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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 444-487 



CORRECTED APPEAL BRIEF 



Part VII 



CFR37 §41.37(c)(1)(vii) 



VOLUME 3 



Part 7 



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 444/438 



CLAIM 444/436 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 444 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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 
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 444/439 



CLAIM 444/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 444 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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 



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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. 



Volume 3 



Page 1391 of 1770 



CLAIM 444/440 



CLAIM 444/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 444 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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, 



Volume 3 



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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 1393 of 1770 



CLAIM 445/438 



CLAIM 445/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 445 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a substantially 
perovskite 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 
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 445/439 



CLAIM 445/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 445 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a substantially 
perovskite 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, 



Volume 3 



Page 1395 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 1396 of 1770 



CLAIM 445/440 



CLAIM 445/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 445 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a substantially 
perovskite 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 



Volume 3 



Page 1397 of 1770 



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 1398 of 1770 



CLAIM 446/438 



CLAIM 446/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 446 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1399 of 1770 



CLAIM 446/439 



CLAIM 446/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 446 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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, 



Volume 3 



Page 1400 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 1401 of 1770 



CLAIM 446/440 



CLAIM 446/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 446 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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 



Volume 3 



Page 1402 of 1770 



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 1403 of 1770 



CLAIM 447/438 



CLAIM 447/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 447 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1404 of 1770 



CLAIM 447/439 



CLAIM 447/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 447 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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, 



Volume 3 



Page 1405 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 1406 of 1770 



CLAIM 447/440 



CLAIM 447/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 447 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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 



Volume 3 



Page 1407 of 1770 



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 1408 of 1770 



CLAIM 448/438 



CLAIM 448/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 448 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a structure having a 
perovskite characteristic . 

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 



Page 1409 of 1770 



CLAIM 448/439 



CLAIM 448/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 448 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a structure having a 
perovskite characteristic . 

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 1410 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 1411 of 1770 



CLAIM 448/440 



CLAIM 448/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 448 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a structure having a 
perovskite characteristic . 

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 



Volume 3 



Page 1412 of 1770 



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 1413 of 1770 



CLAIM 449/438 



CLAIM 449/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 449 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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. 



Volume 3 



Page 1414 of 1770 



CLAIM 449/439 



CLAIM 449/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 449 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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 



Volume 3 



Page 1415 of 1770 



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 1416 of 1770 



CLAIM 449/440 



CLAIM 449/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 449 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current 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 



Volume 3 



Page 1417 of 1770 



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 1418 of 1770 



CLAIM 450/438 



CLAIM 450/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 450 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a 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 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



Volume 3 



Page 1419 of 1770 



CLAIM 450/439 



CLAIM 450/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 450 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a 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 



Volume 3 



Page 1420 of 1770 



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 1421 of 1770 



CLAIM 450/440 



CLAIM 450/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 450 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a 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, 



Volume 3 



Page 1422 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 1423 of 1770 



CLAIM 451/438 



CLAIM 451/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 451 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises oxygen in a 
nonstoichiomeric amount . 

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 



Page 1424 of 1770 



CLAIM 451/439 



CLAIM 451/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 451 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises oxygen in a 
nonstoichiomeric amount . 

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 1425 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 1426 of 1770 



CLAIM 451/440 



CLAIM 451/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 451 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises oxygen in a 
nonstoichiomeric amount . 

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 



Volume 3 



Page 1427 of 1770 



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 1428 of 1770 



CLAIM 452/438 



CLAIM 452/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 452 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a multivalent 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. 



Volume 3 



Page 1429 of 1770 



CLAIM 452/439 



CLAIM 452/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 452 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a multivalent 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, 



Volume 3 



Page 1430 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 1431 of 1770 



CLAIM 452/440 



CLAIM 452/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 452 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a multivalent 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 



Volume 3 



Page 1432 of 1770 



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 1433 of 1770 



CLAIM 453/438 



CLAIM 453/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 453 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current 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. 



Volume 3 



Page 1434 of 1770 



CLAIM 453/439 



CLAIM 453/439 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 453 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current 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, 



Volume 3 



Page 1435 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. 

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 1436 of 1770 



CLAIM 453/440 



CLAIM 453/440 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 453 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current 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 



Volume 3 



Page 1437 of 1770 



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 1438 of 1770 



CLAIM 454/441/438 



CLAIM 454/441/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 441 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current comprises oxygen . 

