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^JJ^H^mB 19:25 19149453281 IBM IPLAW YORKTOWN PAGE 81/03 

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DEC 2 1 2006 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

In re Patent Application of Date: -December 21 , 2006 

Applicants: Bednorzetal. 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 

Commissioner for Patents 

United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1450 

CERTIFICATE OF FACSIMILE TRANSMISSION 



I hereby certify that this Eighth Response After Final Rejection (3 pages) 
is being facsimile transmitted to the U.S. Patent and Trademark Office to (571 ) 




Reg. No. 32,053 

FIRST SUPPLEMENTARY 
APPEAL BRIEF 

Sir: 

In addition to the arguments in the Brief submitted on 11/27/2006 
Pursuant to 35 U.S.C. 1 34 and 37 C.F.R. 41 .37 Applicants add the following 
comments. 



Serial No.: 08/479,810 



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Supplementary Comments To 



DEC 2 I 2006 



Part VII 



CFR 37 §41.37{c){1)(iw) 



Argument 



At page 59 of the Brief submitted on 1 1/27/2006 Applicants note that the 

Examiner states at page 6 of Office Action dated 07/28/2004: 

Small changes in composition can result in dramatic changes in or 
loss of superconducting properties. 

The Examiner cites no authority for why this statement is relevant to whether 
Applicants 5 claims are enabled. Arts that are usually considered predictable 
within the meaning of the US patent law are the mechanical and electrical arts. 
A mechanical apparatus is made up of gears, wheels, lever arms, etc. A small 
change In the size of one of these elements of a mechanical apparatus can result 
in the apparatus not functioning. An electrical apparatus is made up of resistors, 
capacitors, inductors, etc. A small change in the magnitude of one of these 
elements of an electrical apparatus can result in the apparatus not functioning. 
Thus that small changes in the value or magnitude of constituent elements of an 
invention can result in that apparatus not working is not prima facie evidence of 
lack of enablement as the Examiner's statement from page 6 of Office Action 
dated 07/28/2004 suggests. In actual fact, the Examiner's comment implies 
enablement. By stating that "[s]mall changes in composition can result in 
dramatic changes in or loss of superconducting properties" the Examiner is, in 
fact, acknowledging that the compositions can be made and tested to determine 
whether the composition has the desired superconducting property. This is all 
that enablement requires. Thus the Examiner's statement quoted above supports 
the enablement of Applicants' claims. As stated in the Brief, to satisfy the 
enablement requirement, an Applicant does not have to foresee all species that 
come within the scope of Applicants' claims. 



Serial No.: 08/479,810 



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Volume 3 of Applicants' Brief refers to the Examiner's First, Second and 
Third Enablement Statements. The Examiner's statement that B [s]mall changes in 
composition can result in dramatic changes in or loss of superconducting 
properties" is an Examiner's Fourth Enablement Statement. 

The Examiner has provided not evidence or argument that a species that 
comes within the scope of Applicants' claims exists, or can be made, but cannot 
be made and determined to have the high Tc superconductive property following 
Applicants teaching, when viewed from the point of view of a person or ordinary 
skill in the art as of Applicants earliest priority date. Thus the Examiner has not 
made out a prima facie case of lack of enablement. In view thereof Applicants 
request the Board to reverse the rejections of Applicants' claims for lack of 
enablement. 

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



Respectfully submitted, 




Reg. No. 32,053 
(914)945-3217 



IBM CORPORATION 
Intellectual Property Law Dept. 
P.O. Box 21 8 

Yorktown Heights, New York 10598 



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