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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark OfTtce 

Address; COMMISSIONER FOR PATENTS 
P.O. Box 1450 

Alexandria, Virginia 223 1 3- 1 450 
www.uspto.gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



CONFIRMATION NO. 



08/479,810 



06/07/1995 



7590 



05/19/2006 



IBM corporation 

intellectual property law 

PO BOX 218 

YORKTOWN HEIGHTS, NY 10598 



JOHANNES G. BEDNORZ 



YO987-074BY 



8594 



EXAMINER 



KOPEC, MARK T 



ART UNIT 



PAPER NUMBER 



1751 

DATE MAILED: 05/19/2006 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 10/03) 



Advisory Action 
Before tlie Filing of an Appeal Brief 



Application No. 

08/479,810 



Examiner 

Mark Kopec 



Applicant(s) 
BEDNORZ ETAL 



Art Unit 

1751 



-The MAILING DATE of this communication appears on the cover sheet with the correspondence address - 
THE REPLY FILED 12 April 2006 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE. 

1 . S The reply was filed after a final rejection, but prior to or on the same day as filing a Notice of Appeal. To avoid abandonment of 

this application, applicant must timely file one of the following replies: (1) an amendment, affidavit, or other evidence, which 
places the application in condition for allowance; (2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41 .31 ; or (3) 
a Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. The reply must be filed within one of the following 
time periods: 

a) n The period for reply expires months from the mailing date of the final rejection. 

b) n The period for reply expires on: (1 ) the mailing date of this Advisory Action, or (2) the date set forth in the final rejection, whichever is later. In 

no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection. 

Examiner Note: If box 1 is checked, check either box (a) or (b). ONLY CHECK BOX (b) WHEN THE FIRST REPLY WAS FILED WITHIN 

TWO MONTHS OF THE FINAL REJECTION. See MPEP 706.07(f). 
Extensions of time may be obtained under 37 CFR 1 .136(a). The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee 
have been filed is the date for purposes of determining the period of extension and the con-esponding amount of the fee. The appropriate extension fee 
under 37 CFR 1.17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally set in the final Office action; or (2) as 
set forth in (b) above, if checked. Any reply received by the Office later than three months after the mailing date of the final rejection, even if t'mely filed, 
may reduce any earned patent term adjustment. See 37 CFR 1.704(b). 
NOTICE OF APPEAL 

2. M The Notice of Appeal was filed on 25 April 2006 . A brief in compliance with 37 CFR 41 .37 must be filed within two months of the 

date of filing the Notice of Appeal (37 CFR 41 .37(a)), or any extension thereof (37 CFR 41 .37(e)), to avoid dismissal of the 
appeal. Since a Notice of Appeal has been filed, any reply must be filed within the time period set forth in 37 CFR 41 .37(a). 
AMENDMENTS 

3. □ The proposed amendment(s) filed after a final rejection, but prior to the date of filing a brief, will not be entered because 

(a)D They raise new issues that would require further consideration and/or search (see NOTE below); 
{b)ll] They raise the issue of new matter (see NOTE below); 

(c) □ They are not deemed to place the application in better form for appeal by materially reducing or simplifying the issues for 
appeal; and/or 

{d)IZI They present additional claims without canceling a con-esponding number of finally rejected claims. 
NOTE: . (See 37 CFR 1 .1 1 6 and 41 .33(a)). 

4. □ The amendments are not in compliance with 37 CFR 1.121 . See attached Notice of Non-Compliant Amendment (PTOL-324). 

5. CU Applicant's reply has overcome the following rejection(s): . 

6. □ Newly proposed or amended claim(s) would be allowable if submitted in a separate, timely filed amendment canceling the 

non-allowable claim(s). 

7. S For purposes of appeal, the proposed amendment(s): a) □ will not be entered, or b) S will be entered and an 
explanation of how the new or amended claims would be rejected is provided below or appended. 
The status of the claim{s) is (or will be) as follows: 
Claim{s) allowed: See CON sheet . 

Claim{s) objected to: . 

Claim{s) rejected: See CON sheet . 

Claim(s) withdrawn from consideration: 73-76,82,83.377 and 378 . 
AFFIDAVIT OR OTHER EVIDENCE 

8. □ The affidavit or other evidence filed after a final action, but before or on the date of filing a Notice of Appeal will not be entered 

because applicant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and 
was not eariier presented. See 37 CFR 1 .1 16(e). 

9. □ The affidavit or other evidence filed after the date of filing a Notice of Appeal, but prior to the date of filing a brief, will not be 

entered because the affidavit or other evidence failed to overcome aH rejections under appeal and/or appellant fails to provide a 
showing a good and sufficient reasons why it is necessary and was not eariier presented. See 37 CFR 41.33(d)(1). 

1 0. S The affidavit or other evidence is entered. An explanation of the status of the claims after entry is below or attached. 
REQUEST FOR RECONSIDERATION/OTHER 

1 1 . S The request for reconsideration has been considered but does NOT place the application in condition for allowance because: 

See (Continuation Sheet 

12. □ Note the attached Infomiation Disclosure Statement(s). (PTO/SB/08 or PTO-1449) Paper No(s). 

13. □ Other: . 

^ark Kopec 
Primary Examiner 
Art Unit: 1751 



U.S. Patent and Trademark Office 
PTOL-303 (Rev. 7-05) 



Advisory Action Before the Filing of an Appeal Brief 



Part of Paper No. 20060515 



Continuation Sheet (PTO-303) 



Application No. 08/479,810 



Continuation of 1 1 . does NOT place the application in condition for allowance because: The 1 .1 32 Declarations of Georg Bednorz and 
Dennis Newns have been considered. The Declaration of Dr. Georg Bednorz details his work as an "experimental scientist" in the filed of 
solid-state science, and his work leading to the discovery of layered perovskite-like CuO-compounds. The Declaration of Dr. Dennis 
Newns sets forth his views on the "predictability in theoretical solid state science" (para 7-10) and provides a discussion of the Schuller 
article (of record). 

The examiner respectfully maintains that the field of high-temperature superconductivity is an unpredictable one. The cited 
articles (PTO-892 mailed 10/20/05) clearly disclose such. 

For the reasons of record, the examiner respectfully maintains that the instant disclosure does not enable one of ordinary skill to make and 
use the invention as now recited in claims 11-72.77-81,84-112,115-122,126-134,139.141-150,152-156,158-166,170,171,175.176,180- 
184,187.188.192-195.198-212.217-219,222.223.227-230.232-257.261-263,266-268.271-275,278,279,283-286,289-295.303,308- 
310.313.314.318-376 and 379-501 without undue experimentation.. 



Mark Kopec 
Primary Examiner 



2 



Application/Control Number: 08/479,810 
Art Unit: 1751 



Page 2 



Continuation of Disposition of Claims: Claims allowed are 113,114,123-125.135-138.140,151, 157,167-169,172- 
174.177-179.185,186.189-191,196,197,213-216,220,221,224-226.231.258-260,264,265,269.270,276.277,280- 
282.287.288.296-301 ,304-307,31 1 ,312,315-317,502-507 and 51 1-515. Continuation of Disposition of Claims: Claims 
rejected are 1-72,77-81,84-112,115-122.126-134,139.141-150.152-156,158-166,170,171.175,176,180- 
184.187.188,192-195.198-212,217-219.222,223,227-230,232-257.261-263,266-268.271-275.278,279.283-286,289- 
295.303,308-310,313.314.318-376 and 379-501. 



.^M«^/^- 

Mark Kopec 
Primaiy Examiner