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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 



In re Patent Application of 
Applicants: Bednorz et al. 
Serial No.: 08/479,810 
Filed: June 7, 1995 



Date: May 15, 2008 



Docket: YO987-074BZ 



Group Art Unit: 1751 
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 



Argument For the Patentability of Each Rejected Claims 488-543 



CORRECTED APPEAL BRIEF 



Part VII 



CFR37 §41.37(c)(1)(vii) 



VOLUME 3 



Part 8 



Respectfully submitted, 



/Daniel P Morris/ 



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 



CLAIM 488/482/480/476 

CLAIM 488/482/480/476 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 480 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element comprises one or more of Be, Mg, Ca, Sr, 
Ba and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, 
Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. Yb and Lu . 

CLAIM 482 An apparatus according to claim 480, wherein 
said superconductive current carrying element comprises a 
transition metal . 

CLAIM 488 An apparatus according to claim 482, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 



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has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



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CLAIM 488/482/480/477 

CLAIM 488/482/480/477 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 477 An apparatus according to claim 476, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26 K . 

CLAIM 480 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element comprises one or more of Be, Mg, Ca, Sr, 
Ba and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, 
Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. Yb and Lu . 

CLAIM 482 An apparatus according to claim 480, wherein 
said superconductive current carrying element comprises a 
transition metal . 

CLAIM 488 An apparatus according to claim 482, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

Volume 3 Page 1616 of 1770 



The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



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CLAIM 488/482/480/478 

CLAIM 488/482/480/478 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 478 An apparatus according to claim 476, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 480 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element comprises one or more of Be, Mg, Ca, Sr, 
Ba and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, 
Sm, Eu, Gd, Tb, Dv, Ho, Er, Tm, Yb and Lu . 

CLAIM 482 An apparatus according to claim 480, wherein 
said superconductive current carrying element comprises a 
transition metal . 



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CLAIM 488 An apparatus according to claim 482, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



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CLAIM 489 

CLAIM 489 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 483 An apparatus according to claim 476, wherein 
said superconductive current carrying element comprises 
copper oxide . 

CLAIM 489 An apparatus according to claim 483, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 



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Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



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CLAIM 490/484/476 

CLAIM 490/484/476 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 484 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element can be made according to known principles 
of ceramic science . 

CLAIM 490 An apparatus according to claim 484, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 



Volume 3 



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without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



Volume 3 



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CLAIM 490/484/477 

CLAIM 490/484/477 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 477 An apparatus according to claim 476, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26 K . 

CLAIM 484 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element can be made according to known principles 
of ceramic science . 

CLAIM 490 An apparatus according to claim 484, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 



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Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



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CLAIM 490/484/478 

CLAIM 490/484/478 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 478 An apparatus according to claim 476, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 484 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element can be made according to known principles 
of ceramic science . 

CLAIM 490 An apparatus according to claim 484, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 



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has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



Volume 3 



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CLAIM 491/485/479/476 

CLAIM 491/485/479/476 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 479 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be. Mg. Ca. Sr. Ba. Ra. Sc. Y. La. Ce. Pr. Nd. 
Pm. Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. Yb and Lu . 

CLAIM 485 An apparatus according to claim 479, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

CLAIM 491 An apparatus according to claim 485, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 



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has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



Volume 3 



Page 1629 of 1770 



CLAIM 491/485/479/477 

CLAIM 491/485/479/477 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 477 An apparatus according to claim 476, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26 K . 

CLAIM 479 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm. Sm. Eu. Gd. To, Dv. Ho. Er. Tm. Yb and Lu . 

CLAIM 485 An apparatus according to claim 479, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

CLAIM 491 An apparatus according to claim 485, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

Volume 3 Page 1 630 of 1 770 



The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



Volume 3 



Page 1631 of 1770 



CLAIM 491/485/479/478 

CLAIM 491/485/479/478 recites: 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises an 
oxide, a layered perovskite structure or a layered perovskite- 
like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content . 

