Skip to main content

Full text of "USPTO Patents Application 08479810"

See other formats


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. 

Add claims 486 to 491 corresponding to claims 364, 365, 368, 380, 383, 386, 
389, 392, 394, 395, 396, 397, 398, 399, 400, 401 , 403, 407, 408, 409, 410, 41 1 , 412 
and 413, respectively, with the term "perovskite characteristic" changed to "perovskite 
related structure." 

Claim 32 has been amended to correct a typographical error. Claim 73 has 
been amended to change "including to "comprising". Claim 75 and claim 76 have been 
amended to be changed from a method claim to an apparatus claim. Claim 83 has 
been amended to change "method" to "apparatus". Claim 163 has been amended to 
change "including" to "comprising". Claim 189 has been amended to correct a 
typographical error. Claim 381 has been amended to change "including" to 
"comprising". 

The rare earth elements are Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, 
Er, Tm, Yb, and Lu. See the Handbook of Chemistry and Physics 59th edition 
1978-1979 page B262 in Appendix A. The transition elements are identified in the 
periodic table from the inside front cover of the Handbook of Chemistry and Physics in 
Appendix A. 



Serial No.: 08/479,810 



Page 137 of 157 



Docket: YO987-074BZ 



Claims 428-430 have been added and are directed to an apparatus comprising 
"a superconductive element comprising a superconductive composition, said 
superconductive composition comprising O and element selected from the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, 
Ho, Er, Tm, Yb, and Lu." 

The general principles of ceramic science referred to by Bednorz and Mueller in 
their patent application can be found in many books and articles published before their 
discovery, priority date and US Application filing date. An exemplary list of books 
referred to in the Declarations of Mitzi, Shaw, Dinger, Tsuei, and Duncombe describing 
the general principles of ceramic fabrication are: 

1) Introduction to Ceramics, Kingery et al., Second Edition, John 
Wiley & Sons, 1976, in particular pages 5-20, 269-319, 381-447 and 
448-513, a copy of which is with the Affidavit of Thomas Shaw submitted 
December 15, 1998. 

2) Polar Dielectrics and Their Applications, Burfoot et al., University of 
California Press, 1979, in particular pages 13-33, a copy of which is with 
the Affidavit of Thomas Shaw submitted December 15, 1998. 

3) Ceramic Processing Before Firing, Onoda et al., John Wiley & 
Sons, 1978, the entire book, a copy of which is with the Affidavit of 
Thomas Shaw submitted December 15, 1998. 

4) Structure, Properties and Preparation of Perovskite-Type 
Compounds, F. S. Glasso , Pergamon Press, 1969, in particular pages 
159-186, a copy of which is with the Affidavit of Thomas Shaw submitted 
December 15, 1998. 



Serial No.: 08/479,810 



Page 138 of 157 



Docket: YO987-074BZ 



These references are attached hereto as Appendixes B, C, D, and E, 
respectively. 

An exemplary list of articles applying the general principles of ceramic fabrication 
to the types of materials described in Applicants' specification are (these references are 
cited on applicant's 1449 form submitted August 5, 1987 and in PTO Form 892 in Paper 
#20, Examiner's Action dated August 8, 1990): 

1 ) Oxygen Defect K2NiF 4 - Type Oxides: The Compounds 
La2- x Sr x Cu04-x/2 + -, Nguyen et al., Journal of Solid State Chemistry 39, 
120-127(1981). 

2) The Oxygen Defect Perovskite BaLaiCus-Oia*, A Metallic 
Conductor, C. Michel et al., Mat. Res. Bull., Vol. 20, pp. 667-671, 1985. 

3) Oxygen Intercalation in Mixed Valence Copper Oxides Related to 
the Perovskite, C. Michel et al., Revue de Chemie Minerale, p. 407, 1984. 

4) Thermal Behaviour of Compositions in the Systems x BaTi0 3 + 
(1-x) Ba(Ln 05 B 05 ) 0 3 , V.S. Chincholkar et al., Therm. Anal. 6th, Vol. 2., p. 
251-6, 1980. 

These references are attached hereto as Appendixes F, G, H, and I, 
respectively. 

