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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 354-357 



CORRECTED APPEAL BRIEF 



Part VII 



CFR37 §41.37(c)(1)(vii) 



VOLUME 3 



Part5 



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 354/165 



CLAIM 354/165 recites: 

CLAIM 165 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 having a layer-type 
perovskite-like crystal structure, the composition having a 
superconductive transition temperature Tc of greater than or 
equal to 26°K, said superconductive composition includes at 
least one element selected from the group consisting of a 
Group II A element, a rare earth element: and a Group III B 
element : 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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 



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

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



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CLAIM 354/166 

CLAIM 354/166 recites: 

CLAIM 166 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 having a layer-type 
perovskite-like crystal structure, the copper-oxide compound 
including at least one element selected from the group 
consisting of a Group II A element, a rare earth element and 
a Group III B element, the composition having a 
superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature 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=o of the superconductive 
composition; and 

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



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CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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. 

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 354/185 



CLAIM 354/185 recites: 

CLAIM 185 An apparatus comprising a superconducting 
oxide composition having a superconductive onset 
temperature greater than or equal to 26°K, a temperature 
controller maintaining said superconducting copper oxide at 
a temperature less than said superconducting onset 
temperature and a current source flowing a superconducting 
current therein, said composition comprising at least one 
each of rare earth, an alkaline earth, and copper. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 185 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 



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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. 



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CLAIM 354/220 



CLAIM 354/220 recites: 

CLAIM 185 An apparatus comprising a superconducting 
oxide composition having a superconductive onset 
temperature greater than or equal to 26°K, a temperature 
controller maintaining said superconducting copper oxide at 
a temperature less than said superconducting onset 
temperature and a current source flowing a superconducting 
current therein, said composition comprising at least one 
each of rare earth, an alkaline earth, and copper. 

CLAIM 220 An apparatus according to claim 185 wherein 
said superconducting oxide composition comprises a 
substantially layered perovskite crystal structure. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 220 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 



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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. 



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CLAIM 354/240 

CLAIM 354/240 recites: 

CLAIM 240 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductor transition temperature Tc of 
greater than or equal to 26°K; 

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

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

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 



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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. 

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 354/241 

CLAIM 354/241 recites: 

CLAIM 240 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductor transition temperature Tc of 
greater than or equal to 26°K; 

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

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

CLAIM 241 An apparatus according to claim 240 in which 
the copper-oxide compound of the superconductive 
composition includes at least one rare-earth or rare-earth- 
like element and at least one alkaline-earth element. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 



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superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 241 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. 



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CLAIM 354/242 

CLAIM 354/242 recites: 

CLAIM 240 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductor transition temperature Tc of 
greater than or equal to 26°K; 

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

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

CLAIM 241 An apparatus according to claim 240 in which 
the copper-oxide compound of the superconductive 
composition includes at least one rare-earth or rare-earth- 
like element and at least one alkaline-earth element. 

CLAIM 242 An apparatus according to claim 241 in which 
the rare-earth or rare-earth-like element is lanthanum. 



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CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 242 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 



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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 354/243 

CLAIM 354/243 recites: 

CLAIM 240 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductor transition temperature Tc of 
greater than or equal to 26°K; 

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

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

CLAIM 241 An apparatus according to claim 240 in which 
the copper-oxide compound of the superconductive 
composition includes at least one rare-earth or rare-earth- 
like element and at least one alkaline-earth element. 

CLAIM 243 An apparatus according to claim 241 in which 
the alkaline-earth element is barium. 



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CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 243 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 



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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 354/244 

CLAIM 354/244 recites: 

CLAIM 240 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductor transition temperature Tc of 
greater than or equal to 26°K; 

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

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

CLAIM 244 An apparatus according to claim 240 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions . 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 



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superconductive 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. 

