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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 358-443 



CORRECTED APPEAL BRIEF 



Part VII 



CFR37 §41.37(c)(1)(vii) 



VOLUME 3 



Part 6 



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 358 



Claim 358 which is allowed recites: 

CLAIM 358 An apparatus according to anyone of claims 186 or 221 , wherein 
said superconductive oxide composition can be made according to known 
principles of ceramic science. 



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CLAIM 359/195 



CLAIM 359/195 recites: 

CLAIM 195 An apparatus comprising a current source 
flowing a superconducting electrical current in a copper 
oxide composition of matter comprising a Tc greater than or 
equal to 26°K and a temperature controller maintaining said 
copper oxide composition of matter at a temperature less 
than said Tc. 

CLAIM 359 An apparatus according to anyone of claims 195 
or 230, wherein said copper oxide composition 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. 



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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 359/230 



CLAIM 359/230 recites: 

CLAIM 195 An apparatus comprising a current source 
flowing a superconducting electrical current in a copper 
oxide composition of matter comprising a Tc greater than or 
equal to 26°K and a temperature controller maintaining said 
copper oxide composition of matter at a temperature less 
than said Tc. 

CLAIM 230 An apparatus according to claim 195 wherein 
said copper oxide composition comprises substantially 
layered perovskite crystal structure . 

CLAIM 359 An apparatus according to anyone of claims 195 
or 230, wherein said copper oxide composition 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 360/286 



CLAIM 360/286 recites: 

CLAIM 286 An apparatus comprising a source of a 
superconducting electrical current in a copper oxide 
composition of matter comprising a Tc greater than or equal 
to 26°K and a temperature controller for maintaining said 
copper oxide composition of matter at a temperature less 
than said Tc. 

CLAIM 360 An apparatus according to anyone of claims 286 
or 321 , wherein said copper oxide composition 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. 



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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 360/321 



CLAIM 360/321 recites: 

CLAIM 286 An apparatus comprising a source of a 
superconducting electrical current in a copper oxide 
composition of matter comprising a Tc greater than or equal 
to 26°K and a temperature controller for maintaining said 
copper oxide composition of matter at a temperature less 
than said Tc. 

CLAIM 321 An apparatus according to claim 286 wherein 
said copper oxide composition comprises substantially 
layered perovskite crystal structure . 

CLAIM 360 An apparatus according to anyone of claims 286 
or 321 , wherein said copper oxide composition 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 361 



CLAIM recites: 

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

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



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



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CLAIM 362 



CLAIM 362 recites: 

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

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

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 363 



CLAIM 363 recites: 

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

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

CLAIM 363 The superconducting apparatus of claim 362, 
where said rare earth or element comprising a rare earth 
characteristic is selected from the group consisting of La, 
Nd, and Ce . 

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 364 



CLAIM 364 recites: 

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

CLAIM 364 The superconducting apparatus of claim 361 , 
where said phase is crystalline with a structure comprising 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 



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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 365 



CLAIM 365 recites: 

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

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

CLAIM 365 The superconducting apparatus of claim 362, 
where said phase is crystalline with a structure comprising 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 



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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 366 



CLAIM 366 recites: 

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

CLAIM 366 The superconducting apparatus of claim 361 , 
where said phase exhibits a crystalline structure comprising 
a layered 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 



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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 367 



CLAIM 367 recites: 

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

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

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

CLAIM 15 The combination of claim 12, where said 
superconductive composition includes a multivalent 
transition metal, oxygen, and at least one additional element . 

CLAIM 367 The combination of claim 15, where said 
additional element is a rare earth or an element comprising a 
rare earth 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 



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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 368 



CLAIM 368 recites: 

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

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

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

CLAIM 368 The combination of claim 12, where said 
composition includes a superconducting phase comprising 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 



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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 369 



CLAIM 369 recites: 

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

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

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

CLAIM 20 The combination of claim 12, where said 
composition includes a substituted transition metal oxide . 

CLAIM 369 The combination of claim 20, where said 
substituted transition metal oxide has a structure comprising 
a layered 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 



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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 370 

CLAIM 370 recites: 

CLAIM 27 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, said composition being a substituted Cu-oxide 
including a superconducting phase having a structure which 
is structurally substantially similar to the orthorhombic- 
tetraqonal phase of said composition, means for maintaining 
said composition at a temperature greater than or equal to 
said transition temperature to put said composition in a 
superconducting state; and means for passing current 
through said composition while in said superconducting 
state. 



CLAIM 31 The superconducting apparatus of claim 27, 
where said composition has a crystalline structure which 
enhances electron-phonon interactions to produce 
superconductivity at a temperature greater than or equal to 
26°K . 

CLAIM 370 The superconducting apparatus of claim 31 , 
where said crystalline structure comprises a layered 
characteristic , enhancing the number of Jahn-Teller polarons 
in said composite . 

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 371 



CLAIM 371 recites: 

CLAIM 48 A superconductive apparatus comprising a 
superconductive composition comprised of a transition metal 
oxide having substitutions therein, the amount of said 
substitutions being sufficient to produce sufficient electron- 
phonon interactions in said composition that said 
composition exhibits a superconducting onset at 
temperatures greater than or equal to 26°K, and a source of 
current for passing a superconducting electric current 
through said superconductor. 