The specification in the paragraph bridging pages 6 and 7 states: 

These compositions can carry supercurrents (i.e., electrical currents in a 
substantially zero resistance state of the composition) at temperatures 
greater than 26°K. In general, the compositions are characterized as 
mixed transition metal oxide systems where the transition metal oxide can 



Serial No.: 08/479,810 



Page 139 of 157 



Docket: YO987-074BZ 



exhibit multivalent behavior. These compositions have a layer-type 
crystalline structure, often perovskite-like, and can contain a rare earth or 
rare earth-like element. A rare earth-like element (sometimes termed a 
near rare earth element is one whose properties make it essentially a rare 
earth element. An example is a group 1MB element of the periodic table, 
such as La. Substitutions can be found in the rare earth (or rare 
earth-like) site or in the transition metal sites of the compositions. For 
example, the rare earth site can also include alkaline earth elements 
selected from group IIA of the periodic table, or a combination of rare 
earth or rare earth-like elements and alkaline earth elements. Examples 
of suitable alkaline earths include Ca, Sr, and Ba. The transition metal 
site can include a transition metal exhibiting mixed valent behavior, and 
can include more than one transition metal. A particularly good example 
of a suitable transition metal is copper. As will be apparent later, Cu- 
oxide based systems provide unique and excellent properties as high Tc 
superconductors. An example of a superconductive composition having 
high Tc is the composition represented by the formula RE-TM-O, where 
RE is a rare earth or rare earth-like element, TM is a nonmagnetic 
transition metal, and 0 is oxygen. Examples of transition metal elements 
include Cu, Ni, Cr etc. In particular, transition metals that can exhibit 
multi-valent states are very suitable. The rare earth elements are typically 
elements 58-71 of the periodic table, including Ce, Nd, etc. 

In this passage the general formula is RE-TM-0 "where RE is a rare earth or rare 
earth-like element, TM is a nonmagnetic transition metal, and 0 is oxygen." This 
paragraph states "Substitutions can be found in the rare earth (or rare earth-like) site or 
in the transition metal sites of the compositions. For example, the rare earth site can 
also include alkaline earth elements selected from group IIA of the periodic table, or a 
combination of rare earth or rare earth-like elements and alkaline earth elements." 
Thus applicants teach that RE can be something other than an rare earth. For 
example, it can be an alkaline earth, but is not limited to a alkaline earth element. It can 



Serial No.: 08/479,810 



Page 140 of 157 



Docket: YO987-074BZ 



be an element that has the same effect as an alkaline earth or rare-earth element, that 
is a rare earth like element. Also, this passage teaches that TM can be substituted with 
another element, for example, but not limited to, a rare earth, alkaline earth or some 
other element that acts in place of the transition metal. 

The following table is compiled from the Table 1 of the Article by Rao 
(Attachment C of the response submitted August 4, 2000) and the Table of high T c 
materials from the "CRC Handbook of Chemistry and Physics" 2000-2001 Edition 
(Attachment 48 and 49 of the Fifth Supplementary Amendment data March 1 , 2004. ) 
An asterisk in column 3 indicated that the composition of column 1 does not come 
within the scope of the claims allowed in the Office Action of July 28, 2004. 