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 354/245 

CLAIM 354/245 recites: 

CLAIM 240 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductor transition temperature Tc of 
greater than or equal to 26°K; 

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

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

CLAIM 244 An apparatus according to claim 240 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions . 

CLAIM 245 An apparatus according to claim 244 in which 
the copper-oxide compound includes at least one element in 
a nonstoichiometric atomic proportion . 



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CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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. 

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 354/246 

CLAIM 354/246 recites: 

CLAIM 240 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductor transition temperature Tc of 
greater than or equal to 26°K; 

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

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

CLAIM 244 An apparatus according to claim 240 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions . 

CLAIM 245 An apparatus according to claim 244 in which 
the copper-oxide compound includes at least one element in 
a nonstoichiometric atomic proportion . 



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CLAIM 246 An apparatus according to claim 245 in which oxygen 
is present in the copper-oxide compound in a nonstoichiometric 
atomic proportion 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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. 

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 



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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 



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CLAIM 354/247 

CLAIM 354/247 recites: 

CLAIM 247 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 
compound including at least one rare-earth or rare-earth-like 
element 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. 



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CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 247 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 



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



Volume 3 



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CLAIM 354/248 

CLAIM 354/248 recites: 

CLAIM 247 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 
compound including at least one rare-earth or rare-earth-like 
element 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. 



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CLAIM 248 An apparatus according to claim 247 in which 
the rare-earth or rare-earth-like element is lanthanum. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 248 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 



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CLAIM 354/249 

CLAIM 354/249 recites: 

CLAIM 247 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 
compound including at least one rare-earth or rare-earth-like 
element 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. 



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CLAIM 249 An apparatus according to claim 247 in which 
the alkaline-earth element is barium. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 249 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 



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CLAIM 354/250 

CLAIM 354/250 recites: 

CLAIM 247 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 
compound including at least one rare-earth or rare-earth-like 
element 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. 



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CLAIM 250 An apparatus according to claim 247 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 250 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 



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"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 994 of 1770 



CLAIM 354/251 

CLAIM 354/251 recites: 

CLAIM 247 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 
compound including at least one rare-earth or rare-earth-like 
element 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. 



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CLAIM 250 An apparatus according to claim 247 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions. 

CLAIM 251 An apparatus according to claim 250 in which 
the copper-oxide compound includes at least one element in 
a nonstoichiometric atomic proportion. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claims should be allowed sincde claim 251 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 



Volume 3 



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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 997 of 1770 



CLAIM 354/252 

CLAIM 354/252 recites: 

CLAIM 247 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 
compound including at least one rare-earth or rare-earth-like 
element 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. 



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CLAIM 250 An apparatus according to claim 247 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions. 

CLAIM 251 An apparatus according to claim 250 in which 
the copper-oxide compound includes at least one element in 
a nonstoichiometric atomic proportion. 

CLAIM 252 An apparatus according to claim 251 in which 
oxygen is present in the copper-oxide compound in a 
nonstoichiometric atomic proportion. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 252 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 



Volume 3 



Page 999 of 1770 



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

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



Volume 3 



Page 1000 of 1770 



CLAIM 354/261 

CLAIM 354/261 recites: 

CLAIM 261 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductive transition temperature Tc of 
greater than or equal to 26°K, said superconductive 
composition includes at least one element selected from the 
group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth 
element and a Group III B element; 

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

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

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 



Volume 3 



Page 1001 of 1770 



superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 261 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 1002 of 1770 



CLAIM 354/262 

CLAIM 354/262 recites: 

CLAIM 262 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 
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 1003 of 1770 



CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 262 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 1004 of 1770 



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



Volume 3 



Page 1005 of 1770 



CLAIM 354/289 

CLAIM 354/289 recites: 

CLAIM 289 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 
substantially layered perovskite crystal structure , the 
composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K; 

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

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

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 



Volume 3 



Page 1006 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 1007 of 1770 



CLAIM 354/290 

CLAIM 354/290 recites: 

CLAIM 289 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 
substantially layered perovskite crystal structure , the 
composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K; 

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

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

CLAIM 290 An apparatus according to claim 289 in which 
the copper-oxide compound of the superconductive 
composition includes at least one element selected from the 
group consisting of a rare-earth element and a Group III B 
element and at least one alkaline-earth element. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 



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Page 1008 of 1770 



superconductive 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. 

