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Full text of "USPTO Patents Application 08479810"

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APR 14 '05 14:59 FR IBM 9149453281 TO 917032991475 P. 03 

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. 

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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Serial No.: 08/479.810 Page 2 of 5 Docket: YO987-074BZ 



APR 14 '05 14:59 FR IBM 



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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 

c 

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. 

e 

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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Docket: YO987-074B2 



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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 
earliest convenience. 

MPEP 713.01 states in part as follows: 



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Docket: YO987-074BZ 



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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 
action. 



Respectfully submitted, 




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 



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Docket: YO987-074B2