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Patents, P.O. flox 1450,/lexandrja, VA 22313-1450' [37 CFR 1.8(a)] 



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Typed or printed Daniel P. Morris 



Application Number 

08/479,810 



Filed 

June 7, 1995 



First Named Inventor 

Bednorz 



Art Unit 

1751 



Exa miner 

M. Kopec 



Applicant requests review of the final rejection In the above-Identified application. No amendments are being filed 
with this request. 



This request Is being filed with a notice of appeal. 



The review Is requested for the reason(s) stated on the attached sheet(s). 
Note: No more than Ave (5) pages may be provided. 



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Daniel P. Morris 



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914-945-3217 



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April 19, 2006 



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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

& Patent Application of Date: April 20, 2006 

Applicants: Bednorz et al. Docket: YO987-074BZ 

Serial No.: 08/479,810 Group Art Unit: 1751 

Filed: June 7, 1995 Examiner: M. Kopec 

For: NEW SUPERCONDUCTIVE COMPOUNDS HAVING HIGH TRANSITION 
TEMPERATURE, METHODS FOR THEIR USE AND PREPARATION 

Mail Stop: AF 

Commissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 



PRE-APPEAL BRIEF 

Sir: 

This Pre-Appeal Brief is submitted in response to the Final Office Action dated 
October 20, 2005 and the Advisory Action dated December 28, 2005, please consider the 
following: 

Please charge any fee necessary to enter this paper and any previous paper to 
deposit account 09-0468. 

Since a three month extension of time fee has already been paid, no extension of 
time fee is necessary to enter this paper. 



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I - CLAIM OF PRIORITY TO PRIORITY DOCUMENT 

Applicants request the claim of priority in their paper submitted 04/27/1998 be granted. The Examiner 

did not respond to applicant's arguments in support thereof in responses of 08/02/1999, 03001/2004 

and other responses. Or, applicants request entry of a statement that this issue does not have to be 

decided to resove the issues in this appeal and thus the denial of priority is withdrawn. 

II - REJECTIONS UNDER 35 USC 112 f 2 FOR INDEFINITENESS 

Claims 1-5, 7-11, 17, 19, 23, 28, 52-54, 59, 65, 72, 77-81, 86, 87, 94, 96-108, 144, 145, 149, 150, 

152-156, 158-161, 165, 166, 170, 171, 175, 176, 180, 181, 235, 236, 240, 241-252, 257, 261, 262, 

266, 267, 271, 272, 361-413, 414-427, 433, 434, 446, 448, 466-495 and 537-539 are rejected under 35 

U.S.C. 3 1 12, 2nd % as indefinite. The Examiner states at page 4 in the Rejection mailed 7/28/04: 

"The terms "layer-type", "perovskite-like", "rare-earth-like" and "near-rare earth" (claim 65) are 
vague and confusing. See MPEP 21 73.05. The question arises: What is meant by these terms? 
The terms "layer-type" and "perovskite-like" are unclear because the "type" or "like" terms are 
deemed to be indefinite. Terms such as "like", "similar", and "type" are indefinite. Additionally, 
the newly added claims terminology "comprising a rare-earth characteristic", "comprising a layer 
characteristic" and "comprising a perovskite characteristic" are considered indefinite. The terms 
are considered identical in scope to the previously rejected terminology and are indefinite for the 
same reasons. " 