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 354/291 

CLAIM 354/291 recites: 

CLAIM 289 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 
substantially layered perovskite crystal structure , the 
composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K; 

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

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

CLAIM 290 An apparatus according to claim 289 in which 
the copper-oxide compound of the superconductive 
composition includes at least one element selected from the 
group consisting of a rare-earth element and a Group III B 
element and at least one alkaline-earth element. 



Volume 3 



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CLAIM 291 An apparatus according to claim 290 in which 
the rare-earth or (SIC) element is lanthanum . 



CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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. 

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 



Page 1011 of 1770 



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 1012 of 1770 



CLAIM 354/292 

CLAIM 354/292 recites: 

CLAIM 289 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 
substantially layered perovskite crystal structure , the 
composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K; 

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

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

CLAIM 290 An apparatus according to claim 289 in which 
the copper-oxide compound of the superconductive 
composition includes at least one element selected from the 
group consisting of a rare-earth element and a Group III B 
element and at least one alkaline-earth element. 

CLAIM 292 An apparatus according to claim 290 in which 
the alkaline-earth element is barium. 



Volume 3 



Page 1013 of 1770 



CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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. 

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 1014 of 1770 



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



Volume 3 



Page 1015 of 1770 



CLAIM 354/293 

CLAIM 354/293 recites: 

CLAIM 289 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 
substantially layered perovskite crystal structure , the 
composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K; 

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

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

CLAIM 293 An apparatus according to claim 289 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions . 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 



Volume 3 



Page 1016 of 1770 



superconductive 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. 

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 1017 of 1770 



CLAIM 354/294 

CLAIM 354/294 recites: 

CLAIM 289 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 
substantially layered perovskite crystal structure , the 
composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K; 

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

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

CLAIM 293 An apparatus according to claim 289 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions . 

CLAIM 294 An apparatus according to claim 293 in which 
the copper-oxide compound includes at least one element in 
a nonstoichiometric atomic proportion . 



Volume 3 



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CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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. 

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 1019 of 1770 



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



Volume 3 



Page 1020 of 1770 



CLAIM 354/295 

CLAIM 354/295 recites: 

CLAIM 289 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 
substantially layered perovskite crystal structure , the 
composition comprising a superconductor transition 
temperature Tc of greater than or equal to 26°K; 

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

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

CLAIM 293 An apparatus according to claim 289 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions . 

CLAIM 294 An apparatus according to claim 293 in which 
the copper-oxide compound includes at least one element in 
a nonstoichiometric atomic proportion . 



Volume 3 



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CLAIM 295 An apparatus according to claim 294 in which 
oxygen is present in the copper-oxide compound in a 
nonstoichiometric atomic proportion . 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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. 

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 1022 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 1023 of 1770 



CLAIM 354/296 

CLAIM 354/296 recites: 

CLAIM 296 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 
substantially layered perovskite crystal structure, the 
copper-oxide compound including at least one element 
selected from the group consisting of a rare-earth element 
and a Group III B element 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. 



Volume 3 



Page 1024 of 1770 



CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 296 ia 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 1025 of 1770 



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



Volume 3 



Page 1026 of 1770 



CLAIM 354/297 

CLAIM 354/297 recites: 

CLAIM 296 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 
substantially layered perovskite crystal structure, the 
copper-oxide compound including at least one element 
selected from the group consisting of a rare-earth element 
and a Group III B element 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. 