CLAIM 478 An apparatus according to claim 476, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 479 An apparatus according to anyone of claims 
476, 477 or 478, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be. Mg. Ca. Sr. Ba. Ra. Sc. Y. La. Ce. Pr. Nd. 
Pm. Sm. Eu. Gd, Tb, Dv, Ho. Er. Tm. Yb and Lu . 

CLAIM 485 An apparatus according to claim 479, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 



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CLAIM 491 An apparatus according to claim 485, wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 
"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



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CLAIM 492 



CLAIM 492 recites: 

CLAIM 361 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or an 
element comprising a rare earth characteristic, a transition 
metal element capable of exhibiting multivalent states and 
oxygen, including at least one phase that exhibits 
superconductivity at temperature greater than or equal to 
26°K, means for maintaining said composition at said 
temperature to exhibit said superconductivity and means for 
passing an electrical superconducting current through said 
composition while exhibiting said superconductivity. 

CLAIM 492 The superconducting apparatus of claim 361 , 
where said phase is crystalline with a structure comprising a 
perovskite related structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 



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Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 493 



CLAIM 493 recites: 

CLAIM 361 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or an 
element comprising a rare earth characteristic, a transition 
metal element capable of exhibiting multivalent states and 
oxygen, including at least one phase that exhibits 
superconductivity at temperature greater than or equal to 
26°K, means for maintaining said composition at said 
temperature to exhibit said superconductivity and means for 
passing an electrical superconducting current through said 
composition while exhibiting said superconductivity. 

CLAIM 362 The superconducting apparatus of claim 361 , 
further including an alkaline earth element substituted for at 
least one atom of said rare earth or element comprising a 
rare earth characteristic in said composition . 

CLAIM 493 The superconducting apparatus of claim 362, 
where said phase is crystalline with a structure comprising a 
perovskite related structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 



Volume 3 



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expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 494 



CLAIM 494 recites: 

CLAIM 12 A superconducting combination, comprising a 
superconductive oxide having a transition temperature 
greater than or equal to 26°K, 

A current siurce for passing a superconducting electrical 
current through said composition while said composition is at 
a temperature greater than or equal to 26°K and less than 
said transition temperature, and 

a temperature controller for cooling said composition to a 
superconducting state at a temperature greater than or equal 
to 26°K. 

CLAIM 494 The combination of claim 12, where said 
composition includes a superconducting phase comprising a 
perovskite related structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 



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1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 495 



CLAIM 495 recites: 

CLAIM 379 A combination, comprising: 

a mixed copper oxide composition including an alkaline earth 
element (AE) and a rare earth or element (RE) comprising a 
rare earth characteristic, said composition comprising a 
crystalline structure comprising a layered characteristic and 
multi-valent oxidation states, said composition exhibiting a 
substantially zero resistance to the flow of electrical current 
therethrough when cooled to a superconducting state at a 
temperature greater than or equal to 26°K, said mixed 
copper oxide having a superconducting onset temperature 
greater than or equal to 26°K, and 

a current source for passing an electrical superconducting 
current through said composition when said composition 
exhibits substantially zero resistance at a temperature 
greater than or equal to 26°K and less than said onset 
temperature. 

CLAIM 495 The combination of claim 379, wherein said 
crystalline structure comprises a perovskite related structure . 

This claim should be alloed since claim 379 is allowed. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 



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has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 496 



CLAIM 496 recites: 

CLAIM 496 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a crystal structure 
comprising a perovskite related structure and a layered 
characteristic , the composition having a superconductor 
transition temperature Tc of greater than or equal to 26°K; 

(b) means for maintaining the superconductor element at a 
temperature greater than or equal to 26°K and below the 
superconductor transition temperature Tc of the 
superconductive composition; and 

(c) means for causing an electric current to flow in the 
superconductor element. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 



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without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 479 

CLAIM 497 recites: 

CLAIM 497 A superconductive apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition , the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the copper-oxide compound 
including at least one rare-earth or element comprising a 
rare earth characteristic and at least one alkaline-earth 
element, the composition having a superconductive/resistive 
transition defining a superconductive/resistive-transition 
temperature range between an upper limit defined by a 
transition-onset temperature Tc and a lower limit defined by 
an effectively-zero-bulk-resistivity intercept temperature T q=0 , 
the transition-onset temperature Tc being greater than or 
equal to 26°K; 

(b) means for maintaining the superconductor element at a 
temperature below the effectively-zero-bulk-resistivity 
intercept temperature T q=0 of the superconductive 
composition; and 

(c) means for causing an electric current to flow in the 
superconductor element. 