Applicants respectfully disagree. Since applicants have shown that the USPTO routinely issues 
patents with claims having elements containing the language as "like," "similar" and "type," these 
terms are not only not considered per se indefinite but are accepted as definite by the USPTO. 
Applicant's response of 03-01-2004 (received by USPTO 03-03- 2004, entitled "Fourth 
Supplementary Amendment") lists claims from 81 issued US patents that use the terms 
"perovskite-like", "rare-earth-like", "layer-like" and "layer-type" which are the same terms rejected as 
indefinite by the Examiner. MPEP 2173.05(b) "Relative Terminology" states "[t]he fact that claim 
language, including terms of degree, may not be precise, does not automatically render the claim 
indefinite under 35 U.S.C. 112, second paragraph. ... Acceptability of the claim language depends on 
whether one of ordinary skill in the art would understand what is claimed, in light of the specification." 
The Examiner has presented no reasons why "one of ordinary skill in the art would [not] understand 
what is claimed." Attachments A of applicants' response of 1 1-28-1997 (received by USPTO 
12-2-1997) (Response -1 1-28-97) identifies 68 issued US patents using the term "rare earth like" or 
"rare earth and the like". Attachment B of Response -1 1-28-97 identifies 4 issued US patents 
containing the claims term "rare earth like." Attachment C of Response -1 1-28-97 identifies 107 
issued US patents containing the term "perovskite-like" Attachment D of Response -1 1-28-97 
identifies 2 issued US patents containing the claim term "perovskite-like." Attachment E of Response 
-1 1-28-97 identifies a section of a book "Structure of Perovskite-type Compounds." Attachment F of 
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Response -1 1-28-97 identifies a section of a book entitled "D- Perovskite-type Superconducting 
Structures." Attachment L of Response -1 1-28-97 identifies a section of a book entitled which states 
"layered-type superconductors with transition temperatures in the reasonable high range from 4 to 7 K 
have been known for a long time." Attachment M of Response -1 1-28-97 identifies more than 1000 
patents contain the term ceramic within one word of like. At page 5 of the Office action of 10-28-2004 
the Examiner states "Each patent is considered on its own merits. ... In the present case; however, the 
term "rare-earth-like" and "perovskite-like" are unclear." However, the Examiner has not stated why 
these terms are in the Examiner's view "unclear", but the identical terms in the cited issued patents are 
not unclear. The Examiner provides no standard against which to make such a determination. Thus the 
Examiner has not made a prima facie case of indefiniteness. Attachment E of the "FIRST 
SUPPLEMENTAL AMENDMENT" submitted 03-01-2005 contains a copy of the book "Structure, 
Properties and Preparation of Perovskite-Type Compounds, F. S. Galasso , Pergamon Press, 1969, in 
particular pages 159-186, published about 17 years before applicants' priority date. The standard 
reference published about 17 years before applicants priority date "Landholt-Bornstein", Volume 4, 
"Magnetic and Other Properties of Oxides and Related Compounds Part A" (1970) lists at page 148 to 
206 Perovskite and Perovskite-related or Perovskite-like structures. (See Attachment N and O of the 
"FIRST SUPPLEMENTAL AMENDMENT" submitted 03-01-2005). Section 3.2 starting at page 190 
is entitled "Descriptions of perovskite-related structures", which is also translated as Perovskite-like 
structures. The Affidavit of Shaw of 04-14-2005 ; Affidavit of Dinger of 04-04-2005 and Affidavit of 
Tsuei of 04-04-2005 (DST AFFIDAVITS) contain additional objective evidence that the terms found 
indefinite by the Examiner were used and understood by persons of skill in the art prior to applicants 
priority date. For example, the term "rare earth like," an equivalent to a rare earth element, is a 
defined term in applicants specification - see f 14 of DST AFFIDAVITS. The term "layered" is a term 
of the art - see Us 38-41, 48-49 of DST AFFIDAVITS. The term "perovskite-like" is term of art - see 
Us 32-36, 47-48 of DST AFFIDAVITS, defined in The Examiner has not responded to this objective 
evidence that persons of skill in the art understand the claims terms rejected as indefinite. 

The Examiner further states at page 4 of the Rejection mailed 7/28/04 in the footnote without 
comment: "See Ex parte Remark, 15 USPQ 2d 1498, 1500 (BPAI 1990); Ex parte Kristensen, 10 
USPQ 2d 1701, 1703 (BPAI 1989); Ex parte Attig, 7 USPQ 2d 1092, 1093 (BPAI 1988); and Ex parte 
Copenhaver, 109 USPQ 118 (POBA 1955). " Applicants have addressed the holding of these 
decisions in pp 106-108 of applicants response dated 03-01-2004 - received by USPTO 03-03-2004 
entitled "Fifth Supplementary Amendment" and have given extensive reasons why they do not apply in 
the present application. The Examiner has provided no rebuttal of these comments. The Examiner had 

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made no attempt to show to satisfy the Examiner's burden that one of ordinary skill in the art would 

not understand the terms. Thus the rejections for indefiniteness should be revered. 