Volume 3 



Page 1027 of 1770 



CLAIM 297 An apparatus according to claim 296 in which 
said at least one element is lanthanum. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed sicne claim 297 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 1028 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 1029 of 1770 



CLAIM 354/298 

CLAIM 354/298 recites: 

CLAIM 296 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 
substantially layered perovskite crystal structure, the 
copper-oxide compound including at least one element 
selected from the group consisting of a rare-earth element 
and a Group III B element 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. 



Volume 3 



Page 1030 of 1770 



CLAIM 298 An apparatus according to claim 296 in which 
the alkaline-earth element is barium. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 298 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 1031 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 1032 of 1770 



CLAIM 354/299 

CLAIM 354/299 recites: 

CLAIM 296 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 
substantially layered perovskite crystal structure, the 
copper-oxide compound including at least one element 
selected from the group consisting of a rare-earth element 
and a Group III B element 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. 



Volume 3 



Page 1033 of 1770 



CLAIM 299 An apparatus according to claim 296 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 299 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 



Volume 3 



Page 1034 of 1770 



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



Volume 3 



Page 1035 of 1770 



CLAIM 354/300 

CLAIM 354/300 recites: 

CLAIM 296 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 
substantially layered perovskite crystal structure, the 
copper-oxide compound including at least one element 
selected from the group consisting of a rare-earth element 
and a Group III B element 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. 



Volume 3 



Page 1036 of 1770 



CLAIM 299 An apparatus according to claim 296 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions. 

CLAIM 300 An apparatus according to claim 299 in which 
the copper-oxide compound includes at least one element in 
a nonstoichiometric atomic proportion. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 300 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 



Volume 3 



Page 1037 of 1770 



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 1038 of 1770 



CLAIM 354/301 

CLAIM 354/301 recites: 

CLAIM 296 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 
substantially layered perovskite crystal structure, the 
copper-oxide compound including at least one element 
selected from the group consisting of a rare-earth element 
and a Group III B element 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. 



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CLAIM 299 An apparatus according to claim 296 in which 
the copper-oxide compound of the superconductive 
composition includes mixed valent copper ions. 

CLAIM 300 An apparatus according to claim 299 in which 
the copper-oxide compound includes at least one element in 
a nonstoichiometric atomic proportion. 

CLAIM 301 An apparatus according to claim 300 in which 
oxygen is present in the copper-oxide compound in a 
nonstoichiometric atomic proportion. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 301 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 



Volume 3 



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

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



Volume 3 



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CLAIM 354/394 

CLAIM 354/394 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 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 



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superconductive 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. 

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 1043 of 1770 



CLAIM 354/395 

CLAIM 354/395 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. 



Volume 3 



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CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive 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. 

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 1045 of 1770 



CLAIM 354/402 

CLAIM 354/402 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. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 



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. 

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 1047 of 1770 



CLAIM 354/403 

CLAIM 354/403 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. 

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. 



Volume 3 



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CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 403 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 1049 of 1770 



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



Volume 3 



Page 1050 of 1770 



CLAIM 354/404 

CLAIM 354/404 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. 

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. 



Volume 3 



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

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 404 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 



Volume 3 



Page 1052 of 1770 



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



Volume 3 



Page 1053 of 1770 



CLAIM 354/405 

CLAIM 354/405 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 
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. 



Volume 3 



Page 1054 of 1770 



CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This clail\m should be allowed since claimd 405 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 1055 of 1770 



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



Volume 3 



Page 1056 of 1770 



CLAIM 354/406 

CLAIM 354/406 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 
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. 



Volume 3 



Page 1057 of 1770 



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

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed c\sicne claim 406 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 



Volume 3 



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"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 1059 of 1770 



CLAIM 354/409 

CLAIM 354/409 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. 

CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 



Volume 3 



Page 1060 of 1770 



superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since claim 409 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 1061 of 1770 



CLAIM 354/410 

CLAIM 354/410 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. 