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The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 498 



CLAIM 498 recites: 

CLAIM 498 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure , the composition having a 
superconductor transition temperature Tc of greater than or 
equal to 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature greater than or equal to 26°K and 
below the superconductor transition temperature Tc of the 
superconductive composition; and 

(c) causing an electric current to flow in the superconductor 
element. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 



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persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 499 

CLAIM 499 recites: 

CLAIM 499 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the copper-oxide compound 
including at least one rare-earth or rare-earth-like element 
and at least one alkaline-earth element, the composition 
having a superconductive/resistive-transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature T p=0 , the transition- 
onset temperature Tc being greater than or equal to 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bu Ik- 
resistivity intercept temperature T p=0 of the superconductive 
composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 



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The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 500 



CLAIM 500 recites: 

CLAIM 500 An apparatus for causing electric-current flow in 
a superconductive state at a temperature greater than or 
equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure , the composition having a 
superconductive transition temperature Tc of greater than or 
equal to 26°K, said superconductive composition includes at 
least one element selected from the group consisting of a 
Group II A element, a rare earth element; and a Group III B 
element; 

(b) a temperature controller maintaining the superconductor 
element at a temperature greater than or equal to 26°K and 
below the superconductor transition temperature Tc of the 
superconductive composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 



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Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 501 

CLAIM 501 recites: 

CLAIM 501 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the copper-oxide compound 
including at least one element selected from the group 
consisting of a Group II A element, a rare earth element and 
a Group III B element, the composition having a 
superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature T p=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bu Ik- 
resistivity intercept temperature T p=0 of the superconductive 
composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 



Volume 3 



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The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 502 

Claim 502 which is allowed recites: 

CLAIM 502 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the composition having a 
superconductive transition temperature Tc of greater than or 
equal to 26°K, said superconductive composition includes at 
least one element selected from the group consisting of a 
Group II A element and at least one element selected from 
the group consisting of a rare earth element and a Group III 
B element; 

(b) a temperature controller maintaining the superconductor 
element at a temperature greater than or equal to 26°K and 
below the superconductor transition temperature Tc of the 
superconductive composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 



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CLAIM 503 

Claim 503 which is allowed recites: 

CLAIM 503 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the copper-oxide compound 
including at least one element selected from the group 
consisting of a Group II A element and at least one element 
selected from the group consisting of a rare earth element 
and a Group III B element, the composition having a 
superconductive/resistive transition defining a 
superconductive-resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature T p=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bu Ik- 
resistivity intercept temperature T p=0 of the superconductive 
composition; and 



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(c) a current source causing an electric current to flow in the 
superconductor element. 



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CLAIM 504 

Claim 504 which is allowed recites: 

CLAIM 504 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a transition metal oxide compound comprising 
a crystal structure comprising a layered characteristic and a 
perovskite related structure, the composition having a 
superconductive transition temperature Tc of greater than or 
equal to 26°K, said superconductive composition includes an 
element selected from the group consisting of a Group II A 
element and at least one element selected from the group 
consisting of a rare earth element and a Group III B element; 

(b) a temperature controller maintaining the superconductor 
element at a temperature greater than or equal to 26°K and 
below the superconductor transition Tc of the 
superconductive composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 

CLAIM 505 



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Claim 505 which is allowed recites: 



CLAIM 505 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a transition metal-oxide compound comprising 
a crystal structure comprising a layered characteristic and a 
perovskite related structure, the transition metal-oxide 
compound including at least one element selected from the 
group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth 
element and a Group III B element, the composition having a 
superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature T p=0 , the transition- 
onset temperature Tc being greater than or equal to 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bu Ik- 
resistivity intercept temperature T p=0 of the superconductive 
composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 