CLAIM 371 The superconductive apparatus of claim 48, 
where said substitutions include a rare earth or an element 
comprising a rare earth 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 



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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 372 



CLAIM 372 recites: 

CLAIM 372 A superconductive apparatus comprised of a 
copper oxide comprising a crystalline structure comprising a 
layered characteristic and at least one additional element 
substituted in said crystalline structure, said structure being 
oxygen deficient and exhibiting a superconducting onset 
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 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 



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Page 11 80 of 1770 



CLAIM 373 



CLAIM 373 recites: 

CLAIM 373 A combination, comprised of: 

a copper oxide superconductor having a superconductor 
onset temperature greater than about 26° K including an 
element which results in a mixed valent state in said oxide, 
said oxide being crystalline and comprising a structure 
comprising a layered characteristic , 

means for passing a superconducting current through said 
copper oxide while it is maintained at a temperature greater 
than or equal to 26°K and less than said superconducting 
onset temperature, and 

means for cooling said copper oxide to a superconductive 
state at a temperature greater than or equal to 26°K and less 
than said superconducting onset temperature. 

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 374 



CLAIM 374 recites: 

CLAIM 374 A combination, comprised of: 

a material comprising a ceramic characteristic comprising an 
onset of superconductivity at an onset temperature greater 
than or equal to 26°K, 

means for passing a superconducting electrical current 
through said material comprising a ceramic characteristic 
while said material is maintained at a temperature greater 
than or equal to 26°K and less than said onset temperature, 
and 

means for cooling said superconducting material having a 
ceramic characteristic to a superconductive state at a 
temperature greater than or equal to 26°K and less than said 
onset temperature, said material being superconductive at 
temperatures below said onset temperature and a ceramic at 
temperatures above said onset temperature. 

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 375 

Claim 375 which is allowed recites: 

CLAIM 375 An apparatus comprising a composition 
exhibiting superconductivity at temperatures greater than or 
equal to 26°K, said composition being a material comprising 
a ceramic characteristic in the RE-AE-TM-0 system, where 
RE is a rare earth or near rare earth element, AE is an 
alkaline earth element, TM is a multivalent transition metal 
element having at least two valence states in said 
composition, and O is oxygen, the ratio of the amounts of 
said transition metal in said two valence states being 
determined by the ratio RE : AE, a source of current for 
passing a superconducting electric current in said transition 
metal oxide, and a cooling apparatus for maintaining said 
transition metal oxide below said onset temperature and at a 
temperature greater than or equal to 26°K. 



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CLAIM 376 



CLAIM 376 recites: 

CLAIM 69 A superconductive combination, comprising: 

a superconducting composition exhibiting a superconducting 
transition temperature greater than or equal to 26°K, said 
composition being a transition metal oxide having a distorted 
orthorhombic crystalline structure , and 

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

CLAIM 70 The combination of claim 69, where said 
transition metal oxide is a mixed copper oxide . 

CLAIM 71 The combination of claim 70, where said mixed 
copper oxide includes an alkaline earth element . 

CLAIM 376 The combination of claim 71 , where said mixed 
copper oxide further includes a rare earth or an element 
comprising a rare earth 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 



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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 377 



Claim 377 is withdrawn. 



Claim 378 is withdrawn. 



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CLAIM 379 



CLAIM 379 which is allowed recites: 

CLAIM 379 A combination, comprising: 

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

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



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CLAIM 380 



CLAIM 380 which is allowed recites: 



CLAIM 380 The combination of claim 379, wherein said 
crystalline structure comprises a perovskite characteristic. 



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CLAIM 381 

Claim 381 which is allowed recites: 

CLAIM 381 An apparatus comprising a superconductor 
having a superconducting onset temperature greater than or 
equal to 26°K, said superconductor being comprised of a 
rare earth or an element (RE) comprising a rare earth 
characteristic, an alkaline earth element (AE), a transition 
metal element (TM), and Oxygen (O) and having the general 
formula RE-AE-TM-O, said superconductor being made by a 
method comprising the steps of combining said rare earth or 
element comprising a rare earth characteristic, said alkaline 
earth element and said transition metal element in the 
presence of oxygen to produce a mixed transition metal 
oxide including said rare earth or element comprising a rare 
earth characteristic and said alkaline earth element therein, 
and 

heating said mixed transition metal oxide to produce 
superconductor having a crystalline structure comprising a 
layered characteristic and exhibiting a superconducting 
onset temperature greater than or equal to 26°K, said 
superconductor having a non-stoichiometric amount of 
oxygen therein. 



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CLAIM 382 



CLAIM 382 recites: 

CLAIM 93 An apparatus, comprising: 

a mixed copper oxide material exhibiting an onset of 
superconductivity at an onset temperature greater than or 
equal to 26°K, and 

a current source for producing an electrical current through 
said copper oxide material while it is in a superconducting 
state at a temperature greater than or equal to 26°K. 

CLAIM 382 The apparatus of claim 93, where said copper 
oxide material exhibits a crystalline structure comprising a 
layered 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 



Volume 3 



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



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Page 11 93 of 1770 



CLAIM 383 



CLAIM 383 recites: 

CLAIM 383 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

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



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. 