Volume 3 



Page 1062 of 1770 



CLAIM 354 An apparatus according to anyone of claims 
1 65, 1 66, 1 85, 220, 240 to 246, 247 to 252, 261 , 262, 289, 
290 to 301 , 394, 395, 402-406, 409 or 410, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 

This claim should be allowed since alaim 410 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 1063 of 1770 



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



Volume 3 



Page 1064 of 1770 



CLAIM 355/77 



CLAIM 355/77 recites: 

CLAIM 77 A combination, comprising: 

a mixed copper oxide composition including an alkaline earth 
element (AE) and a rare earth or rare earth-like element (RE), said 
composition having a layer-like crystalline structure 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 

electrical means 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 355 A combination according to anyone of claims 77 
to 81 , 1 86, 379 or 380, wherein said mixed copper oxide 
composition can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 77 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 



Volume 3 



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

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 1066 of 1770 



CLAIM 355/78 

CLAIM 355/78 recites: 

CLAIM 77 A combination, comprising: 

a mixed copper oxide composition including an alkaline earth 
element (AE) and a rare earth or rare earth-like element (RE), said 
composition having a layer-like crystalline structure 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 

electrical means 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 78 The combination of claim 77, where the ratio (AE,RE) : 
Cu is substantially 1 :1 . 

CLAIM 355 A combination according to anyone of claims 77 
to 81 , 1 86, 379 or 380, wherein said mixed copper oxide 
composition can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 78 is allowed. 



Volume 3 Page 1 067 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 1068 of 1770 



CLAIM 355/79 



CLAIM 355/79 recites: 

CLAIM 77 A combination, comprising: 

a mixed copper oxide composition including an alkaline earth 
element (AE) and a rare earth or rare earth-like element (RE), said 
composition having a layer-like crystalline structure 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 

electrical means 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 79 The combination of claim 77, where the ratio (AE,RE) : 
Cu is substantially 1 :1 . 

CLAIM 355 A combination according to anyone of claims 77 
to 81 , 1 86, 379 or 380, wherein said mixed copper oxide 
composition can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 79 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 



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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 1070 of 1770 



CLAIM 355/80 



CLAIM 355/80 recites: 

CLAIM 77 A combination, comprising: 

a mixed copper oxide composition including an alkaline earth 
element (AE) and a rare earth or rare earth-like element (RE), said 
composition having a layer-like crystalline structure 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 

electrical means 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 80 The combination of claim 77, wherein said crystalline 
structure is perovskite-like. 

CLAIM 355 A combination according to anyone of claims 77 
to 81 , 1 86, 379 or 380, wherein said mixed copper oxide 
composition can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 80 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 1071 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 1072 of 1770 



CLAIM 355/81 

CLAIM 355/81 recites: 

CLAIM 77 A combination, comprising: 

a mixed copper oxide composition including an alkaline earth 
element (AE) and a rare earth or rare earth-like element (RE), said 
composition having a layer-like crystalline structure 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 

electrical means 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 81 The combination of claim 77, where said mixed copper 
oxide composition has a non-stoichiometric amount of oxygen 
therein. 

CLAIM 355 A combination according to anyone of claims 77 
to 81 , 1 86, 379 or 380, wherein said mixed copper oxide 
composition can be made according to known principles of 
ceramic science . 



This claim should be allowed since claim 81 is allowed. 



Volume 3 



Page 1073 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 1074 of 1770 



CLAIM 355/186 



CLAIM 355/186 recites: 

CLAIM 186 An apparatus comprising a superconducting 
oxide composition having a superconductive onset 
temperature greater than or equal to 26°K, a temperature 
controller maintaining said superconducting copper oxide at 
a temperature less than said superconducting onset 
temperature and a current source flowing a superconducting 
electrical current therein, said composition comprising at 
least one each of a Group 1MB element, an alkaline earth, 
and copper. 