CLAIM 454 An apparatus according to claim 441 , wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1439 of 1770 



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 1440 of 1770 



CLAIM 454/441/439/438 



CLAIM 454/441/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 441 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current comprises oxygen . 

CLAIM 454 An apparatus according to claim 441 , wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1441 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. 

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 1442 of 1770 



CLAIM 454/441/440/438 



CLAIM 454/441/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 441 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current comprises oxygen . 

CLAIM 454 An apparatus according to claim 441 , wherein 
said means for conducting a superconducting current 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 



Page 1443 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. 

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 1444 of 1770 



CLAIM 455/442/438 



CLAIM 455/442/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 442 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises one or more of the 
groups 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 455 An apparatus according to claim 442, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1445 of 1770 



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 1446 of 1770 



CLAIM 455/442/439/438 



CLAIM 455/442/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 442 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises one or more of the 
groups 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 455 An apparatus according to claim 442, wherein 
said means for conducting a superconducting current 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 



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. 

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 1448 of 1770 



CLAIM 455/442/440/438 



CLAIM 455/442/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 442 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises one or more of the 
groups 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 455 An apparatus according to claim 442, wherein 
said means for conducting a superconducting current 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 



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. 

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 1450 of 1770 



CLAIM 456/443/438 



CLAIM 456/443/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 443 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current 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 456 An apparatus according to claim 443, wherein 
said means for conducting a superconducting current 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 



Volume 3 



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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. 

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 1452 of 1770 



CLAIM 456/443/439/438 



CLAIM 456/443/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 443 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current 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 456 An apparatus according to claim 443, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1453 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. 

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 1454 of 1770 



CLAIM 456/443/440/438 



CLAIM 456/443/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 443 An apparatus according to anyone of claims 
438, 439 or 440, wherein said means for conducting a 
superconducting current 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 456 An apparatus according to claim 443, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1455 of 1770 



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 1456 of 1770 



CLAIM 457/444/438 



CLAIM 457/444/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 444 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a layered structure . 

CLAIM 457 An apparatus according to claim 444, wherein 
said means for conducting a superconducting current 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 



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. 

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 1458 of 1770 



CLAIM 457/444/439/438 



CLAIM 457/444/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 444 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a layered structure . 

CLAIM 457 An apparatus according to claim 444, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1459 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. 

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 1460 of 1770 



CLAIM 457/444/440/438 



CLAIM 457/444/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 444 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a layered structure . 

CLAIM 457 An apparatus according to claim 444, wherein 
said means for conducting a superconducting current 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 



Page 1461 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. 

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 1462 of 1770 



CLAIM 458/445/438 



CLAIM 458/445/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 445 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a substantially 
perovskite structure . 

CLAIM 458 An apparatus according to claim 445, wherein 
said means for conducting a superconducting current 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, 



Volume 3 



Page 1463 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. 

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 1464 of 1770 



CLAIM 458/445/439/438 



CLAIM 458/445/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 445 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a substantially 
perovskite structure . 

CLAIM 458 An apparatus according to claim 445, wherein 
said means for conducting a superconducting current 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 



Page 1465 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. 

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 1466 of 1770 



CLAIM 458/445/440/438 



CLAIM 458/445/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 445 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a substantially 
perovskite structure . 

CLAIM 458 An apparatus according to claim 445, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1467 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. 

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 1468 of 1770 



CLAIM 459/446/438 



CLAIM 459/446/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 446 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a perovskite-like 
structure . 

CLAIM 459 An apparatus according to claim 446, wherein 
said means for conducting a superconducting current 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, 



Volume 3 



Page 1469 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. 

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 1470 of 1770 



CLAIM 459/446/439/438 



CLAIM 459/446/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 446 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a perovskite-like 
structure . 

CLAIM 459 An apparatus according to claim 446, wherein 
said means for conducting a superconducting current 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 



Page 1471 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. 

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 1472 of 1770 



CLAIM 459/446/440/438 



CLAIM 459/446/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 446 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a perovskite-like 
structure . 

CLAIM 459 An apparatus according to claim 446, wherein 
said means for conducting a superconducting current 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 



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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. 

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 1474 of 1770 



CLAIM 460/447/438 



CLAIM 460/447/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 447 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a perovskite related 
structure . 

CLAIM 460 An apparatus according to claim 447, wherein 
said means for conducting a superconducting current 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, 



Volume 3 



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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 1476 of 1770 



CLAIM 460/447/439/438 



CLAIM 460/447439//438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 447 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a perovskite related 
structure . 