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Page 11 95 of 1770 



CLAIM 384 

Claim 384 which is allowed recites: 

CLAIM 384 The superconductive apparatus according to 
claim 383 in which the copper-oxide compound of the 
superconductive composition includes at least one rare-earth 
or element comprising a rare earth characteristic and at least 
one alkaline-earth element. 

CLAIM 385 

Claim 385 which is allowed recites: 

CLAIM 385 The superconductive apparatus according to 
claim 384 in which the rare-earth or element comprising a 
rare earth characteristic is lanthanum. 

CLAIM 386 

Claim 386 which is allowed recites: 

CLAIM 386 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 



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structure comprising a layered characteristic and a 
perovskite characteristic, the copper-oxide compound 
including at least one rare-earth or element comprising a 
rare earth characteristic and at least one alkaline-earth 
element, the composition having a superconductive/resistive 
transition defining a superconductive/resistive-transition 
temperature range between an upper limit defined by a 
transition-onset temperature Tc and a lower limit defined by 
an effectively-zero-bulk-resistivity intercept temperature 
Tq=o, the transition-onset temperature Tc being greater than 
or equal to 26°K; 

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

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

CLAIM 387 

Claim 387 which is allowed recites: 

CLAIM 387 The superconductive apparatus according to 
claim 386 in which the rare-earth or an element comprising a 
rare earth characteristic is lanthanum. 



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CLAIM 388 

Claim 388 which is allowed recites: 

CLAIM 388 An apparatus comprising: 

a composition including a transition metal, a rare earth or an 
element comprising a rare earth characteristic, an alkaline 
earth element, and oxygen, where said composition is a 
mixed transition metal oxide having a non-stoichiometric 
amount of oxygen therein and exhibiting a superconducting 
state at a temperature greater than or equal to 26°K, 

a temperature controller maintaining said composition in said 
superconducting state at a temperature greater than or equal 
to 26°K, and 

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



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CLAIM 389 



CLAIM 389 recites: 

CLAIM 389 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

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



Volume 3 



Page 11 99 of 1770 



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



Volume 3 



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CLAIM 390 

Claim 390 which is allowed recites: 

CLAIM 390 The superconductive apparatus according to 
claim 389 in which the copper-oxide compound of the 
superconductive composition includes at least one rare-earth 
or an element comprising a rare earth characteristic and at 
least one alkaline-earth element. 

CLAIM 391 

Claim 391 which is allowed recites: 

CLAIM 391 The superconductive apparatus according to 
claim 390 in which the rare-earth or an element comprising a 
rare earth characteristic is lanthanum. 

CLAIM 392 

Claim 392 which is allowed recites: 

CLAIM 392 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a crystal 



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Page 1201 of 1770 



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

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

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

CLAIM 393 

Claim 393 which is allowed recites: 

CLAIM 393 The superconductive apparatus according to 
claim 392 in which the rare-earth or an element comprising a 
rare earth characteristic is lanthanum. 



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Page 1202 of 1770 



CLAIM 394 



CLAIM 394 recites: 

CLAIM 394 An apparatus for causing electric-current flow in 
a superconductive state at a temperature greater than or 
equal to 26°K, comprising: 

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

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

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

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



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 1204 of 1770 



CLAIM 395 

CLAIM 395 recites: 

CLAIM 395 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

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

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

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



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Page 1205 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. 



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Page 1206 of 1770 



CLAIM 396 

Claim 396 which is allowed recites: 

CLAIM 396 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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



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CLAIM 397 

Claim 397 which is allowed recites: 

CLAIM 397 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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



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

CLAIM 398 

Claim 398 which is allowed recites: 

CLAIM 398 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, 
comprising: 

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

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



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

CLAIM 399 

Claim 399 which is allowed recites: 

CLAIM 399 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bu Ik- 



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resistivity intercept temperature Tp=0 of the superconductive 
composition; and 

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

CLAIM 400 

Claim 400 which is allowed recites: 

CLAIM 400 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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



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

CLAIM 401 

Claim 401 which is allowed recites: 

CLAIM 401 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

(b) a temperature controller maintaining the superconductor 
element at a temperature below the effectively-zero-bulk- 



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resistivity intercept temperature Tp=0 of the superconductive 
composition; and 

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



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Page 1213 of 1770 



CLAIM 402 



CLAIM 402 recites: 

CLAIM 402 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

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

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

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

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



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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 403 

Claim 403 which is allowed recites: 

CLAIM 403 An apparatus according to claim 402 in which 
the copper-oxide compound of the superconductive 
composition includes at least one rare-earth or an element 
comprising a rare earth characteristic and at least one 
alkaline-earth element. 



CLAIM 404 

Claim 404 which is allowed recites: 

CLAIM 404 An apparatus according to claim 403 in which 
the rare-earth or element comprising a rare earth 
characteristic is lanthanum. 



CLAIM 405 

Claim 405 which is allowed recites: 

CLAIM 405 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound comprising a layer- 
type perovskite-like crystal structure, the copper-oxide 



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compound comprising at least one rare-earth or element 
comprising a rare earth characteristic and at least one 
alkaline-earth element, the composition comprising a 
superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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

CLAIM 406 

Claim 406 which is allowed recites: 

CLAIM 406 An apparatus according to claim 405 in which 
the rare-earth or element comprising a rare earth 
characteristic is lanthanum. 