CLAIM 355 A combination according to anyone of claims 77 
to 81 , 1 86, 379 or 380, wherein said mixed copper oxide 
composition can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 186 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 



Volume 3 



Page 1075 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. 

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 1076 of 1770 



CLAIM 355/379 



CLAIM 355/379 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 355 A combination according to anyone of claims 77 
to 81 , 1 86, 379 or 380, wherein said mixed copper oxide 
composition can be made according to known principles of 
ceramic science . 



This claim should be allowed since claim 379 is allowed. 



Volume 3 



Page 1077 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 1078 of 1770 



CLAIM 355/380 



CLAIM 355/380 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 355 A combination according to anyone of claims 77 
to 81 , 1 86, 379 or 380, wherein said mixed copper oxide 
composition can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 380 is allowed, 

Volume 3 Page 1 079 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 1080 of 1770 



CLAIM 356/124 



CLAIM 356/124 recites: 

CLAIM 124 A device comprising a composition of matter 
having a Tc greater than or equal to 26°K carrying a 
superconducting current, said composition comprising at 
least one each of a NIB element, an alkaline earth, and 
copper oxide said device is maintained at a temperature less 
than said Tc. 

CLAIM 356 A device according to anyone of claims 124 to 
127, wherein said composition of matter can be made 
according to known principles of ceramic science . 

This claim should bbe allowed since claim 124 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 



Volume 3 



Page 1081 of 1770 



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 1082 of 1770 



CLAIM 356/125 



CLAIM 356/125 recites: 

CLAIM 125 An apparatus comprising a composition of 
matter having a Tc greater than or equal to 26°K carrying a 
superconducting current, said composition comprising at 
least one each of a rare earth, an alkaline earth, and copper 
oxide. 

CLAIM 356 A device according to anyone of claims 124 to 
127, wherein said composition of matter can be made 
according to known principles of ceramic science . 

This claim should bbe allowed since claim 125 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 



Volume 3 



Page 1083 of 1770 



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 1084 of 1770 



CLAIM 356/126 



CLAIM 356/126 recites: 

CLAIM 126 A device comprising a composition of matter 
having a Tc greater than or equal to 26°K carrying a 
superconducting current, said composition comprising at 
least one each of a rare earth, and copper oxide . 

CLAIM 356 A device according to anyone of claims 124 to 
127, wherein said composition of matter can be made 
according to known principles of ceramic science . 

This claim should bbe allowed since claim 126 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. 



Volume 3 



Page 1085 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 1086 of 1770 



CLAIM 356/127 



CLAIM 356/127 recites: 

CLAIM 127 A device comprising a composition of matter 
having a Tc greater than or equal to 26°K carrying a 
superconducting current, said composition comprising at 
least one each of a NIB element, and copper oxide . 

CLAIM 356 A device according to anyone of claims 124 to 
127, wherein said composition of matter 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 1087 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 1088 of 1770 



CLAIM 357/190 



CLAIM 357/190 recites: 

CLAIM 190 An apparatus comprising a current source 
flowing a superconducting electrical current in a composition 
of matter having a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a Group 1MB 
element, an alkaline earth, and copper oxide and a 
temperature controller maintaining said composition of 
matter at a temperature less than Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 190 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 



Volume 3 



Page 1089 of 1770 



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

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



Volume 3 



Page 1090 of 1770 



CLAIM 357/191 



CLAIM 357/191 recites: 

CLAIM 191 An apparatus comprising a current source 
flowing a superconducting electrical current in a composition 
of matter having a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a rare earth, 
alkaline earth, and copper oxide and a temperature 
controller maintaining said composition of matter at a 
temperature less than said Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 191 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 



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

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



Volume 3 



Page 1092 of 1770 



CLAIM 357/192 



CLAIM 357/192 recites: 

CLAIM 192 An apparatus comprising a current source 
flowing a superconducting electrical current in a composition 
of matter having a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a rare earth, 
and copper oxide and a temperature controller maintaining 
said composition of matter at a temperature less than said 
Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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