CLAIM 460 An apparatus according to claim 447, wherein 
said means for conducting a superconducting current 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 



Page 1477 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. 

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 1478 of 1770 



CLAIM 460/446/440/438 



CLAIM 460/446/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 447 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a perovskite related 
structure . 

CLAIM 460 An apparatus according to claim 447, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1479 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. 

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 1480 of 1770 



CLAIM 461/448/438 



CLAIM 461/448/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 448 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a structure having a 
perovskite characteristic . 

CLAIM 461 An apparatus according to claim 448, wherein 
said means for conducting a superconducting current 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, 



Volume 3 



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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 1482 of 1770 



CLAIM 461/448/439/438 



CLAIM 461/448/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 448 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a structure having a 
perovskite characteristic . 

CLAIM 461 An apparatus according to claim 448, wherein 
said means for conducting a superconducting current 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 



Page 1483 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. 

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 1484 of 1770 



CLAIM 461/448/440/438 



CLAIM 461/448/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 448 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a structure having a 
perovskite characteristic . 

CLAIM 461 An apparatus according to claim 448, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1485 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. 

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 1486 of 1770 



CLAIM 462/449/438 

CLAIM 462/449/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 449 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a transition metal . 

CLAIM 462 An apparatus according to claim 449, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1487 of 1770 



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 1488 of 1770 



CLAIM 462/449/439/438 

CLAIM 462/449/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 449 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a transition metal . 

CLAIM 462 An apparatus according to claim 449, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1489 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. 

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 1490 of 1770 



CLAIM 462/449/440/438 



CLAIM 462/449/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 449 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a transition metal . 

CLAIM 462 An apparatus according to claim 449, wherein 
said means for conducting a superconducting current 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 



Page 1491 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. 

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 1492 of 1770 



CLAIM 463/450/438 



CLAIM 463/450/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 450 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a copper oxide . 

CLAIM 463 An apparatus according to claim 450, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1493 of 1770 



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 1494 of 1770 



CLAIM 463/450/439/438 



CLAIM 463/450/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 450 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a copper oxide . 

CLAIM 463 An apparatus according to claim 450, wherein 
said means for conducting a superconducting current 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 



Volume 3 



Page 1495 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. 

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 1496 of 1770 



CLAIM 463/450/440/438 



CLAIM 463/450/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 450 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a copper oxide . 

CLAIM 463 An apparatus according to claim 450, wherein 
said means for conducting a superconducting current 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 



Page 1497 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. 

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 1498 of 1770 



CLAIM 464/451/438 



CLAIM 464/451/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 451 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises oxygen in a 
nonstoichiomeric amount . 

CLAIM 464 An apparatus according to claim 451 , wherein 
said means for conducting a superconducting current 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, 



Volume 3 



Page 1499 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. 

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 1500 of 1770 



CLAIM 464/451/439/438 



CLAIM 464/451/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 451 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises oxygen in a 
nonstoichiomeric amount . 

CLAIM 464 An apparatus according to claim 451 , wherein 
said means for conducting a superconducting current 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 



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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. 



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CLAIM 464/451/440/438 



CLAIM 464/451/440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 451 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises oxygen in a 
nonstoichiomeric amount . 

CLAIM 464 An apparatus according to claim 451 , wherein 
said means for conducting a superconducting current 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 



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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. 

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 465/452/438 



CLAIM 465/452/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 452 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a multivalent transition 
metal . 

CLAIM 465 An apparatus according to claim 452, wherein 
said means for conducting a superconducting current 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, 



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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 465/452/439/438 



CLAIM 465/452/439/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein 
said means for conducting a superconductive current 
comprises a Tc greater than or equal to 26°K . 

CLAIM 452 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a multivalent transition 
metal . 

CLAIM 465 An apparatus according to claim 452, wherein 
said means for conducting a superconducting current 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 



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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. 



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CLAIM 465/452/440/438 



CLAIM 465/452440/438 recites: 

CLAIM 438 An apparatus comprising: a means for 
conducting a superconducting current at a temperature 
greater than or equal to 26°K and a current source for 
providing an electric current to flow in said means for 
conducting a superconducting current. 

CLAIM 440 An apparatus according to claim 438, further 
including a temperature controller for maintaining said 
means for conducting a superconducting current at a said 
temperature . 