CLAIM 506 



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Claim 506 which is allowed recites: 



CLAIM 506 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the composition having a 
superconductive transition temperature Tc of greater than or 
equal to 26°K, said superconductive composition includes a 
Group II A element, and at least one element selected from 
the group consisting of a rare earth element and a Group III 
B element; 

(b) a temperature controller maintaining the superconductor 
element at a temperature greater than or equal to 26°K and 
below the superconductor transition temperature Tc of the 
superconductive composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 



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CLAIM 507 

Claim 507 which is allowed recites: 

CLAIM 507 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the copper-oxide compound 
including Group II A element, and at least one element 
selected from the group consisting of a rare earth element 
and a Group III B element, the composition having a 
superconductive-resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bulk- 
resistivity intercept temperature Tp=0 of the superconductive 
composition; and 

(c) a current source causing an electric current to flow in the 
superconductor element. 



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CLAIM 508 



CLAIM 508 recites: 

CLAIM 508 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure , the composition comprising a 
superconductor transition temperature Tc of greater than or 
equal to 26°K; 

(b) a temperature controller for maintaining the 
superconductor element at a temperature greater than or 
equal to 26°K and below the superconductor transition 
temperature Tc of the superconductive composition; and 

(c) a source of an electric current to flow in the 
superconductor element. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 



Volume 3 



Page 1661 of 1770 



persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 509 



CLAIM 508 recites: 

CLAIM 509 An apparatus capable of carrying an electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition , the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure , the composition comprising a 
superconductive transition temperature Tc of greater than or 
equal to 26°K, said superconductive composition includes at 
least one element selected from the group consisting of a 
Group II A element, a rare earth element: and a Group III B 
element : 

(b) a temperature controller for maintaining the 
superconductor element at a temperature greater than or 
equal to 26°K and below the superconductor transition 
temperature Tc of the superconductive composition; and 

(c) a source of an electric current to flow in the 
superconductor element. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 



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Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 510 

CLAIM 510 recites: 

CLAIM 510 An apparatus capable of carrying an electric 
current essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the copper-oxide compound 
including at least one element selected from the group 
consisting of a Group II A element, a rare earth element and 
a Group III B element , the composition comprising a 
superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature T p=0 , the transition- 
onset temperature Tc being greater than or equal to 26°K; 

(b) a temperature controller for maintaining the 
superconductor element at a temperature below the 
effectively-zero-bulk-resistivity intercept temperature T p=0 of 
the superconductive composition; and 

(c) a source of an electric current to flow in the 
superconductor element. 



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The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 511 

Claim 51 1 which is allowed recites: 

CLAIM 51 1 An apparatus capable of carrying an electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the composition comprising a 
superconductive transition temperature Tc of greater than or 
equal to 26°K, said superconductive composition includes at 
least one element selected from the group consisting of a 
Group II A element and at least one element selected from 
the group consisting of a rare earth element and a Group III 
B element; 

(b) a temperature controller for maintaining the 
superconductor element at a temperature greater than or 
equal to 26°K and below the superconductor transition 
temperature Tc of the superconductive composition; and 

(c) a source of an electric current to flow in the 
superconductor element. 



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CLAIM 512 

Claim 512 which is allowed recites: 

CLAIM 512 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the copper-oxide compound 
including at least one element selected from the group 
consisting of a Group II A element and at least one element 
selected from the group consisting of a rare earth element 
and a Group III B element, the composition comprising a 
superconductive/resistive transition defining a 
superconductive-resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

(b) a temperature controller for maintaining the 
superconductor element at a temperature below the 
effectively-zero-bulk-resistivity intercept temperature Tp=0 of 
the superconductive composition; and 

(c) a source of an electric current to flow in the 
superconductor element. 



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CLAIM 513 

Claim 513 which is allowed recites: 

CLAIM 513 An apparatus capable of carrying an electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a transition metal oxide compound comprising 
a crystal structure comprising a layered characteristic and a 
perovskite related structure, the composition comprising a 
superconductive transition temperature Tc of greater than or 
equal to 26°K, said superconductive composition includes at 
least one element selected from the group consisting of a 
Group II A element and at least one element selected from 
the group consisting of a rare earth element and a Group III 
B element; 

(b) a temperature controller for maintaining the 
superconductor element at a temperature greater than or 
equal to 26°K and below the superconductor transition Tc of 
the superconductive composition; and 

(c) a source of an electric current to flow in the 
superconductor element. 