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CLAIM 407 



CLAIM 407 recites: 

CLAIM 407 An apparatus capable of carrying an electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

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

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

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

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



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



Volume 3 



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CLAIM 408 

CLAIM 408 recites: 

CLAIM 408 An apparatus capable of carrying an electric 
current essentially without resistive losses, comprising: 

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

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

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



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. 



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CLAIM 409 

Claim 409 which is allowed recites: 

CLAIM 409 An apparatus capable of carrying an electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

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

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

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



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CLAIM 410 

Claim 410 which is allowed recites: 

CLAIM 410 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

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

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

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



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CLAIM 411 

Claim 41 1 which is allowed recites: 

CLAIM 41 1 An apparatus capable of carrying an electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

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

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

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



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CLAIM 412 

Claim 412 which is allowed recites: 

CLAIM 412 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

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

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

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



Volume 3 



Page 1225 of 1770 



CLAIM 413 

Claim 413 which is allowed recites: 

CLAIM 413 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

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

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



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



Volume 3 



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CLAIM 414/361 



CLAIM 414/361 recites: 

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

CLAIM 414 A superconducting apparatus according to 
anyone of claims 361-365 or 366, wherein said composition 
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 



Volume 3 



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

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 1229 of 1770 



CLAIM 414/362 



CLAIM 414/362 recites: 

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

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

CLAIM 414 A superconducting apparatus according to 
anyone of claims 361-365 or 366, wherein said composition 
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 1230 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 1231 of 1770 



CLAIM 414/363 

CLAIM 41 4/363 recites: 

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

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

CLAIM 363 The superconducting apparatus of claim 362, 
where said rare earth or element comprising a rare earth 
characteristic is selected from the group consisting of La, 
Nd, and Ce . 

CLAIM 414 A superconducting apparatus according to 
anyone of claims 361-365 or 366, wherein said composition 
can be made according to known principles of ceramic 
science . 



Volume 3 



Page 1232 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. 



Volume 3 



Page 1233 of 1770 



CLAIM 414/364 



CLAIM 414/364 recites: 

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

CLAIM 364 The superconducting apparatus of claim 361 , 
where said phase is crystalline with a structure comprising a 
perovskite characteristic . 

CLAIM 414 A superconducting apparatus according to 
anyone of claims 361-365 or 366, wherein said composition 
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 1234 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 1235 of 1770 



CLAIM 414/365 

CLAIM 41 4/365 recites: 

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

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

CLAIM 365 The superconducting apparatus of claim 362, 
where said phase is crystalline with a structure comprising a 
perovskite characteristic . 

CLAIM 414 A superconducting apparatus according to 
anyone of claims 361-365 or 366, wherein said composition 
can be made according to known principles of ceramic 
science . 



Volume 3 



Page 1236 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. 



Volume 3 



Page 1237 of 1770 



CLAIM 414/366 



CLAIM 414/366 recites: 

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

CLAIM 366 The superconducting apparatus of claim 361 , 
where said phase exhibits a crystalline structure comprising 
a layered characteristic . 

CLAIM 414 A superconducting apparatus according to 
anyone of claims 361-365 or 366, wherein said composition 
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 1239 of 1770 



CLAIM 415/367 

CLAIM 41 5/367 recites: 

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

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

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

CLAIM 15 The combination of claim 12, where said 
superconductive composition includes a multivalent 
transition metal, oxygen, and at least one additional element . 

CLAIM 367 The combination of claim 15, where said 
additional element is a rare earth or an element comprising a 
rare earth characteristic . 

CLAIM 415 A superconducting combination according to 
anyone of claims 367, 368 or 369, wherein said composition 
can be made according to known principles of ceramic 
science . 



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Page 1240 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. 



Volume 3 



Page 1241 of 1770 



CLAIM 415/368 



CLAIM 415/368 recites: 

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

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

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

CLAIM 368 The combination of claim 12, where said 
composition includes a superconducting phase comprising a 
perovskite characteristic . 

CLAIM 415 A superconducting combination according to 
anyone of claims 367, 368 or 369, wherein said composition 
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 1242 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 1243 of 1770 



CLAIM 415/369 

CLAIM 41 5/369 recites: 

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

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

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

CLAIM 20 The combination of claim 12, where said 
composition includes a substituted transition metal oxide . 

CLAIM 369 The combination of claim 20, where said 
substituted transition metal oxide has a structure comprising 
a layered characteristic . 

CLAIM 415 A superconducting combination according to 
anyone of claims 367, 368 or 369, wherein said composition 
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 1244 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 1245 of 1770 



CLAIM 416/370 

CLAIM 41 6/370 recites: 

CLAIM 27 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, said composition being a substituted Cu-oxide 
including a superconducting phase having a structure which 
is structurally substantially similar to the orthorhombic- 
tetraqonal phase of said composition, means for maintaining 
said composition at a temperature greater than or equal to 
said transition temperature to put said composition in a 
superconducting state; and means for passing current 
through said composition while in said superconducting 
state. 

CLAIM 31 The superconducting apparatus of claim 27, 
where said composition has a crystalline structure which 
enhances electron-phonon interactions to produce 
superconductivity at a temperature greater than or equal to 
26°K . 