Ill - REJECTIONS UNDER 35 USC 112 f 1 FOR LACK OF ENABLEMENT 

Claims 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115, 122, 126-134, 139, 141-143, 146-149, 
153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217-219, 222, 223, 227-230, 232-234, 
237-240, 244-246, 253-257, 268, 273-275, 278, 279, 283-286, 289, 295, 302, 303, 308-310, 313, 314, 
318-329, 331-334, 337-345, 347-357, 359-374, 376, 379, 380, 382, 383, 389, 394, 395, 402, 407, 408, 
414-501, 508-510, 516-543 are rejected under 35 U.S.C. 112 H 1, as not enabled. 

Ill (a) REJECTIONS UNDER 35 USC 112 1 FOR LACK OF ENABLEMENT - 

CLAIMS IN MEANS PLUS FUNCTION FORM 

Claims in means plus function form are 438 to 465. MPEP § 2181 Part II states "35 U.S.C. JJ2, sixth 

paragraph states that a claim limitation expressed in means-plus-function language 'shall be construed 

to cover the corresponding structure described in the specification and equivalents thereof.'" The 

Examiner has allowed claims 113, 114, 123-125, 135-138,140,151, 157, 167-169, 172-174, 177-179, 

185, 186, 189-191, 197, 213-216, 220, 221 , 224-26, 231, 258-260,, 264, 265, 269, 270, 276, 277, 

280-282, 287, 288, 296-301, 304-307, 31 1, 312, 315-317, 502-507 stating these claims are allowed 

"because the specification, [is] enabling for compositions comprising a transition metal oxide 

containing at least a) an alkaline earth element or Group IIA element and b) a rare-earth element or 

Group IIIB element" Thus since the Examiner has allowed claims to specific examples described in 

the specification, the claims in means plus function form can not be rejected as not being enabled and 

the rejection should be reversed. 

Ill (b) REJECTIONS UNDER 35 USC 112 ^[ 1 FOR LACK OF ENABLEMENT 

CLAIMS IN MEANS PLUS FUNCTION FORM 

At page 6 of the Office Action dated October 20, 2005 the Examiner states: 

"The examiner does not deny that the instant application includes "all know principles of ceramic 
science", or that once a person of skill in the art knows of a specific type of composition which is 
superconducting a t greater than or equal to 26K, such a person of skill in the art, using the 
techniques described in the application, which included all principles of ceramic fabrication known 
at the time the application was initially filed, can make the known superconductive compositions. 
The numerous 1.132 declarations, such as those ofMitzi, Shaw, Dinger and Duncombe, and the 
Rao article, are directed to production of know superconductive materials. " 
Thus the Examiner agrees that "a person of skill in the art, using the techniques described in the 

application, which included all principles of ceramic fabrication known at the time the application was 

initially filed, can make the known superconductive compositions." 

At page 6 of the Office Action dated October 20, 2005 the Examiner further states: 

"What is not a "matter of routine experimentation" in this complex, unpredictable art is arriving at 
superconductive compositions outside the scope of the allowable claims (e.g., subsequently 



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discovered BSCCO or Tl-systems as disclosed in Rao (see response filed 3/8/05, pages 141-143). 
The examiner respectfully maintains that the instant disclosure has not provided sufficient 
guidance to produce such materials. " 
This statement is clearly inconsistent with In re Angstadt 190 USPQ 219 and In re Wands 8 USPQ2d 

1400 which held that to satisfy the first paragraph of 35 USC 1 12 it is only necessary that a person of 

skill in the art not exercise undue experimentation to make samples that come within the scope of the 

Applicants' claims. The Examiner has provided no objective indication that undue experimentation 

was needed to make the subsequently fabricated systems disclosed in Rao. Applicants have clearly 

shown that only routine experimentation is needed to fabricate other samples to practice Applicants' 

claimed invention. See the DST AFFIDAVITS . Applicants respectfully disagree that the field of High 

Tc superconductivity is unpredictable within the meaning of the US patent law as suggested by the 

Examiner. See the affidavit of Newns submitted 04/12/2006. The complex chemistry does not have to 

be understood to fabricate samples as stated in the book "Copper Oxide Superconductors" by Charles 

P. Poole, et al. (See % 48 of DST AFFIDAVITS) 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 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 mixture of compounds into a superconductor." Skilled artisans can fabricate samples without 

knowing the chemistry and without a detailed theory thus this art is predictable. All that is needed is 

needed is routine experimentation to fabricate samples. There is no evidence to the contrary. 