1 


2 


3 


4 


5 


6 


7 


# 


MATERIAL 


RAO 


HANDBOOK 

KJr CxlJMYL ot 

PHYSICS 




ALKALINE 

1? ADTII 

ELEMENT 


RARE 

ELEME 
NT 


1 

1 




■j 


y 


* 


N 


Y 


2 


La2-xSr x (Ba x )Cu0 4 


V 


V 




Y 


Y 


3 


La 2 Cai- x Sr x Cu206 


V 


V 




Y 


Y 


4 


YBa 2 Cu 3 0 7 


V 


V 




Y 


Y 


5 


YBa 2 Cu40 8 


V 


V 




Y 


Y 


6 


Y 2 Ba4Cu 7 Oi5 


V 






Y 


Y 


7 


Bi 2 Sr 2 Cu0 6 


V 


V 


* 


Y 


N 


8 


Bi 2 CaSr 2 Cu 2 0 8 


V 


V 




Y 


N 


9 


Bi 2 Ca 2 Sr 2 Cu 3 Oio 


V 


V 




Y 


N 


10 


Bi 2 Sr 2 (Lni. x Cex) 2 Cu 2 Oio 


V 


V 




Y 


Y 


11 


Tl 2 Ba 2 Cu0 6 


V 


V 




Y 


N 


12 


Tl 2 CaBa 2 Cu 2 0 8 


V 


V 




Y 


N 


13 


Tl 2 Ca 2 Ba 2 Cu 3 Oi 0 


V 


V 


* 


Y 


N 


14 


Tl(BaLa)CuO s 


V 


V 




Y 


Y 


15 


Tl(SrLa)CuO s 


V 






Y 


Y 


16 


(Tl 0 .5Pbo.5)Sr 2 Cu0 5 


V 


V 




Y 


N 


17 


TlCaBa 2 Cu 2 0 7 


V 


V 




Y 


N 


18 


(Tl 0 .5Pbo.5)CaSr 2 Cu 2 0 7 


V 


V 




Y 


N 


19 


TlSr 2 Y 0 .5Cao.5Cu 2 0 7 


V 


V 




Y 


Y 



Serial No.: 08/479,810 



Page 141 of 157 



Docket: YO987-074BZ 



20 


TlCa2Ba 2 Cu 3 08 


V 


V 


* 


Y 


N 


21 


(Tl 0 .5Pbo.5)Sr 2 Ca2Cu309 


V 


V 


* 


Y 


N 


22 


TlBa 2 (Lni. x Cex)2Cu 2 09 


V 


V 




Y 


Y 


23 


Pb 2 Sr 2 Lno.5Cao5Cu308 


V 






Y 


Y 


24 


Pb2(Sr,La) 2 Cu 2 06 


V 


V 




Y 


Y 


25 


(Pb,Cu)Sr 2 (Ln,Ca)Cu 2 0 7 


V 


V 




Y 


Y 


26 


(Pb,Cu)(Sr,Eu)(Eu,Ce)Cu 2 O x 


V 


V 




Y 


Y 


27 


Nd 2 -xCe x Cu0 4 


V 


V 


* 


N 


Y 


28 


Cai. x Nd x Cu0 2 


V 






Y 


Y 


29 


Sr,. x Nd x Cu0 2 


V 


V 




Y 


Y 


30 


Ca l . x Sr x Cu0 2 




V 


* 


Y 


N 


31 






V 


* 


Y 


N 


32 






V 


* 


N 


Y 


33 


NdBa 2 Cu 3 0 7 




V 




Y 


Y 


34 


SmBaSrCu0 7 




V 




Y 


Y 


35 


EuBaSrCu 3 0 7 




V 




Y 


Y 


36 


BaSrCu 3 0 7 




V 


* 


Y 


N 


37 


DyBaSrCu 3 0 7 




V 




Y 


Y 


38 


HuBaSrCu 3 0 7 




V 




Y 


Y 


39 


ErBaSrCu 3 0 7 (Multiphase) 








Y 


Y 


40 


TmBaSrCu 3 0 7 (Multiphase) 




V 




Y 


Y 


41 


YBaSrCu^O? 




V 


* 


Y 


Y 


42 


HgBa 2 Cu0 2 




V 


* 


Y 


N 


43 


HgBa 2 CaCu 2 0 6 
(annealed in 0 2 ) 






* 


Y 


N 


44 


HgBa 2 Ca 2 Cu 3 0 8 




V 


* 


Y 


N 


45 


HgBa 2 Ca 3 Cu4Oi 0 




V 


* 


Y 


N 



The first composition, La 2 Cu O** , has the form RE 2 Cu0 4 which is explicitly taught by 
applicants. The 8 indicates that there is a nonstoichiometric amount of oxygen. 



Applicants specification teaches at page 1 1 , line 19 to page 12, line 7: 

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) 
Serial No.: 08/479,810 Page 142 of 157 Docket: YO987-074BZ 



or rare earth-like elements and TM stands for a transition metal. In these 
compounds the RE portion can be partially substituted by one or more 
members of the alkaline earth group of elements. In these particular 
compounds, the oxygen content is at a deficit. For example, one such 
compound that meets this general description is lanthanum copper oxide 
La 2 Cu0 4 ... 

Compound number 27 of the composite table contains Nd and Ce, both rare 
earth elements. All of the other compounds of the composite table, except for number 
32, have O and one of the alkaline earth elements which as stated above is explicitly 
taught by applicants. (The rare earth elements are Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, 
Gd, Tb, Dy, Ho, Er, Tm, Yb, and Lu which as stated above is explicitly taught by 
applicants.) Compound 31 is a Bi0 3 compound in which TM is substituted by another 
element, here Bi, as explicitly taught by Applicants in the paragraph quoted above. 

