Skip to main content

Full text of "USPTO Patents Application 08479810"

See other formats


■Tn re Patent Application of 
Applicants: Bednorz et al. 
Serial No.: 08/479,810 
Filed: June 7, 1995 



IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 



Date: January 28, 2005 
Docket: YO987-074BZ 
Group Art Unit: 1751 
Examiner: M. Kopec 



For: NEW SUPERCONDUCTIVE COMPOUNDS HAVING HIGH TRANSITION 
TEMPERATURE, METHODS FOR THEIR USE AND PREPARATION 

Commissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 



The Office Action dated July 28, 2004, does not respond to all the arguments 
and evidence presented by the Applicants in rebuttal of the Examiner's rejection of 
Applicants' claims under 35 USC 112, first paragraph, for lack of enablement. If the 
Examiner does not allow all of Applicants' claims in response to Applicants' Amendment 
submitted January 28, 2005, Applicants' petition for a non-final office action providing 
the Examiner's reasons for why all of Applicants' arguments and evidence (in particular 
the arguments and evidence to which the Examiner did not respond in the in the Office 
Action of July 28, 2004) do not place Applicants' application in condition for allowance. 



PETITION UNDER 37 CFR 1.181 or 1.182 



Sir: 



YO987-074BZ 



Page 1 of 3 



08/479,810 



DETAILED REASONS FOR PETITION 



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 of 
enablement 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 unresponded 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. 



YO987-074BZ 



Page 2 of 3 



08/479,810 



2. The Handbook of Chemistry and Physics Table of High Tc Superconductors 
referred to at page"! 76, 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 1 79 to 1 83 of the Fifth 
Supplementary Amendment dated March 1 , 2004. 

4. Applicants' remarks on why Rejections under 35 USC 1 02 and 103 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. 

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




Daniel P. Morris, Ph^tf., Esq. 
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 1 0598 



YO987-074BZ 



Page 3 of 3 



08/479,810