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CLAIM 514 

Claim 514 which is allowed recites: 

CLAIM 514 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a transition metal-oxide compound comprising 
a crystal structure comprising a layered characteristic and a 
perovskite related structure, the transition metal-oxide 
compound including at least one element selected from the 
group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth 
element and a Group III B element, the composition 
comprising a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

(b) a temperature controller for maintaining the 
superconductor element at a temperature below the 
effectively-zero-bulk-resistivity intercept temperature Tp=0 of 
the superconductive composition; and 

(c) a source of an electric current to flow in the 
superconductor element. 



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CLAIM 515 

Claim 515 which is allowed recites: 

CLAIM 515 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 
structure comprising a layered characteristic and a 
perovskite related structure, the copper-oxide compound 
including at least one element selected from the group 
consisting of a group II A element, at least one element 
selected from the group consisting of a rare earth element 
and at least one element selected from the group consisting 
of a Group III B element, the composition comprising a 
superconductive-resistive transition temperature defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature T p=0 , the transition- 
onset temperature Tc being greater than or equal to 26°K; 

(b) a temperature controller for maintaining the 
superconductor element at a temperature below the 
effectively-zero-bulk-resistivity intercept temperature T p=0 of 
the superconductive composition; and 

(c) a source of an electric current to flow in the 
superconductor element. 



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CLAIM 516 

CLAIM 516 recites: 

CLAIM 146 An apparatus: 

a composition exhibiting a superconductive state at a 
temperature greater than or equal to 26°K , 

a temperature controller maintaining said composition at a 
temperature greater than or equal to 26°K at which 
temperature said composition exhibits said superconductive 
state, and 

a current source passing an electrical current through said 
composition while said composition is in said 
superconductive state. 

CLAIM 51 6 An apparatus of claim 1 46 wherein said means 
for carrying a superconductive current is comprised of an 
oxide . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 



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Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 517 



CLAIM 517 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 518 

CLAIM 518 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

CLAIM 518 An apparatus according to claim 517, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



Volume 3 



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view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 519 



CLAIM 519 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

CLAIM 519 An apparatus according to claim 517, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 



Volume 3 



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has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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Page 1678 of 1770 



CLAIM 520/517 



CLAIM 520/517 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

CLAIM 520 An apparatus according to anyone of claims 
517, 518 or 519, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm. Sm. Eu. Gd. Tb. Dv. Ho Er. Tm. Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 



Volume 3 



Page 1679 of 1770 



Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1680 of 1770 



CLAIM 520/518 

CLAIM 520/518 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

CLAIM 518 An apparatus according to claim 517, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 520 An apparatus according to anyone of claims 
517, 518 or 519, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm, Sm, Eu, Gd, Tb, Dv, Ho Er, Tm, Yb and Lu . 



The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 



Volume 3 



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expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1682 of 1770 



CLAIM 520/519 



CLAIM 520/519 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

CLAIM 519 An apparatus according to claim 517, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 520 An apparatus according to anyone of claims 
517, 518 or 519, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm. Sm. Eu. Gd. To, Dv. Ho Er. Tm. Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 



Volume 3 



Page 1683 of 1770 



persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1684 of 1770 



CLAIM 521/517 

CLAIM 521/517 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

CLAIM 521 An apparatus according to anyone of claims 
51 7, 51 8 or 51 9, wherein said superconductive current 
carrying element comprises one or more of Be, Mg, Ca, Sr, 
Ba and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, 
Sm. Eu Gd. Tb. Dv. Ho. Er. Tm. Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 



Volume 3 



Page 1685 of 1770 



Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1686 of 1770 



CLAIM 521/518 

CLAIM 521/518 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

CLAIM 518 An apparatus according to claim 517, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 521 An apparatus according to anyone of claims 
51 7, 51 8 or 51 9, wherein said superconductive current 
carrying element comprises one or more of Be, Mg, Ca, Sr, 
Ba and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, 
Sm, Eu Gd, Tb, Dv, Ho, Er, Tm, Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 



Volume 3 



Page 1687 of 1770 



without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1688 of 1770 



CLAIM 521/519 

CLAIM 521/519 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
metallic, oxygen-deficient, perovskite-like, mixed valent 
copper compound . 

