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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.
In regards to the five affidavits of Mitzi, Dinger. Shaw Tsuei and Duncombe the
Examiner states at page 13 last paragraph:
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.
For the reasons given in piror responses the affidavit of Duncombe provides
specific factual evidence to support he conclusion that all superconductors based on
applicants' work behave in the same way and that one skilled in the art can make those
superconductors without undue experimentation based on applicants* teaching.
In further support of Applicants' position that their teaching fully enables their
claimed invention Applicants are submitting herewith another affidavit of Thomas Shaw.
The attached affidavit of Shaw clearly shows factual evidence that all superconductors
based on the application of applicants' work behave in the same way and that one
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skilled in the art can make those superconductors without undue experimentation. The
attached affidavits of Dinger and Tsuei clearly shows that once a person of skill in the
art knows of Applicants* work the other known superconductors based on applicants
work can be made following applicants' teaching and the known principals of ceramic
science. Moreover, from the affidavits of Dinger and Tsuei it is clear that the terms
""perovskite-like", "perovskite-type", "layered-like" and "layered-type" were terms used in
the ceramic arts long before applicants' priority date. Thus, there terms were well ^
understood by persons of ordinary skill in the art long before applicants priority date.
Moreover, the term "rare earth like" or "near-rare-earth" element is understood
from Applicants teaching since prior to Applicants' priority date the term rare earth
included the 18 elements of atomic number 21. 39, 57, 89 and 58 to 71. Since there
are only about 106 elements, the term rare-earth-like or near rare earth comes from the
remaining 88 elements. At page 7 lines 8-11 of Applicants' specification states "a rare
earth-like element (sometime termed rare earth element) is one whose properties make
it essentially a rare earth element." Thus it is within the skill of the art to determine
which of the approximately 88 elements have a property which make it essentially a \r
rare earth element in a high Tc superconductor according to Applicants' teaching.
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.
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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
MPEP 713.01 states in part as follows:
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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
Reg. No. 32,053
Intellectual Property Law Dept.
P.O. Box 218
Yorktown Heights, New York 10598
Serial No.: 08/479,810
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