CLAIM 370 The superconducting apparatus of claim 31 , 
where said crystalline structure comprises a layered 
characteristic , enhancing the number of Jahn-Teller polarons 
in said composite . 

CLAIM 416 A superconducting apparatus according to 
anyone of claims 370 or 371 , wherein said composition can 
be made according to known principles of ceramic science . 



Volume 3 Page 1 246 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 1247 of 1770 



CLAIM 416/371 



CLAIM 416/371 recites: 

CLAIM 48 A superconductive apparatus comprising a 
superconductive composition comprised of a transition metal 
oxide having substitutions therein, the amount of said 
substitutions being sufficient to produce sufficient electron- 
phonon interactions in said composition that said 
composition exhibits a superconducting onset at 
temperatures greater than or equal to 26°K, and a source of 
current for passing a superconducting electric current 
through said superconductor. 

CLAIM 371 The superconductive apparatus of claim 48, 
where said substitutions include a rare earth or an element 
comprising a rare earth characteristic . 

CLAIM 416 A superconducting apparatus according to 
anyone of claims 370 or 371 , wherein said composition 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 1248 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 1249 of 1770 



CLAIM 417 



CLAIM 417 recites: 

CLAIM 372 A superconductive apparatus comprised of a 
copper oxide comprising a crystalline structure comprising a 
layered characteristic and at least one additional element 
substituted in said crystalline structure, said structure being 
oxygen deficient and exhibiting a superconducting onset 
temperature greater than or equal to 26°K. 

CLAIM 417 A superconducting apparatus according to claim 
372, wherein said copper oxide 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 1250 of 1770 



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 1251 of 1770 



CLAIM 418 



CLAIM 418 recites: 

CLAIM 373 A combination, comprised of: 

a copper oxide superconductor having a superconductor 
onset temperature greater than about 26° K including an 
element which results in a mixed valent state in said oxide, 
said oxide being crystalline and comprising a structure 
comprising a layered characteristic , 

means for passing a superconducting current through said 
copper oxide while it is maintained at a temperature greater 
than or equal to 26°K and less than said superconducting 
onset temperature, and 

means for cooling said copper oxide to a superconductive 
state at a temperature greater than or equal to 26°K and less 
than said superconducting onset temperature. 

CLAIM 418 A combination according to claim 373, wherein 
said copper oxide 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 1252 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 1253 of 1770 



CLAIM 419 



CLAIM 419 recites: 

CLAIM 374 A combination, comprised of: 

a material comprising a ceramic characteristic comprising an 
onset of superconductivity at an onset temperature greater 
than or equal to 26°K, 

means for passing a superconducting electrical current 
through said material comprising a ceramic characteristic 
while said material is maintained at a temperature greater 
than or equal to 26°K and less than said onset temperature, 
and 

means for cooling said superconducting material having a 
ceramic characteristic to a superconductive state at a 
temperature greater than or equal to 26°K and less than said 
onset temperature, said material being superconductive at 
temperatures below said onset temperature and a ceramic at 
temperatures above said onset temperature. 

CLAIM 419 A combination according to claim 374, wherein 
said material can be made by 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 1254 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 1255 of 1770 



CLAIM 420 

CLAIM 420 which is allowed recites: 

CLAIM 420 A apparatus according to claim 375, wherein 
said composition can be made by known principles of 
ceramic science. 



Volume 3 



Page 1256 of 1770 



CLAIM 421 

CLAIM 421 recites: 

CLAIM 69 A superconductive combination, comprising: 

a superconducting composition exhibiting a superconducting 
transition temperature greater than or equal to 26°K, said 
composition being a transition metal oxide having a distorted 
orthorhombic crystalline structure , and 

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

CLAIM 70 The combination of claim 69, where said 
transition metal oxide is a mixed copper oxide . 

CLAIM 71 The combination of claim 70, where said mixed 
copper oxide includes an alkaline earth element . 

CLAIM 376 The combination of claim 71 , where said mixed 
copper oxide further includes a rare earth or an element 
comprising a rare earth characteristic . 

CLAIM 421 A combination according to claim 376, wherein 
said mixed copper oxide can be made by known principles of 
ceramic science . 



Volume 3 



Page 1257 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. 



Volume 3 



Page 1258 of 1770 



CLAIM 422/379 

CLAIM 422/379 recites: 

CLAIM 379 A combination, comprising: 

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

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

CLAIM 422 A combination according to anyone of claims 
379 or 380, wherein said mixed copper oxide can be made 
by known principles of ceramic science . 

This claim should be allowed since claim 379 is allowed. 

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



Volume 3 



Page 1259 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 1260 of 1770 



CLAIM 422/380 



CLAIM 422/380 recites: 



CLAIM 379 A combination, comprising: 



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



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



CLAIM 380 The combination of claim 379, wherein said 
crystalline structure comprises a perovskite characteristic . 

CLAIM 422 A combination according to anyone of claims 
379 or 380, wherein said mixed copper oxide can be made 
by known principles of ceramic science . 



This claim should be allowed since claim 380 is allowed. 



Volume 3 



Page 1261 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. 