CLAIM 519 An apparatus according to claim 517, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 521 An apparatus according to anyone of claims 
51 7, 51 8 or 51 9, wherein said superconductive current 
carrying element comprises one or more of Be, Mg, Ca, Sr, 
Ba and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, 
Sm. Eu Gd. To. Dv. Ho. Er. Tm. Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 



Volume 3 



Page 1689 of 1770 



persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1690 of 1770 



CLAIM 522 



CLAIM 522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states 



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Page 1691 of 1770 



"Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 
example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



Volume 3 



Page 1692 of 1770 



CLAIM 523 

CLAIM 523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



Volume 3 



Page 1693 of 1770 



view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1694 of 1770 



CLAIM 524 

CLAIM 524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 



Volume 3 



Page 1695 of 1770 



Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1696 of 1770 



CLAIM 525/522 

CLAIM 525/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 525 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm. Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 



Volume 3 



Page 1697 of 1770 



Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1698 of 1770 



CLAIM 525/523 

CLAIM 525/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 525 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm, Sm, Eu, Gd, Tb, Dv, Ho, Er, Tm, Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 



Volume 3 



Page 1699 of 1770 



without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 525/524 

CLAIM 525/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 525 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm. Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 



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has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 526/522 

CLAIM 526/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 526 An apparatus according to anyone of 
claims 522, 523 or 524, wherein said superconductive 
current carrying element comprises one or more of 
Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, Y, 
La. Ce. Pr. Nd. Pm. Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. 
Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 



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Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 526/523 

CLAIM 526/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 526 An apparatus according to anyone of 
claims 522, 523 or 524, wherein said superconductive 
current carrying element comprises one or more of 
Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, Y, 
La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dv, Ho, Er, Tm, 
Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 



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persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 526/524 

CLAIM 526/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 526 An apparatus according to anyone of 
claims 522, 523 or 524, wherein said superconductive 
current carrying element comprises one or more of 
Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, Y, 
La. Ce. Pr. Nd. Pm. Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. 
Yb and Lu . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 



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given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 527/525/522 

CLAIM 527/525/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 525 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm. Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. Yb and Lu . 

CLAIM 527 An apparatus according to claim 525, wherein 
said superconductive current carrying element comprises a 
transition metal . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 



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without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 527/525/523 

CLAIM 527/525/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 525 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, 
Pm, Sm, Eu, Gd, Tb, Dv, Ho, Er, Tm, Yb and Lu . 

CLAIM 527 An apparatus according to claim 525, wherein 
said superconductive current carrying element comprises a 
transition metal . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 



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Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 527/525/524 

CLAIM 527/525/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 525 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises one or more of the group 
consisting of Be. Mg. Ca. Sr. Ba. Ra. Sc. Y. La. Ce. Pr. Nd. 
Pm. Sm. Eu. Gd, Tb, Dv, Ho. Er. Tm. Yb and Lu . 



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CLAIM 527 An apparatus according to claim 525, wherein 
said superconductive current carrying element comprises a 
transition metal . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 528/526/522 

CLAIM 528/526/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 526 An apparatus according to anyone of 
claims 522, 523 or 524, wherein said superconductive 
current carrying element comprises one or more of 
Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, Y, 
La. Ce. Pr. Nd. Pm. Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. 
Yb and Lu . 

CLAIM 528 An apparatus according to claim 526, wherein 
said superconductive current carrying element comprises a 
transition metal . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 



Volume 3 



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persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 528/526/523 

CLAIM 528/526/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 526 An apparatus according to anyone of 
claims 522, 523 or 524, wherein said superconductive 
current carrying element comprises one or more of 
Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, Y, 
La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dv, Ho, Er, Tm, 
Yb and Lu . 

