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RECEIVED 
CENTRAL FAX CENTER 

SEP 1 8 2006 

REMARKS 



The Examiner has cited a number of decisions of the Board of Patent Appeals and 
Interferences and the courts in regard to the rejection of Applicants' claims for lack of 
enablement under 35 U.S.C. 112, first paragraph. One of these decisions is In re Fisher 
166 USPQ18 of the CCPA. In re Fisher is a regularly cited case in Board and court 
decisions on enablement. Applicants have previously given reasons for why they believe 
that In re Fisher supports their position that all of Applicants' claims rejected for lack of 
enablement are in fact enabled. 



Applicants herein are presenting an application of In re Fisher to the facts of the 
present prosecution that they have not previously presented. Applicants are submitting 
this in a Response After Final rejection in the hope that this new look at In re Fisher may 
avoid the necessity of filing an appeal brief. 



Applicants respectfully requests the Examiner and Supervisor Examiner to 
reconsider the rejection of Applicants' claims that have been rejected for lack of 
enablement in view of these new comments on In re Fisher and related decisions of the 
USPTO Board of Patent Appeals and Interferences and court decisions. 



In In re Fisher 1 66 USPQ 1 8 two claims (4 and 5) were under appeal. Claim 4 was 
directed to "A method ... for producing ACTH [adrenocorticotrophic homnones] 
preparations having potencies ranging from 1 11 % to 230% of standard and containing no 
more than 0.08 units of vasopressin and no more than 0.05 units of oxytocin per 
International Unit of ACTH, which limits are said to be tolerable to humans " 166 USPQ 
18, 20. "The claim recites that the product must contain 'at least* 24 amino acids in a 
specified sequence/' 1 66 USPQ 18, 21 . To avoid a reference to Li, having a publication 
date prior to the filing date, the appellant relied on its parent application of which the 
application under appeal was a continuation-in-part. The CCPA states: 

Appellant's parent application, therefore, discloses no products, 
inherently or expressly, containing other than 39 amino acids, yet the 
claim includes all polypeptides, of the recited potency and purity, having 

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at least 24 amino acids in the chain in the recited sequence. The parent 
specification does not enable one skilled in the art to make or obtain 
ACTH's with other than 39 amino acids in the chain, and there has been 
no showing that one of ordinary skill would have known how to make or 
obtain such other ACTH's without undue experimentation. As for 
appellant's conclusion that the 25th to 39th acids in the chain are 
unnecessary, it is one thing to make such a statement when persons 
skilled in the art are able to make or obtain ACTH having other than 39 
amino acids; it is quite another thing when they are not able to do so. In 
the latter situation, the statement is in no way "enabling" and hence lends 
no further support for the broad claim. We conclude that appellant's 
parent application is insufficient to support a claim as broad as claim 4. 
For this reason we affirm the board's rejection of claim 4 as unpatentable 
over the Li refGrences. 

From this statement, it is clear that the reason for why the CCPA did not find the claims 
under appeal patentable was that the applicant did not teach how to make ACTH with 
anything but 39 amino acids and there was no evidence in the record that a person of skill 
in the art knew how to make ACTH with anything but 39 amino acids. It Is also clear that 
if persons of skill in the art knew how to make ACTH with more or less than 39 amino 
acids, the claims would not have been found not enabled. 

In regard to the rejection of Fisher claims 4 and 5 for lack of enablement the CCPA 

states: 

We have already discussed, with respect to the parent application, the 
lack of teaching of how to obtain otherTthan-sg amino acid ACTHs. That 
discussion is fully applicable to the instant application, and we think the 
board was correct in finding insufficient disclosure due to this broad 
aspect of the claims. 166 USPQ 18, 23. 

Thus the claims in Fisher were found not enabled because the Fisher application did not 
teach how to make "other-than-39 amino acid ACTHs" and there was no evidence in the 
record that persons of skill in the art knew how to make "other-than 39 amino acid 
ACTHs." 

In regards t the rejection for enablement, the CCPA further states: 

The issue thus presented is whether an inventor who is the first to 
achieve a potency of greater than 1.0 for certain types of compositions, 
which potency was long desired because of its beneficial effect on 
humans, should be allowed to dominate all such compositions having 



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potencies greater than 1.0, including future compositions having 
potencies far in excess of those obtainablQ from his teachings plus 
ordinary skill. 166 USPQ 18, 23. 