Volume 3 



Page 1093 of 1770 



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

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



Volume 3 



Page 1094 of 1770 



CLAIM 357/193 



CLAIM 357/193 recites: 

CLAIM 193 An apparatus comprising a current source 
flowing a superconducting electrical current in a composition 
of matter having a Tc greater than or equal to 26°K carrying, 
said composition comprising at least one each of a Group III 
B element, and copper oxide and a temperature controller 
maintaining said composition of matter at a temperature less 
than said Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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



Volume 3 



Page 1095 of 1770 



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

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



Volume 3 



Page 1096 of 1770 



CLAIM 357/194 



CLAIM 357/194 recites: 

CLAIM 194 An apparatus comprising a current source 
flowing a superconducting electrical current in a transition 
metal oxide comprising a Tc greater than or equal to 26°K 
and a temperature controller maintaining said transition 
metal oxide at a temperature less than said Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 190 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 



Volume 3 



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

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



Volume 3 



Page 1098 of 1770 



CLAIM 357/225 



CLAIM 357/225 recites: 

CLAIM 190 An apparatus comprising a current source 
flowing a superconducting electrical current in a composition 
of matter having a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a Group 1MB 
element, an alkaline earth, and copper oxide and a 
temperature controller maintaining said composition of 
matter at a temperature less than Tc. 

CLAIM 225 An apparatus according to claim 190 wherein 
said composition of matter comprises a substantially layered 
perovskite crystal structure. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 225 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 



Volume 3 



Page 1099 of 1770 



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

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



Volume 3 



Page 11 00 of 1770 



CLAIM 357/226 



CLAIM 357/226 recites: 

CLAIM 191 An apparatus comprising a current source 
flowing a superconducting electrical current in a composition 
of matter having a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a rare earth, 
alkaline earth, and copper oxide and a temperature 
controller maintaining said composition of matter at a 
temperature less than said Tc. 

CLAIM 226 An apparatus according to claim 191 wherein 
said composition of matter comprises substantially layered 
perovskite crystal structure. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 226 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 



Volume 3 



Page 1101 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 11 02 of 1770 



CLAIM 357/227 



CLAIM 357/227 recites: 

CLAIM 192 An apparatus comprising a current source 
flowing a superconducting electrical current in a composition 
of matter having a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a rare earth, 
and copper oxide and a temperature controller maintaining 
said composition of matter at a temperature less than said 
Tc. 

CLAIM 227 An apparatus according to claim 192 wherein 
said composition of matter comprises a substantially layered 
perovskite crystal structure . 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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



Volume 3 



Page 11 03 of 1770 



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

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



Volume 3 



Page 11 04 of 1770 



CLAIM 357/228 



CLAIM 357/228 recites: 

CLAIM 193 An apparatus comprising a current source 
flowing a superconducting electrical current in a composition 
of matter having a Tc greater than or equal to 26°K carrying, 
said composition comprising at least one each of a Group III 
B element, and copper oxide and a temperature controller 
maintaining said composition of matter at a temperature less 
than said Tc. 

CLAIM 228 An apparatus according to claim 193 wherein 
said composition of matter comprises substantially layered 
perovskite crystal structure . 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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



Volume 3 



Page 11 05 of 1770 



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

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



Volume 3 



Page 11 06 of 1770 



CLAIM 357/229 



CLAIM 357/229 recites: 

CLAIM 194 An apparatus comprising a current source 
flowing a superconducting electrical current in a transition 
metal oxide comprising a Tc greater than or equal to 26°K 
and a temperature controller maintaining said transition 
metal oxide at a temperature less than said Tc. 

CLAIM 229 An apparatus according to claim 194 wherein 
said transition (SIC) metal oxide comprises substantially 
layered perovskite crystal structure . 

CLAIM 357 An apparatus according to anyone of claims 190 
to 1 94, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter 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 



Page 11 07 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. 