Volume 3 



Page 1262 of 1770 



CLAIM 423 



CLAIM 423 recites: 

CLAIM 93 An apparatus, comprising: 

a mixed copper oxide material exhibiting an onset of 
superconductivity at an onset temperature greater than or 
equal to 26°K, and 

a current source for producing an electrical current through 
said copper oxide material while it is in a superconducting 
state at a temperature greater than or equal to 26°K. 

CLAIM 382 The apparatus of claim 93, where said copper 
oxide material exhibits a crystalline structure comprising a 
layered characteristic . 

CLAIM 423 A apparatus according to claim 382, wherein 
said copper oxide material can be made by 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 1263 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 1264 of 1770 



CLAIM 424/383 



CLAIM 424/383 recites: 

CLAIM 383 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 424 A superconductive apparatus according to 
anyone of claims 383, 384, 385, 386, 387 and 389, wherein 
said composition can be made by 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 



Page 1265 of 1770 



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 1266 of 1770 



CLAIM 424/384 

CLAIM 424/384 recites: 

CLAIM 383 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 384 The superconductive apparatus according to 
claim 383 in which the copper-oxide compound of the 
superconductive composition includes at least one rare-earth 
or element comprising a rare earth characteristic and at least 
one alkaline-earth element. 

CLAIM 424 A superconductive apparatus according to 
anyone of claims 383, 384, 385, 386, 387 and 389, wherein 



Volume 3 



Page 1267 of 1770 



said composition can be made by known principles of 
ceramic science . 

This claim should be allowed since claim 384 is allowed. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
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 1268 of 1770 



CLAIM 424/385 

CLAIM 424/385 recites: 

CLAIM 383 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 384 The superconductive apparatus according to 
claim 383 in which the copper-oxide compound of the 
superconductive composition includes at least one rare-earth 
or element comprising a rare earth characteristic and at least 
one alkaline-earth element. 



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CLAIM 385 The superconductive apparatus according to 
claim 384 in which the rare-earth or element comprising a 
rare earth characteristic is lanthanum. 

CLAIM 424 A superconductive apparatus according to 
anyone of claims 383, 384, 385, 386, 387 and 389, wherein 
said composition can be made by known principles of 
ceramic science . 

This claim should be allowed since claim claim 385 is allowed. 

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



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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 424/386 

CLAIM 424/386 recites: 

CLAIM 386 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



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CLAIM 424 A superconductive apparatus according to 
anyone of claims 383, 384, 385, 386, 387 and 389, wherein 
said composition can be made by known principles of 
ceramic science . 

This claim should be allowed since claim 386 is allowed. 

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



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pressure converts them to metals before they exhibit superconducting behavior." 
Applicants discovered that ceramic materials are superconductors. 



Volume 3 



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CLAIM 424/387 

CLAIM 424/387 recites: 

CLAIM 386 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



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CLAIM 387 The superconductive apparatus according to 
claim 386 in which the rare-earth or an element comprising a 
rare earth characteristic is lanthanum. 

CLAIM 424 A superconductive apparatus according to 
anyone of claims 383, 384, 385, 386, 387 and 389, wherein 
said composition can be made by known principles of 
ceramic science . 

This claim should be allowed since claim 387 is allowed. 

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



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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 424/389 

CLAIM 424/389 recites: 

CLAIM 389 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 424 A superconductive apparatus according to 
anyone of claims 383, 384, 385, 386, 387 and 389, wherein 
said composition can be made by 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 



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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 



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CLAIM 425 



CLAIM 425 recites: 

CLAIM 388 An apparatus comprising: 

a composition including a transition metal, a rare earth or an 
element comprising a rare earth characteristic, an alkaline 
earth element, and oxygen, where said composition is a 
mixed transition metal oxide having a non-stoichiometric 
amount of oxygen therein and exhibiting a superconducting 
state at a temperature greater than or equal to 26°K, 

a temperature controller maintaining said composition in said 
superconducting state at a temperature greater than or equal 
to 26°K, and 

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

CLAIM 425 A apparatus according to claim 388, wherein 
said composition can be made according to known principles 
of ceramic science . 

This claim should be allowed since claim 388 is allowed. 

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

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 426/389 

CLAIM 426/389 recites: 

CLAIM 389 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by 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 1283 of 1770 



CLAIM 426/389 

CLAIM 426/389 recites: 

CLAIM 389 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 390 The superconductive apparatus according to 
claim 389 in which the copper-oxide compound of the 
superconductive composition includes at least one rare-earth 
or an element comprising a rare earth characteristic and at 
least one alkaline-earth element. 

CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 



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superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claim 390 is allowed. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
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 1285 of 1770 



CLAIM 426/391 

CLAIM 426/391 recites: 

CLAIM 389 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 390 The superconductive apparatus according to 
claim 389 in which the copper-oxide compound of the 
superconductive composition includes at least one rare-earth 
or an element comprising a rare earth characteristic and at 
least one alkaline-earth element. 



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CLAIM 391 The superconductive apparatus according to 
claim 390 in which the rare-earth or an element comprising a 
rare earth characteristic is lanthanum. 

CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claim 391 is allowed. 

