Reconsideration is respectfully requested in view of any changes to the
claims and the remarks herein. Please contact the undersigned to conduct a
telephone interview in accordance with MPEP 713.01 to resolve any remaining
requirements and/or issues prior to sending another Office Action. Relevant
portions of MPEP 713.01 are included on the signature page of this amendment.
In the referenced Advisory Action dated November 15, 2007 the Examiner
did not enter Applicants' Ninth Supplementary Response dated 1 1-6-2006. The
Examiner states the "Remarks/Exhibits have not been considered as such were
not timely filed. See 37 C.F.R. § 41 .33 and MPEP 1 206 . . ."
37 C.F.R. §41.33 states:
§ 41.33 Amendments and affidavits or other evidence
(a) Amendments filed after the date of filing an appeal pursuant
to § 41 .31 (a)(1 ) through (a)(3) and prior to the date a brief is
filed pursuant to § 41.37 may be admitted as provided in §
1.116 of this title.
Since the Appeal Brief was filed 12-01-2006 and the Ninth Supplementary
Response was filed 11-6-2006, the Ninth Supplementary Response "may be
admitted as provided in § 1.116" of 37 C.F.R.
37 C.F.R. § 1.116 states:
§ 1 .1 16 Amendments and affidavits or other evidence
after final action and prior to appeal.
(e) An affidavit or other evidence submitted after a
final rejection or other final action (§ 1.113) in an
application ... but before or on the same date of filing
an appeal (§ 41 .31 or § 41 .61 of this title), may be
admitted upon a showing of good and sufficient
reasons why the affidavit or other evidence is
necessary and was not earlier presented.
Applicants respectfully request that Ninth Supplementary Response dated 11-6-
2006 be entered or this Seventeenth Supplementary Response be interred. The
following is "a showing of good and sufficient reasons why [this] ... evidence is
necessary and was not earlier presented."
The attachment of the Ninth Supplementary Response and of this Seventeenth
Supplementary Response are directed to a definition of a BSCOO material which
the Examiner referred to at page 8 of the Final Action but did not define and
which was well know to persons of ordinary skill in the art prior to Applicants'
invention and is information that is know of should be known to the Examiner of
the present application. An Examiner of a patent application handles a narrower
filed of technical subject matter than a panel of the Board of Appeals that reviews
an applicant's appeal. Applicants submitted the Ninth Supplementary Response
and this Seventeenth Supplementary Response to provide the panel of the Board
of Appeals reviewing this appeal basic knowledge known to persons of ordinary
skill in the art and which is know or should be know to the Examiner. Applicants
believe that this basic information is necessary since it will asset the Board in
rendering a fair and equitable decision. This information was not earlier
presented since the Examiner first referred to a BSCOO material in the Final
Action. Information well know to persons of skill in the art does not have to be
provided in a patent application nor during prosecution unless it is requested by
the Examiner or is necessary to respond to an issue that arises during
prosecution. What the definition is of a BCOO material arose during prosecution
in the Final Action.
The Examiner states at page 8 of the Final Action
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). The Examiner
respectfully maintains that the instant disclosure has not
provided sufficient guidance to produce such materials.
A BSCCO compound is an acronym for a Bi-Sr-Ca-Cu-0 compound, i.e. a
bismuth-strontium-calcium-copper oxide compound. See article attached
herewith from the on-line Wikipedia Encyclopedia.
Please charge any fee necessary to enter this paper and any previous paper to
deposit account 09-0468.
/Daniel P. Morris/
Intellectual Property Law Dept.
P.O. Box 218
Yorktown Heights, New York 10598
Dr. Daniel P. Morris, Esq.
Reg. No. 32,053