The Examiner has given no reason for why Applicants are not entitled to claims 
covering what they have explicitly taught and enabled. The Examiner has merely 
deemed the non-allowed claims not enabled based on (1) the unsupported statement at 
page 6 of the Office Action 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," and (2) the Examiner statement 
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. 

Serial No.: 08/479,810 Page 143 of 157 Docket: YO987-074BZ 



As stated in Applicants' prior responses the basic theory of superconductivity has 
been known many years before Applicants' discovery. Notwithstanding, Applicants do 
not have to theoretically understand their invention to be entitled to claims that cover 
their teaching. Also, the existence of Li-T r O having a Tc less than 26°K does not mean 
that Applicants have not enabled Tc ^ 26°K. As stated in the application's prior 
responses, the CCPA in In re Angstadt has stated that if the experimentation needed to 
identify compositions that do not come with the scope of a claim is not "undue 
experimentation", then the claim is enabled. Also the reference to "a second 
non-conducting CuO phase" at page 14, line 18, does not mean that Applicants have 
not enabled the claims since along with this non-conducting phase existed a phase 
having Tc ^ 26°K. There is no statutory or decisional law basis for an Examiner 
"deeming" a patent claim not enabled. The Examiner has the burden of showing that 
based on the written description undue experimentation is need to practice the claimed 
invention. The Examiner has not meet this burden to establish a prima facia case of 
non enablement. 

In the composite table, compound numbers 7 to 10 and 31 are Bismuth (Bi) 
compounds. Compound number 12 to 22 are Thallium (Tl) compounds. Compound 
numbers 23 to 26 are lead (Pb) compounds. Compounds 42 to 45 are Mercury (Hg) 
compounds. Those compounds that do not come within the scope of an allowed claim 
are primarily the Bi, Tl, Pb and Hg compounds. These compounds are made according 
to the principles of ceramic science known prior to applicant's filing date. For example, 
Attachments J, K, L, and M contain the following articles: 

Attachment J - Phys. Rev. B. Vol. 38, No. 16, p. 6531 (1988) is directed to 
Thallium compounds. 

Attachment K - Jap. Joun. of Appl. Phys., Vol. 27, No. 2, p. L209-L210 
(1988) is directed to Bismuth (Bi) compounds. 



Serial No.: 08/479,810 



Page 144 of 157 



Docket: YO987-074BZ 



Attachment L - Letter to Nature, Vol. 38, No. 2, p. 226 (18 March 1993) is 
directed to Mercury (Hg) compounds. 

Attachment M - Nature, Vol. 336, p. 211 (17 November 1988) is directed 
to Lead (Pb) based compounds. 

The article of Attachment J (directed to Tl compounds) states at page 6531 , left 
column: 

The samples were prepared by thoroughly mixing suitable amounts of 
TI2O3, CaO, Ba0 2 , and CuO, and forming a pellet of this mixture under 
pressure. The pellet was then wrapped in gold foil, sealed in quartz tube 
containing slightly less than 1 atm of oxygen, and baked for approximately 
3hat^880°C. 

This is according to the general principles of ceramic science known prior to 
applicant's priority date. 

The article of Attachment K (directed to Bi compounds) states at page L209: 

The Bi-Sr-Ca-Cu-0 oxide samples were prepared from powder reagents 
of Bi 2 0 3 , S1CO3, CaC0 3 and CuO. The appropriate amounts of powders 
were mixed, calcined at 800-870 o C for 5 h, thoroughly reground and then 
cold-pressed into disk-shape pellets (20 mm in diameter and 2 mm in 
thickness) at a pressure of 2 ton.cm 2 . Most of the pellets were sintered at 
about 870°C in air or in an oxygen atmosphere and then furnace-cooled to 
room temperature 

This is according to the general principles of ceramic science known prior to 
applicant's priority date. 



Serial No.: 08/479,810 



Page 145 of 157 



Docket: YO987-074BZ 



The article of Attachment L (directed to Hg compounds) states at page 226: 

The samples were prepared by solid state reaction between stoichiometric 
mixtures of BaaCuO^ and yellow HgO (98% purity, Aldrich). The 
precursor Ba 2 Cu03^ was obtained by the same type of reaction between 
Ba0 2 (95% purity, Aldrich) and CuO (NormalPur, Prolabo) at 930°C in 
oxygen, according to the procedure described by De Leeuw et al. 6 . The 
powders were ground in an agate mortar and placed in silica tubes. All 
these operations were carried out in a dry box. After evacuation, the 
tubes were sealed, placed in steel containers, as described in ref. 3, and 
heated for 5 h to reach ~800"C. The samples were then cooled in the 
furnace, reaching room temperature after ~10 h. 