In In re Wands 858 F.2d 731, 742 (Fed. Cir. 1988); 8 U.S.P.Q.2D 1400 the CAFC stated 
"[The inventor] must provide sufficient data or authority to show that his results are reasonably 
predictable within the scope of the claimed generic invention, based on experiment and/or scientific 
theory. " Thus experiment or theory is sufficient to establish predictability. And as stated above by the 
Examiner "a person of skill in the art, using the techniques described in the application, which 
included all principles of ceramic fabrication known at the time the application was initially filed, can 
make the known superconductive compositions." There is no requirement to know in advance all 
examples enabled by their teaching. Thus the field of High Tc superconductivity is predictable within 
the meaning of In re Wands. 

The Examiner's reference to "subsequently discovered BSCCO or Tl-systems " suggests that it 
is the Examiner's view that for applicants to be allowed a generic claim applicants must know in 

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advance all materials that can be used to practice applicant's claims. The CAFC has stated in Sri Int'l 
v. Matsushita Elec. Corp., 775 F.2d 1 107, 1 121 (Fed. Cir. 1985); 227 USPQ 577, 586 that this is not 
necessary: 

'The law does not require the impossible. Hence, it does not require that an applicant describe in 
his specification every conceivable and possible future embodiment of his invention. The law 
recognizes that patent specifications are written for those skilled in the art, and requires only that 
the inventor describe the "best mode" known at the time to him of making and using the 
invention. 35 U.S.C. § 112. ' 
Applicants have shown that persons of ordinary skill in the art as of applicants priority date can 

practice applicant's claims to their full scope and the Examiner has agreed with this. 

The CAFC has further stated 

"An applicant for patent is required to disclose the best mode then known to him for practicing 
his invention. 35 U.S.C. § 112. He is not required to predict all future developments which enable 
the practice of his invention in substantially the same way. " Hughes Aircraft Co. v. United 
States, 717 F. 2d 1351, 1362 (Fed. Cir. 1983);39 USPQ2d 1065. 
This is exactly what applicants have done. Thus applicant's claims are enabled. 
The CAFC further states in regards to future developments: 

"Enablement does not require the inventor to foresee every means of implementing an invention 
at pains of losing his patent franchise. Were it otherwise, claimed inventions would not include 
improved modes of practicing those inventions. Such narrow patent rights would rapidly 
become worthless as new modes of practicing the invention developed, and the inventor would 
lose the benefit of the patent bargain. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 
1071 (Fed. Cir. 2005)" 

The Examiner's position in regards to the enablement of applicants' claims is inconsistent with the 
CAFC's position that "Enablement does not require the inventor to foresee every means of 
implementing an invention." Thus applicant's claims are enabled and the rejection should be reversed. 

The Examiner in the Office Action 10/20/ 2005 at page 4 refers to a article by Schuller et al. 
Which states "Of course, 'enlightened' empirical searches either guided by chemical and materials 
intuition or systematic searches using well-defined strategies may prove to be fruitful. It is interesting 
to note that while empirical searches in the oxides gave rise to many superconducting systems." See 
the Affidavit of Newns submitted 04/12/2006 f 18. The DST AFFIDAVITS describe what a person of 
skill in the art knew prior to applicants' priority date upon which the systematic empirical study was 
based in view of applicant's teaching. The Affidavit of News shows how this systematic empirical 
study is in principal the same as a systematic theoretical investigation when a a well developed 
theoretical formalism exists. Thus applicant's claims are predictable and enabled. In the response 
submitted 01/28/2005 at pages 148-150 applicants applied the MPEP K 2164.01(a) Undue 
Experimentation Factors from In re Wands. The Examiner has provided no rebuttal to this. 

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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 



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