CLAIM 452 An apparatus according to anyone of claims 
438, 439 and 440, wherein said means for conducting a 
superconducting current comprises a multivalent transition 
metal . 

CLAIM 465 An apparatus according to claim 452, wherein 
said means for conducting a superconducting current 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 



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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. 

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 466 

CLAIM 466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

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. 

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. 



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CLAIM 467 



CLAIM 467 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 467 An apparatus according to claim 466, 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 



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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 468 



CLAIM 468 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 468 An apparatus according to claim 466, 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 



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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 469/466 



CLAIM 469/466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 



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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 469/467 



CLAIM 469/467 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 467 An apparatus according to claim 466, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 



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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 469/468 



CLAIM 469/468 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 468 An apparatus according to claim 466, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 



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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 470/466 



CLAIM 470/466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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 



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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 470/467 



CLAIM 470/467 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 467 An apparatus according to claim 466, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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 



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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 470/468 

CLAIM 470/468 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 468 An apparatus according to claim 466, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 



CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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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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 471/469/466 



CLAIM 471/469/466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 471 An apparatus according to claim 469, 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 



Volume 3 



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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 471/469/467 

CLAIM 471/469//467 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 467 An apparatus according to claim 466, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 471 An apparatus according to claim 469, wherein 
said superconductive current carrying element comprises a 
transition metal . 



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 471/469/468 

CLAIM 471/469/468 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 468 An apparatus according to claim 466, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 471 An apparatus according to claim 469, wherein 
said superconductive current carrying element comprises a 
transition metal . 



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 



Page 1534 of 1770 



CLAIM 472/470/466 



CLAIM 472/470/466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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 472 An apparatus according to claim 470, 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 



Volume 3 



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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 



Page 1536 of 1770 



CLAIM 472/470/467 

CLAIM 472/470/467 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 467 An apparatus according to claim 466, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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 472 An apparatus according to claim 470, wherein 
said superconductive current carrying element comprises a 
transition metal . 



Volume 3 



Page 1537 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. 



Volume 3 



Page 1538 of 1770 



CLAIM 472/470/468 

CLAIM 472/470/468 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 468 An apparatus according to claim 466, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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 472 An apparatus according to claim 470, wherein 
said superconductive current carrying element comprises a 
transition metal . 



Volume 3 



Page 1539 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. 



Volume 3 



Page 1540 of 1770 



CLAIM 473/466 



CLAIM 473/466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 473 An apparatus according to anyone of claims 
466, 467, or 468, wherein said superconducting 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 



Volume 3 



Page 1541 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. 

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 1542 of 1770 



CLAIM 473/467 



CLAIM 473/467 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 467 An apparatus according to claim 466, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 473 An apparatus according to anyone of claims 
466, 467, or 468, wherein said superconducting 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 



Volume 3 



Page 1543 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. 

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 1544 of 1770 



CLAIM 473/468 



CLAIM 473/468 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 468 An apparatus according to claim 466, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 473 An apparatus according to anyone of claims 
466, 467, or 468, wherein said superconducting 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 



Volume 3 



Page 1545 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. 

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 1546 of 1770 



CLAIM 474/471/469/466 

CLAIM 474/471/469/466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 471 An apparatus according to claim 469, wherein 
said superconductive current carrying element comprises a 
transition metal . 

CLAIM 474 An apparatus according to of claim 471 , 
wherein said superconducting current carrying element can 
be made according to known principles of ceramic science . 



Volume 3 Page 1 547 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 1548 of 1770 



CLAIM 474/471/469/467 

CLAIM 474/471/469/467 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 467 An apparatus according to claim 466, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 471 An apparatus according to claim 469, wherein 
said superconductive current carrying element comprises a 
transition metal . 



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Page 1549 of 1770 



CLAIM 474 An apparatus according to of claim 471 , 
wherein said superconducting 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. 



Volume 3 



Page 1550 of 1770 



CLAIM 474/471/469/468 

CLAIM 474/471/469/468 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 468 An apparatus according to claim 466, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 469 An apparatus according to anyone of claims 
466, 467 or 468, 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 471 An apparatus according to claim 469, wherein 
said superconductive current carrying element comprises a 
transition metal . 



Volume 3 



Page 1551 of 1770 



CLAIM 474 An apparatus according to of claim 471 , 
wherein said superconducting 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. 



Volume 3 



Page 1552 of 1770 



CLAIM 475/472/470/466 

CLAIM 475/472/470/466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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 472 An apparatus according to claim 470, wherein 
said superconductive current carrying element comprises a 
transition metal . 