This is according to the general principles of ceramic science known prior to 
applicant's priority date. 

The article of Attachment M (directed to Pb compounds) states at page 21 1 , left 
column: 

The preparative conditions for the new materials are considerably more 
stringent than for the previously known copper-based superconductors. 
Direct synthesis of members of this family by reaction of the component 
metal oxides or carbonates in air or oxygen at temperatures below 900°C 
is not possible because of the stability of the oxidized SrPb0 3 -based 
perovskite. Successful synthesis is accomplished by the reaction of PbO 
with pre-reacted (Sr, Ca, Ln) oxide precursors. The precursors are 
prepared from oxides and carbonates in the appropriate metal ratios, 
calcined for 16 hours (in dense Al 2 0 3 crucibles) at 920-980°C in air with 
one intermediate grinding. 



Serial No.: 08/479,810 



Page 146 of 157 



Docket: YO987-074BZ 



This is according to the principles of ceramic science known prior to applicant's 
priority date. 

In Attachment U, there is a list of perovskite materials from pages 191 to 207 in 
the book "Structure, Properties and Preparation of Perovskite-Type Compounds" by F. 
S. Galasso, published in 1969, which is Attachment E hereto. This list contains about 
300 compounds. Thus, what the term "Perovskite-type" means and how to make these 
compounds was well known to a person of ordinary skill in the art in 1969, more than 17 
years before the Applicants' priority date. 

This is clear evidence that a person of skill in the art knows (prior to Applicants' 
priority date) how to make the types of materials in Table 1 of the Rao Article and the 
Table from the Handbook of Chemistry and Physics as listed in the composite table 
above. 

The standard reference "Landholt-Bornstein", Volumn 4, "Magnetic and Other 
Properties of Oxides and Related Compounds Part A" (1970) lists at page 148 to 206 
Perovskite and Perovskite-related structures. (See Attachment N). Section 3.2 starting 
at page 190 is entitled "Descriptions of perovskite-related structures". The German title 
is "Perowvskite-ahnlche Structures". The German word "ahnliche" can be translated in 
English as "like". The Langenscheidt's German-English, English-German Dictionary 
1970, at page 446 translates the English "like" as the German "ahniche". (See 
Attachment O). Pages 126 to 147 of Attachment N describes "crystallographic and 
magnetic properties of perovskite and perovskite-related compounds", see title of 
Section 3 at page 126. Section 3.2.3.1 starting at page 192 of "Landholt-Bornstein" 
Vol. 4 (See Attachment N) is entitled "Bismuth Compounds". Thus Bismuth 
perovskite-like compounds and how to make them were well known more than 16 years 
prior to Applicants' priority date. Thus the "Landholt Bornstein" book published in 1970, 
more than 16 years before Applicants' priority date, shows that the term 
"perovskite-like" or "perovskite related" is understood by persons of skill in the art prior 
to Applicants' priority date. Moreover, the "Landholt-Bornstein" book cites references 



Serial No.: 08/479,810 



Page 147 of 157 



Docket: YO987-074BZ 



for each compound listed. Thus a person of ordinary skill in the art knows how to make 
each of these compounds. Pages 376-380 of Attachment N has figures showing the 
crystal structure of compounds containing Bi and Pb. 

The standard reference "Landholt-Bornstein, Volume 3, Ferro- and 
Antiferroelectric Substances" (1969) provides at pages 571-584 an index to 
substances. (See Attachment P). This list contains numerous Bi and Pb containing 
compounds. See, for example pages 578 and 582-584. Thus a person of ordinary skill 
in the art would be motivated by Applicants' teaching to fabricate Bi and/or Pb 
containing compounds that come within the scope of the Applicants' claims. 

