplemental 
Amendment dated March 1 , 2004] 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 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. 



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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 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. 



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MPEP 713.01 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. 




Daniel P. Morris, Ph.D.. es« 
Reg. No. 32,053 
Phone No. (914) 945-3217 
Fax No. (914) 945-3281 



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

Yorktown Heights, New York 10598 



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