CLAIM 475 An apparatus according to of claim 472, 
wherein said superconducting current carrying element can 
be made according to known principles of ceramic science . 



Volume 3 Page 1 553 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 1554 of 1770 



CLAIM 475/472/470/467 

CLAIM 475/472/470/467 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 467 An apparatus according to claim 466, wherein 
said superconductive current carrying element is at a 
temperature greater than or equal to 26K . 

CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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 472 An apparatus according to claim 470, wherein 
said superconductive current carrying element comprises a 
transition metal . 



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CLAIM 475 An apparatus according to of claim 472, 
wherein said superconducting 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 475/472/470/468 

CLAIM 475/472/470/468 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a Tc 
>26K 

said superconductive current carrying element comprises a 
property selected from one or more of the group consisting 
of a mixed valent oxide, a transition metal, a mixed valent 
transition metal, a perovskite structure, a perovskite-like 
structure, a perovskite related structure, a layered structure, 
a stoichiomeric or nonstoichiomeric oxygen contents and a 
dopant . 

CLAIM 468 An apparatus according to claim 466, further 
including a temperature controller for maintaining said 
superconductive current carrying element at a temperature 
less than said Tc . 

CLAIM 470 An apparatus according to anyone of claims 
466, 467 or 468, 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 472 An apparatus according to claim 470, wherein 
said superconductive current carrying element comprises a 
transition metal . 



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CLAIM 475 An apparatus according to of claim 472, 
wherein said superconducting 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 476 

CLAIM 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 . 

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 477 

CLAIM 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 . 

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 478 

CLAIM 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 . 

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, 



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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 479/476 

CLAIM 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 . 

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 479/477 

CLAIM 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 . 

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 479/478 

CLAIM 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 . 

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 



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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 480/476 

CLAIM 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 . 

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 480/477 

CLAIM 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 . 

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 480/478 

CLAIM 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 . 

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 



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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 481/479/476 

CLAIM 481/479/476 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 481 An apparatus according to claim 479, 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 



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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 481/479/477 

CLAIM 481/479/477 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 481 An apparatus according to claim 479, 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 481/479/478 

CLAIM 481/479/478 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 481 An apparatus according to claim 479, 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 



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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 482/480/476 

CLAIM 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 . 

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 482/480/477 

CLAIM 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 . 

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 482/480/478 

CLAIM 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 . 

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 



Volume 3 



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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 483 

CLAIM 483 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 . 

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. 



Volume 3 



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CLAIM 484/476 

CLAIM 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 . 

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, 



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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 484/477 

CLAIM 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 . 

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 484/478 

CLAIM 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 . 

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. 

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 1595 of 1770 



CLAIM 485/479/476 

CLAIM 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 . 

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. 

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 1597 of 1770 



CLAIM 485/479/477 

CLAIM 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 . 

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 



Volume 3 



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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. 

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 1599 of 1770 



CLAIM 485/479/478 

CLAIM 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 . 

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 



Volume 3 



Page 1600 of 1770 



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 1601 of 1770 



CLAIM 486/480/476 

CLAIM 486/480/476 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 486 An apparatus according to claim 480, 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 



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. 

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 1603 of 1770 



CLAIM 486/480/477 

CLAIM 486/480/477 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 486 An apparatus according to claim 480, 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 



Volume 3 



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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 1605 of 1770 



CLAIM 486/480/478 

CLAIM 486/480/478 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 486 An apparatus according to claim 480, 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 



Volume 3 



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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. 

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 1607 of 1770 



CLAIM 487/481/479/476 

CLAIM 487/481/479/476 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 481 An apparatus according to claim 479, wherein 
said superconductive current carrying element comprises a 
transition metal . 

CLAIM 487 An apparatus according to claim 481 , 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 1609 of 1770 



CLAIM 487/481/479/477 

CLAIM 487/481/479/477 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 481 An apparatus according to claim 479, wherein 
said superconductive current carrying element comprises a 
transition metal . 

CLAIM 487 An apparatus according to claim 481 , wherein 
said superconductive current carrying element can be made 
according to known principles of ceramic science. 

Volume 3 Page 1610 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 487/481/479/478 

CLAIM 487/481/479/478 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 481 An apparatus according to claim 479, wherein 
said superconductive current carrying element comprises a 
transition metal . 



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CLAIM 487 An apparatus according to claim 481 , 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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Page 1613 of 1770