CLAIM 528 An apparatus according to claim 526, wherein 
said superconductive current carrying element comprises a 
transition metal . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 



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has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 528/526/524 

CLAIM 528/526/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 526 An apparatus according to anyone of 
claims 522, 523 or 524, wherein said superconductive 
current carrying element comprises one or more of 
Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, Y, 
La. Ce. Pr. Nd. Pm. Sm. Eu. Gd. Tb. Dv. Ho. Er. Tm. 
Yb and Lu . 



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CLAIM 528 An apparatus according to claim 526, wherein 
said superconductive current carrying element comprises a 
transition metal . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 529 

CLAIM recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 529 An apparatus according to claim 522, wherein 
said superconductive current carrying element comprises 
copper oxide . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



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view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 530/522 

CLAIM 530/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 530 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element is substantially perovskite . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



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view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 530/523 

CLAIM 530/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 530 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element is substantially perovskite . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 



Volume 3 



Page 1725 of 1770 



1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 530/524 

CLAIM 530/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 530 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element is substantially perovskite . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 



Volume 3 



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come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 531/522 

CLAIM 531/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 531 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a perovskite-like structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



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view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 531/523 

CLAIM 531/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 531 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a perovskite-like structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 



Volume 3 



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1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 531/524 

CLAIM 531/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 531 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a perovskite-like structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 



Volume 3 



Page 1733 of 1770 



come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 532/522 

CLAIM 532/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 532 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a perovskite related structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



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view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 532/523 

CLAIM 532/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 532 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a perovskite related structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 



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1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 532/524 

CLAIM 532/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 532 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a perovskite related structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 



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come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 533/522 

CLAIM 533/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 533 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a nonstoichiometric amount of 
oxygen . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 



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has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 533/523 

CLAIM 533/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 533 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a nonstoichiometric amount of 
oxygen . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 



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Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 533/524 

CLAIM 533/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 533 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a nonstoichiometric amount of 
oxygen . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 



Volume 3 



Page 1745 of 1770 



Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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Page 1746 of 1770 



CLAIM 534/522 

CLAIM 534/522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 534 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a layered structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



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view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



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CLAIM 534/523 

CLAIM 534/523 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 534 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a layered structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 



Volume 3 



Page 1749 of 1770 



1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1750 of 1770 



CLAIM 534/524 

CLAIM 534/524 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
composition that can be made according to known principles 
of ceramic science . 

CLAIM 523 An apparatus according to claim 522, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 524 An apparatus according to claim 523, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 534 An apparatus according to anyone of claims 
522, 523 or 524, wherein said superconductive current 
carrying element comprises a layered structure . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 



Volume 3 



Page 1751 of 1770 



come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1752 of 1770 



CLAIM 535 



CLAIM 535 recites: 

CLAIM 535 An apparatus comprising a superconductor 
exhibiting a superconducting onset at an onset temperature 
greater than or equal to 26°K, said superconductor being 
comprised of at least four elements, none of which is a 
means for carrying a superconducting current at a 
temperature greater than or equal to 26°K ,a temperature 
means for maintaining said superconductor at an operating 
temperature in excess of said onset temperature to maintain 
said superconductor in a superconducting state and a 
means for passing current through said superconductor 
while in said superconducting state. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



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view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 536 

CLAIM 536 recites: 

CLAIM 536 An apparatus comprising: 

a means for carrying a superconductive current exhibiting a 
superconductive state at a temperature greater than or equal 
to 26°K, 

a cooler for cooling said composition to a temperature 
greater than or equal to 26°K at which temperature said 
means for carrying a superconductive current exhibits said 
superconductive state, and 

a current source for passing an electrical current through 
said composition while said composition is in said 
superconductive state. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 



Volume 3 



Page 1755 of 1770 



Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

This claim is in means plus function form and under In re Donaldson 29 USPQ 
2d1845 (Fed. Cir. 1994) should be allowed since the Examiner has allowed 
claims to the specific examples described in Applicants' specification which 
corresponds to all of the allowed claims. The Examiner provides no reason for 
not following In re Donaldson. 