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



Volume 3 



Page 1287 of 1770 



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 1288 of 1770 



CLAIM 426/392 

CLAIM 426/392 recites: 

CLAIM 392 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



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Page 1289 of 1770 



CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claim 392 is allowed. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
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 1290 of 1770 



CLAIM 426/393 

CLAIM 426/393 recites: 

CLAIM 392 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



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CLAIM 393 The superconductive apparatus according to 
claim 392 in which the rare-earth or an element comprising a 
rare earth characteristic is lanthanum. 

CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claim 393 is allowed. 

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



Volume 3 



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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 1293 of 1770 



CLAIM 426/394 

CLAIM 426/394 recites: 

CLAIM 394 An apparatus for causing electric-current flow in 
a superconductive state at a temperature greater than or 
equal to 26°K, comprising: 

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

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

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

CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by known 
principles of ceramic science . 



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Page 1294 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. 



Volume 3 



Page 1295 of 1770 



CLAIM 426/395 

CLAIM 426/395 recites: 

CLAIM 395 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

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

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

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



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CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by 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 



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CLAIM 426/396 

CLAIM 426/396 recites: 

CLAIM 396 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 



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superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claim 396 is allowed. 

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

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



Volume 3 



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CLAIM 426/397 

CLAIM 426/397recites: 

CLAIM 397 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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



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



CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claim 397 is allowed. 

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



Volume 3 



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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 426/398 

CLAIM 426/398 recites: 

CLAIM 398 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, 
comprising: 

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

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

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

CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 



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superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claim 398 is alloed. 

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 



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CLAIM 426/399 

CLAIM 426/399 recites: 

CLAIM 399 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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



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



CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claims 399 is allowed. 

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



Volume 3 



Page 1306 of 1770 



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 1307 of 1770 



CLAIM 426/400 

CLAIM 426/400 recites: 

CLAIM 400 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by known 
principles of ceramic science . 



Volume 3 



Page 1308 of 1770 



This claim should be allowed since claims 400 is allowed. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
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 1309 of 1770 



CLAIM 426/401 

CLAIM 426/401 recites: 

CLAIM 401 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



Volume 3 



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CLAIM 426 A superconductive apparatus according to 
anyone of claims 389 to 400 or 401 , wherein said 
superconductive composition can be made by known 
principles of ceramic science . 

This claim should be allowed since claims 401 is allowed. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
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 1311 of 1770 



CLAIM 427/412 

CLAIM 427/412 recites: 

CLAIM 412 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

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

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

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



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CLAIM 427 A apparatus according to anyone of claims 402 
to 41 2 or 413, wherein said superconductive composition 
can be made by known principles of ceramic science . 

This claim should be allowed since claims 412 is allowed. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
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 1313 of 1770 



CLAIM 427/413 

CLAIM 427/413 recites: 

CLAIM 413 An apparatus for conducting an electric current 
essentially without resistive losses, comprising: 

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

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



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

CLAIM 427 A apparatus according to anyone of claims 402 
to 41 2 or 413, wherein said superconductive composition 
can be made by known principles of ceramic science . 

This claim should be allowed since claims 413 is allowed. 

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



Volume 3 



Page 1315 of 1770 



converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



Volume 3 



Page 1316 of 1770 



CLAIM 428 



CLAIM 428 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of 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 
has given no reason for why this claim is not enabled by Applicants' teaching in 



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



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CLAIM 429 



CLAIM 429 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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

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



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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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Page 1320 of 1770 



CLAIM 430 



CLAIM 430 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 430 An apparatus according to claim 428, wherein 
said composition comprises a substantially 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 



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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 431 

CLAIM recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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



CLAIM 431 An apparatus according to claim 429, wherein 
said composition comprises a substantially layered structure . 



Volume 3 Page 1 323 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. 



Volume 3 



Page 1324 of 1770 



CLAIM 432/428 



CLAIM 432/428 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 432 An apparatus according to anyone of claims 428 
to 430 or 431 , wherein said composition comprises a 
substantially perovskite crystal structure . 

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



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



Volume 3 



Page 1326 of 1770 



CLAIM 432/429 

CLAIM 432/429 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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

CLAIM 432 An apparatus according to anyone of claims 428 
to 430 or 431 , wherein said composition comprises a 
substantially perovskite crystal structure . 



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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 1328 of 1770 



CLAIM 432/430 



CLAIM 432/430 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 430 An apparatus according to claim 428, wherein 
said composition comprises a substantially layered structure . 

CLAIM 432 An apparatus according to anyone of claims 428 
to 430 or 431 , wherein said composition comprises a 
substantially perovskite crystal 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 



Volume 3 



Page 1329 of 1770 



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



Volume 3 



Page 1330 of 1770 



CLAIM 432/431 

CLAIM 432/431 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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



Volume 3 



CLAIM 431 An apparatus according to claim 429, wherein 
said composition comprises a substantially layered structure . 



Page 1331 of 1770 



CLAIM 432 An apparatus according to anyone of claims 428 
to 430 or 431 , wherein said composition comprises a 
substantially perovskite crystal 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 1332 of 1770 



CLAIM 433/428 



CLAIM 433/428 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 433 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition 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 



Volume 3 



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



Volume 3 



Page 1334 of 1770 



CLAIM 433/429 

CLAIM 433/429 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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



Volume 3 



Page 1335 of 1770 



CLAIM 433 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition 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 1336 of 1770 



CLAIM 433/430 



CLAIM 433/430 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 430 An apparatus according to claim 428, wherein 
said composition comprises a substantially layered structure . 