Thus the CCPA rhetorically asks the question whether the first person to discover a 
composition having a potency greater than 1 where such potency is of significant value 
should be allowed a claim "including future compositions having potencies far in excess of 
those obtainable from his teachings plus ordinary skill," 

The CCPA answers this rhetorical question stating: 

It is apparent that such an inventor should be allowed to dominate the 
future patentable inventions of others where those inventions were 
based in some way on his teachings. 166 USPQ 18,24 

From this statement is clear that applicants such as the Applicants of the present 
invention "should be allowed to dominate the future patentable inventions of others where 
those inventions were based in some way on his teachings." In the present application it 
is undisputed that the high Tc materials discovered by others after Applicants' discovery 
"were based in some way on [Applicants'] teachings." 

The CCPA further states in In re Fisher in regards to later inventions of other: 

Such improvements, while unobvious from his teachings, are still within 
his contribution, since the improvement was made possible by his work. 
166 USPQ 12, 24 

Thus in the present application "while [the high Tc materials discovered by others after 
Applicants' discovery may be] unobvious form [Applicants'] teachings, [they] are still 
within [Applicants'] contribution, since the improvement was made possible by 
[Applicants'] work." Applicants respectfully submit that the Examiner agrees with this 
when the Examiner states at page 8 of the Final Action: 

Such is the basis of applicant's invention. 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 h/oe 
of composition which is superconducting at 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 

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the time the application was initially filed, can make the known 
superconductive compositions. (Emphasis in the original.) 

The Examiner states here the that 'The examiner does not deny ... that once a person of 
skill in the art knows of a specific tvpe of composition which is superconducting at greater 
than or equal to 26K, such a person of skill in the art. using the techniques described in 
the application, ... can make the known superconductive compositions." (Emphasis in 
the original.) Thus Applicants respectfully submit that It is the Examiner's finding of fact 
that the "known superconductive compositions" are " based in some way on [applicants'] 
teachings" and thus under In re Fisher Applicants "should be allowed to dominate the 
future patentable inventions of others." 

At page 8 of the Final Action the Examiner further states: 

The numerous 1 .132 declarations, such as those of Mitzi, Shaw, 
Dinger and Duncombe, and the Rao article, are directed to production 
of know superconductive materials. 

The Affidavits of of Mitzi, Shaw, Dinger and Duncombe (Attachments 16, 17. 18, 
and 1 9 of Fifth Supplementary Amendment dated March 1 , 2004 and the Affidavit 
of Shaw dated April 14, 2005, the Affidavit of Dinger dated April 4, 2005 and the 
Affidavit of Tsuei dated April 4, 2005 (the last three affidavits are referred to 
herein as the DST Affidavits)) state: 

Once a person of skill in the art knows of a specific type of composition 
described in the Bednorz-Mueller application which is superconducting at 
greater than or equal to 26'*K. such a person of skill in the art, using the 
techniques described in the Bednorz-Mueller application, which includes all 
principles of ceramic fabrication known at the time the application was 
initially filed, can make the compositions encompassed by the claims of the 
Bednorz-Mueller application, without undue experimentation or without 
requiring ingenuity beyond that expected of a person of skill In the art of the 
fabrication of ceramic materials. This is why the work of Bednorz and 
Mueller was reproduced so quickly after their discovery and why so much 
additional work was done in this field within a short period after their 
discovery. (See paragraph 8 of the DST Affidavits.) 

Thus the Examiner agrees with Applicants' affiants. 

The Examiner further states at page 9 of the Final Action: 



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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 discovered BSCCO or 
Tl-systems as disclosed In Rao (see response filed 3/8/05, pages 
141-143). 

Applicants respectfully disagree. Applicants believe that this statement is inconsistent 
with the Examiner's earlier statement above "that once a person of skill in the art knows 
of a s pAf^if in type of composition which is super conductino at greater than or equal to 26K, 
such a person of skill in the art, using the techniques descnbed in the application, ... can 
^^u^ i.n^«,r. CI ir^rnnnrti ir.tivft comnositions." (Emohasis in the original.) Applicants