The standard reference "Landholt-Bornstein Volume 3 Ferro- and 
Antiferroelectric Substances" (1969) (See Attachment P) at page 37, section 1 is 
entitled "Perovskite-type oxides." This standard reference was published more than 17 
years before Applicants' priority date. The properties of perovskite-type oxides are 
listed from pages 37 to 88. Thus the term perovskite-type was well known and 
understood by persons of skill in the art prior to Applicants' priority date and more than 
17 years before Applicants' priority date persons of ordinary skill in the art knew how to 
make Bi, Pb and many other perovskite, perovskite-like, perovskite-related and 
perovskite-type compounds. 

At page 14, line 10-15, Applicants' state "samples in the Ba-La-Cu-0 system, 
when subjected to x-ray analysis, revealed three individual crystallographic phases 
V.12. a first layer-type perovskite-like phase, related to the K2NiF 4 structure ..." 
Applicants' priority document EP0275343A1 is entitled "New Superconductive 
Compounds of the K2N1F4 Structural Type Having a High Transition Temperature, and 
Method for Fabricating Same." The book "Structure and Properties of Inorganic Solids" 
by Francis S. Galasso, Pergamon Press (1969) at page 190 lists examples of Tallium 
(Tl) compounds in the K2NiF 4 structure. (See Attachment Q). Thus based on 
Applicants' teachings, a person of ordinary skill in the art would be motivated to 
fabricate Thallium based compounds to test for high Tc superconductivity. 



Serial No.: 08/479,810 



Page 148 of 157 



Docket: YO987-074BZ 



The book "Crystal Structures" Volume 4, by Ralph W. G. Wyckoff, Interscience 
Publishers, 1960 states at page 96 "This structure, like these of Bi 4 Ti 2 0i 2 (IX, F12) and 
Ba Bi 4 Ti 4 0 4 (XI, 13) is built up of alternating Bi 2 0 2 and perovskite-like layers." Thus 
layer of perovskite-like Bismuth compounds was well known in the art in 1960 more 
than 26 years before Applicants' priority date. (See Attachment R). 

The book "Modern Oxide Materials Preparation, Properties and Device 
Applications" edited by Cockayne and Jones, Academic Press (1972) states (See 
Attachment S) at page 155 under the heading "Layer Structure Oxides and Complex 
Compounds": 

"A large number of layer structure compounds of general formula (Bi 2 0 2 ) 2+ 
(A x .iB x 0 3 x + i) 2 ' have been reported (Smolenskii et al. 1961; Subbarao, 
1962), where A = Ca, Sr, Ba, Pb, etc., B = Ti, Nb, Ta and x = 2, 3, 4, or 5. 
The structure had been previously investigated by Aurivillius (1949) who 
described them in terms of Alternate (Bi 2 0 2 ) 2+ layers and perovskite layers 
of oxygen octahedra. Few have been found to be ferroelectric and 
include SrBi 2 Ta 2 0 9 (T c = 583°K), PbBi 2 Ta 2 0 9 (T c = 703°K), BiBi 3 Ti 2 TiOi 2 or 
Bi 4 Ti 3 0i2 (T c = 948°K), Ba 2 Bi 4 Ti 5 0i 8 (T c = 598°K) and Pb 2 Bi 4 Ti 5 0i 8 (T c = 
583°K). Only bismuth titanate Bi 4 Ti 3 0i 2 has been investigated in detail in 
the single crystal form and is finding applications in optical stores 
(Cummins, 1967) because of its unique ferroelectric-optical switching 
properties. The ceramics of other members have some interest because 
of their dielectric properties. More complex compounds and solid 
solutions are realizable in these layer structure oxides but none have 
significant practical application." 

Thus the term layered oxides was will known and understood prior to Applicants' 
priority date. Moreover, layered Bi and Pb compounds were well known in 1972 more 
than 15 years before Applicants' priority date. 



Serial No.: 08/479,810 



Page 149 of 157 



Docket: YO987-074BZ 



The standard reference "Landholt-Bornstein, Volume 3, Ferro and 
Antiferroelectric Substances" (1969) at pages 107 to 1 14 (See Attachment T) list 
"layer-structure oxides" and their properties. Thus the term "layered compounds" was 
well known in the art in 1 969 more than 1 6 years prior to Applicants' priority date and 
how to make layered compounds was well known prior to applicants priority date. 

Layer perovskite type Bi and Pb compounds closely related to the Bi and Pb high 
T e compounds in the composite table above have been known for some time. For 
example, the following is a list of four articles which were published about 35 years prior 
to Applicants' filing date: 

(1 ) Attachment V - "Mixed bismuth oxides with layer lattices", B. 
Aurivillius, Arkiv Kemi 1, 463, (1950). 