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Page 1756 of 1770 



CLAIM 537 



CLAIM 537 recites: 

CLAIM 537 An apparatus comprising: 

a metallic, oxygen-deficient, perovskite-like, mixed valent 
transition metal composition exhibiting a superconductive 
state at a temperature greater than or equal to 26°K, 

a temperature controller maintaining said composition at a 
temperature greater than or equal to 26°K at which 
temperature said composition exhibits said superconductive 
state, and 

a current source passing an electrical current through said 
composition while said composition is in said 
superconductive state. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 



Volume 3 



Page 1757 of 1770 



Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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Page 1758 of 1770 



CLAIM 538 



CLAIM 538 recites: 

CLAIM 537 An apparatus comprising: 

a metallic, oxygen-deficient, perovskite-like, mixed valent 
transition metal composition exhibiting a superconductive 
state at a temperature greater than or equal to 26°K, 

a temperature controller maintaining said composition at a 
temperature greater than or equal to 26°K at which 
temperature said composition exhibits said superconductive 
state, and 

a current source passing an electrical current through said 
composition while said composition is in said 
superconductive state. 

CLAIM 538 The apparatus of claim 537, where said means 
for carrying a superconductive current is comprised of a 
metal oxide . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 



Volume 3 



Page 1759 of 1770 



without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 539 



CLAIM 539 recites: 

CLAIM 537 An apparatus comprising: 

a metallic, oxygen-deficient, perovskite-like, mixed valent 
transition metal composition exhibiting a superconductive 
state at a temperature greater than or equal to 26°K, 

a temperature controller maintaining said composition at a 
temperature greater than or equal to 26°K at which 
temperature said composition exhibits said superconductive 
state, and 

a current source passing an electrical current through said 
composition while said composition is in said 
superconductive state. 

CLAIM 539 The apparatus of claim 537, where said means 
for carrying a superconductive current is comprised of a 
transition metal oxide . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 



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Page 1761 of 1770 



without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 540 



CLAIM 540 recites: 

CLAIM 540 An apparatus comprising: 

a composition comprising oxygen exhibiting a 
superconductive state at a temperature greater than or equal 
to 26°K, a temperature controller for maintaining said 
composition at a temperature greater than or equal to 26°K 
at which temperature said composition exhibits said 
superconductive state, and 

a source of an electrical current through said composition 
while said composition is in said superconductive state. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 



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view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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CLAIM 541 



CLAIM 541 recites: 

CLAIM 540 An apparatus comprising: 

a composition comprising oxygen exhibiting a 
superconductive state at a temperature greater than or equal 
to 26°K, a temperature controller for maintaining said 
composition at a temperature greater than or equal to 26°K 
at which temperature said composition exhibits said 
superconductive state, and 

a source of an electrical current through said composition 
while said composition is in said superconductive state. 

CLAIM 541 An apparatus according to claim 540, where 
said composition is comprised of a metal oxide . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 



Volume 3 



Page 1765 of 1770 



Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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Page 1766 of 1770 



CLAIM 542 



CLAIM 542 recites: 

CLAIM 540 An apparatus comprising: 

a composition comprising oxygen exhibiting a 
superconductive state at a temperature greater than or equal 
to 26°K, a temperature controller for maintaining said 
composition at a temperature greater than or equal to 26°K 
at which temperature said composition exhibits said 
superconductive state, and 

a source of an electrical current through said composition 
while said composition is in said superconductive state. 

CLAIM 541 An apparatus according to claim 540, where 
said composition is comprised of a metal oxide . 

CLAIM 542 An apparatus according to claim 541 , where 
said composition is comprised of a transition metal oxide . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 



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Page 1767 of 1770 



Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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Page 1768 of 1770 



CLAIM 543 



CLAIM 543 recites: 

CLAIM 543 A combination, comprising: 

an oxygen containing composition exhibiting the onset of a 
DC substantially zero resistance state at an onset 
temperature in excess of 30°K , and 

means for passing an electrical current through said 
composition while it is in said substantially zero resistance 
state. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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Respectfully submitted, 



/Daniel P Morris/ 

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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