(!) United States Patent and Trademark Office
Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
In re Application of
Bednorz et al.
Serial Number: 08/479,810
Filed: June 7, 1995
For: New Superconductive Compounds Having High
Transition Temperature Methods For Their Use
This is a decision on the petition filed January 31, 2005, requesting that if the next action by the
Examiner is not an allowance 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 do not place Applicants' application in condition for
The petition is considered a timely submission under 37 CFR 1.181.
Applicants filed six supplemental responses. The last supplement response was on March 3, 2004.
The examiner issued a non-final office action in response to the filed supplemental responses on
July 28, 2004. Applicants assert that the Office action did not respond to all of Applicants
arguments and factual data as to why all of Applicants claims are fully enabled.
Under present practice, second or any subsequent actions on the merits shall be final, except where
the examiner introduces a new ground of rejection that is neither necessitated by applicant's
amendment of the claims nor based on information submitted in an information disclosure
statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR
1.17(p). A second or any subsequent action on the merits in an application should not be made final
if it includes a rejection, on prior art not of record, of any claim amended to include limitations,
which should reasonably have been expected to be claimed. See MPEP § 904 et seq.
The Examiner has not issued an Office Action in response to Applicants' reply. The request for
relief under the filed petition is premature and not timely. A petition request on a premature final
would be considered after the Examiner has issued a final action.
The petition is DISMISSED,
Jacqueline M. Stone, Director
Technology Center 1700
Chemical and Materials Engineering
Dr. Daniel P. Morris
Intellectual Property Law
P.O. Box 218
Yorktown Heights, New York 10598