(2) Attachment W - "Mixed bismuth oxides with layered lattices ", B. 
Aurivillius, Arkiv Kemi 1, 499, (1950). 

(3) Attachment X - "Mixed bismuth oxides with layered lattices ", B. 
Aurivillius, Arkiv Kemi 2, 519, (1951). 

(4) Attachment Y - "The structure of Bi 2 Nb0 5 F and isomorphous 
compounds", B. Aurivillius, Arkiv Kemi 5, 39, (1952). 

These articles will be referred to as Aurivillius 1 , 2, 3 and 4, respectively. 

Attachment V (Aurivillius 1), at page 463, the first page, has the subtitle "I. The 
structure type of CaNb 2 Bi 2 0 9 . Attachment V states at page 463: 

X-ray analysis ... seemed to show that the structure was built up of Bi 2 OV 
layers parallel to the basal plane and sheets of composition Bi 2 Ti 3 O 2 i 0 ". 
The atomic arrangement within the Bi 2 Ti 3 O 2 i 0 " sheets seemed to be the 

Serial No.: 08/479,810 Page 150 of 157 Docket: YO987-074BZ 



same as in structure of the perovskite type and the structure could then 
be described as consisting of Bi 2 OV layers between which double 
perovskite layers are inserted. 

Attachment V (Aurivillius 1) at page 464 has a section entitled "PbBi 2 Nb 2 0 9 
Phase". And at page 471 has a section entitled "Bi 3 NbTi0 9 ". And at page 475 has a 
table of compounds having the "CaBi 2 Nb 2 09 structure" listing the following compounds 
Bi 3 NbTi0 9 , Bi 3 TaTi0 9 , CaBi 2 Nb 2 0 9 , SrBi2Nb 2 0 9l SrBi 2 Ta 2 0 9 , BaBi 2 Nb 2 0 9 , PbBi 2 Nb 2 0 9 , 
NaBi 5 Nb 4 0i8, KBi 5 Nb 4 0i8. Thus Bi and Pb layered perovskite compounds were well 
known in the art about 35 years prior to Applicants' priority date. 

Attachment W (Aurivillius 2) at page 499, the first page, has the subtitle "II 
Structure of Bi 4 Ti 3 0i 2 ". And at page 510, Fig. 4 shows a crystal structure in which "A 
denotes a perovskite layer BfeTbOV. C Bi 2 OV layers and B unit cells of the 
hypothetical perovskite structure BiTi0 3 . 

Attachment X (Aurivillius 3) has at page 519, the first page, the subtitle "in 
Structure of BaBi 4 Ti 4 0i 5 ". And in the first paragraph on page 519 states referring to the 
articles of Attachments V (Aurivillius 1), and W (Aurivillius 2) "X ray studies on the 
compounds CaBi 2 Nb 2 0 9 [the article of Attachment V] and Bi 4 Ti 3 0i 2 [the article of 
Attachment W] have shown that the comparatively complicated chemical formulae of 
these compounds can be explained by simple layer structures being built up from 
Bi 2 OY layers and perovskite layers. The unit cells are pictured schematically in Figs. 
1a and 1c." And Fig. 4 at page 526 shows "One half of a unit cell of BaBi 4 Ti 4 0i 5 . A 
denotes the perovskite region and B the Me 2 0 4 layer" where Me represents a metal 
atom. 

Attachment Y (Aurivillius 4) is direct to structures having the Bi 3 Ni 0 O 3 F structure. 

Attachment AA is a list of Hg containing solid state compounds from the 1989 
Powder Diffraction File Index. Applicants do not have available to them an index from 

Serial No.: 08/479,810 Page 151 of 157 Docket: YO987-074BZ 



prior to Applicants' priority date. The Powder Diffraction File list is a compilation of all 
known solid state compounds with reference to articles directed to the properties of 
these compositions and the methods of fabrication. From Attachment AA it can be 
seen, for example, that there are numerous examples of Hg based compounds. 
Similarly, there are examples of other compounds in the Powder Diffraction File. A 
person of ordinary skill in the art is aware of the Powder Diffraction File and can from 
this file find a reference providing details on how to fabricate these compounds. Thus 
persons of ordinary skill in the art would be motivated by Applicants' teaching to look to 
the Powder Diffraction File for examples of previously fabricated composition expected 
to have properties similar to those described in Applicants' teaching. 

