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(!) United States Patent and Trademark Office 

Commissioner for Patents 
United States Patent and Trademark Office 
P.O. Box 1450 
Alexandria, VA 22313-1450 


0 k|65" 

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 
And Preparation 

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 ยง 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 
IBM Corporation 
Intellectual Property Law 
P.O. Box 218 

Yorktown Heights, New York 10598