CLAIM 433 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition 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 



Volume 3 



Page 1337 of 1770 



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



Volume 3 



Page 1338 of 1770 



CLAIM 433/431 

CLAIM 433/431 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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



Volume 3 



CLAIM 431 An apparatus according to claim 429, wherein 
said composition comprises a substantially layered structure . 



Page 1339 of 1770 



CLAIM 433 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition 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 1340 of 1770 



CLAIM 434/428 



CLAIM 434/428 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 434 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition comprises 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 



Volume 3 



Page 1341 of 1770 



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



Volume 3 



Page 1342 of 1770 



CLAIM 434/429 

CLAIM 434/429 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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

CLAIM 434 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition comprises a 
perovskite characteristic . 



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Page 1343 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 1344 of 1770 



CLAIM 434/430 



CLAIM 434/430 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 430 An apparatus according to claim 428, wherein 
said composition comprises a substantially layered structure . 

CLAIM 434 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition comprises 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 



Volume 3 



Page 1345 of 1770 



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



Volume 3 



Page 1346 of 1770 



CLAIM 434/431 

CLAIM 434/431 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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



Volume 3 



CLAIM 431 An apparatus according to claim 429, wherein 
said composition comprises a substantially layered structure . 



Page 1347 of 1770 



CLAIM 434 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition comprises 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 1348 of 1770 



CLAIM 435/428 



CLAIM 435/428 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 435 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition 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 



Volume 3 



Page 1349 of 1770 



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



Volume 3 



Page 1350 of 1770 



CLAIM 435/429 

CLAIM 435/428 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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

CLAIM 435 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition comprises a 
perovskite related structure . 



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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 435/430 



CLAIM 435/430 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 430 An apparatus according to claim 428, wherein 
said composition comprises a substantially layered structure . 

CLAIM 435 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition 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 



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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 435/431 

CLAIM 435/431 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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



Volume 3 



CLAIM 431 An apparatus according to claim 429, wherein 
said composition comprises a substantially layered structure . 



Page 1355 of 1770 



CLAIM 435 An apparatus according to any one of claims 
428 to 430 or 431 , wherein said composition 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. 



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CLAIM 436/431 

CLAIM 436/431 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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



CLAIM 431 An apparatus according to claim 429, wherein 
said composition comprises a substantially layered structure . 



Volume 3 Page 1 357 of 1 770 



CLAIM 436 An apparatus according to anyone of claims 428 
to 431 or 432, wherein said composition can be made 
according to known principals 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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converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



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CLAIM 436/432/430/428 

CLAIM 436/432/430/428 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 430 An apparatus according to claim 428, wherein 
said composition comprises a substantially layered structure . 

CLAIM 432 An apparatus according to anyone of claims 428 
to 430 or 431 , wherein said composition comprises a 
substantially perovskite crystal structure . 

CLAIM 436 An apparatus according to anyone of claims 428 
to 431 or 432, wherein said composition can be made 
according to known principals 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 



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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. 



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CLAIM 436/432/431/429/428 

CLAIM 436/432/431 ./429/428 recites: 

CLAIM 428 An apparatus capable of carrying electric 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

a superconductive element comprising a superconductive 
composition, said superconductive composition comprising 
O and at least one element selected from 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: and 

said composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K. 

CLAIM 429 An apparatus according to claim 428, further 
including: 

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

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



Volume 3 



CLAIM 431 An apparatus according to claim 429, wherein 
said composition comprises a substantially layered structure . 



Page 1362 of 1770 



CLAIM 432 An apparatus according to anyone of claims 428 
to 430 or 431 , wherein said composition comprises a 
substantially perovskite crystal structure . 

CLAIM 436 An apparatus according to anyone of claims 428 
to 431 or 432, wherein said composition can be made 
according to known principals 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 



Volume 3 



Page 1363 of 1770 



converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



Volume 3 



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CLAIM 437 

CLAIM 437 recites: 

CLAIM 88 An apparatus comprising: 

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

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

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

CLAIM 437 An apparatus according to claim 88 wherein 
said composition is an oxide . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
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 438 



CLAIM 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. 

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. 

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 



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corresponds to all of the allowed claims. The Examiner provides no reason for 
not following In re Donaldson. 



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Page 1368 of 1770 



CLAIM 439 



CLAIM 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 . 

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 440 



CLAIM 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 . 

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



Volume 3 



Page 1371 of 1770 



CLAIM 441/438 



CLAIM 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 . 

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 1372 of 1770 



CLAIM 441/439 



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

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



Volume 3 



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



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Page 1374 of 1770 



CLAIM 441/440 



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

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



Volume 3 



Page 1375 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 1376 of 1770 



CLAIM 442/438 



CLAIM 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 . 

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



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



Volume 3 



Page 1378 of 1770 



CLAIM 442/439 



CLAIM 442/439 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 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 . 

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 1379 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. 



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Page 1380 of 1770 



CLAIM 442/440 



CLAIM 442/440 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 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 . 

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 443/438 



CLAIM 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 . 

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



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



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CLAIM 443/439 



CLAIM 443/439 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 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 . 

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 443/440 



CLAIM 443/440 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 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 . 

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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