In the paragraph bridging pages 100-102 of the 5th Supplementary Amendment 
dated: March 1 , 2004 Applicants state in regard to the book "Copper Oxide 
Superconductors" by Charles P. Poole, Jr., Timir Datta and Horacio A. Farach, John 
Wiley & Sons (1998), referred to herein as Poole 1988: 

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



Serial No.: 08/479,810 



Page 152 of 157 



Docket: YO987-074BZ 



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



Charles Poole et al. published another book in 1995 entitled "Superconductivity" 
Academic Press which has a Chapter 7 on "Perovskite and Cuprate Crystallographic 
Structures". (See Attachment Z). This book will be referred to as Poole 1995. 



At page 179 of Poole 1995 states: 



V. PEROVSKITE-TYPE SUPERCONDUCTING STRUCTURES 



Serial No.: 08/479,810 



Page 153 of 157 



Docket: YO987-074BZ 



In their first report on high-termperature superconductors Bednorz and 
Mailer (1986) referred to their samples as "metallic, oxygen-deficient ... 
perovskite-like mixed-valence copper compounds." Subsequent work has 
confirmed that the new superconductors do indeed possess these 
characteristics. 

Thus Poole 1988 states that the high T c superconducting materials "are not 
difficult to synthesize" and Poole 1995 states that "the new superconductors do indeed 
possess [the] characteristics" that Applicants' specification describes these new 
superconductors to have. Therefore, as of Applicants' priority date persons of skill in 
the art were enabled to practice Applicants' invention to the full scope that it is presently 
claimed, including in the claims that are not allowed. 

In support of the Examiner's view that term such as "type" and "like" are 
indefinite under §112, the Examiner cites: Ex parte Remark, 15 USPQ 2d 1498, 1500 
(BPA1 1990); Ex parte Kristensen, 10 USPQ 2d 1701 , 1703 (BPA1 1989); Ex parte Attig, 
7 USPQ 2d 1092, 1093 (BPA1 1988); and Ex 'parte Copenhaver, 109 USPQ 118 
(POBA 1955). 

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

Ex parte Kristensen is not on point since the Board found the term "similar" in the 
phase "for high pressure cleaning units or similar apparatus" in a claim indefinite under 
§112, second paragraph. Applicants do not use the terminology "or similar". The 
Board held with respect to the second paragraph of §1 12, the inquiry is "to determine 
whether the claims do, in fact, set out and circumscribe a particular area with a 
reasonable degree of precision and particularity". In the present application the terms 
"perovskite-like", "perovskite-type", "layered-like", "layered-type" and "rare-earth-like" are 
terms used in the art and these are well known and understood by a person of skill in 
the art. 



Serial No.: 08/479,810 



Page 154 of 157 



Docket: YO987-074BZ 



Ex parte Attig is also not on point. The Board found the term "ZSM-5-type" 
indefinite under §112, second paragraph, because the prior art cited during prosecution 
gave different meanings to the term "ZSM-5-type". But the Board did not find the use of 
the term "type" in a claim per se indefinite. The Board says "FJ]t is true that the zeolites 
have been defined in various patents and claimed with the terminology "ZSM-5-type". 
However, clearly the art of record in this case, all of it cited by applicants themselves, in 
the aggregate serve to render the term indefinite rather that definite". 7 USPQ 1 092, 
1093. The Examiner has not shown that the terms "perovskite-like", "perovskite-type", 
"layered-like", "layered-type" and "rare-earth-like" as used in applicants claims have 
different meanings in different cited prior art. To the contrary, Applicants have shown 
that these terms have a uniform meaning in the transition metal oxide high T c art. 

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

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

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

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



Serial No.: 08/479,810 



Page 155 of 157 



Docket: YO987-074BZ 



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. 

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. 



Serial No.: 08/479,810 



Page 156 of 157 



Docket: YO987-074BZ 



MAR 08 '05 13:34 FR IBM 9149453281 TO 84941475 P. 02/02 J, 

)''■' 



Respectfully submitted, j 




Dr. Daniel P. Morris, Esq. 
Reg. No. 32,053 

(914)945-3217 % 



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

Yorktown Heights, New York 10598 



Serial No.: 08/479,810 



Page 157 of 157 



Docket: YO987-074BZ 

** TOTAL PAGE. 02 **