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 11 08 of 1770 



CLAIM 357/231 



CLAIM 357/231 recites: 

CLAIM 231 An apparatus comprising a composition of matter 
having a Tc greater than or equal to 26°K carrying a 
superconducting current, said composition comprising at least one 
each of a rare earth, an alkaline earth, and copper oxide. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 231 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 



Volume 3 



Page 11 09 of 1770 



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 11 10 of 1770 



CLAIM 357/256 

CLAIM 357/256 recites: 

CLAIM 256 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 layer- 
type perovskite-like crystal structure , the composition 
comprising a superconductive transition temperature Tc of 
greater than or equal to 26°K, said superconductive 
composition includes at least one element selected from the 
group consisting of a Group II A element, a rare earth 
element: and a Group III B element : 

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

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

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 



Volume 3 



Page 1111 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 1112 of 1770 



CLAIM 357/257 

CLAIM 357/257 recites: 

CLAIM 257 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 layer- 
type perovskite-like crystal structure, the copper-oxide 
compound including at least one element selected from the 
group consisting of a Group II A element, a rare earth 
element and a Group III B element , the composition 
comprising a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature 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 11 13 of 1770 



CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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

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



Volume 3 



Page 1114 of 1770 



CLAIM 357/266 

CLAIM 357/266 recites: 

CLAIM 266 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 layer-type perovskite-like crystal structure, the composition 
comprising a superconductive transition temperature Tc of 
greater than or equal to 26°K, said superconductive 
composition includes at least one element selected from the 
group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth 
element and a Group III B element; 

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

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

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 



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Page 11 15 of 1770 



composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 266 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 1116 of 1770 



CLAIM 357/267 

CLAIM 357/267 recites: 

CLAIM 267 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 layer-type perovskite-like crystal structure, the transition 
metal-oxide compound including at least one element 
selected from the group consisting of a Group II A element 
and at least one element selected from the group consisting 
of a rare earth element and a Group III B element, the 
composition comprising a superconductive/resistive 
transition defining a superconductive/resistive-transition 
temperature range between an upper limit defined by a 
transition-onset temperature Tc and a lower limit defined by 
an effectively-zero-bulk-resistivity intercept temperature 
Tp=0, the transition-onset temperature Tc being greater than 
or equal to 26°K; 

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

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



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CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 267 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 



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



Volume 3 



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CLAIM 357/271 

CLAIM 357/271 recites: 

CLAIM 271 An apparatus for causing 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 layer- 
type perovskite-like crystal structure, the composition 
comprising a superconductive transition temperature Tc of 
greater than or equal to 26°K, said superconductive 
composition includes at least one element selected from the 
group consisting of a Group II A element, 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; 

(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. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 



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composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 271 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. 



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CLAIM 357/272 

CLAIM 357/272 recites: 

CLAIM 272 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 
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 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 272 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 



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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 



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CLAIM 357/281 



CLAIM 357/281 recites: 

CLAIM 281 An apparatus comprising a source of a 
superconducting electrical current in a composition of matter 
comprising a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a III B element, 
an alkaline earth, and copper oxide and a temperature 
controller for maintaining said composition of matter at a 
temperature less than Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 281 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 



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

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



Volume 3 



Page 11 26 of 1770 



CLAIM 357/282 



CLAIM 357/282 recites: 

CLAIM 282 An apparatus comprising a source of a 
superconducting electrical current in a composition of matter 
comprising a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a rare earth, 
alkaline earth, and copper oxide and a temperature 
controller for maintaining said composition of matter at a 
temperature less than said Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 282 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 



Volume 3 



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

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



Volume 3 



Page 11 28 of 1770 



CLAIM 357/283 



CLAIM 357/283 recites: 

CLAIM 283 An apparatus comprising a source of a 
superconducting electrical current in a composition of matter 
comprising a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a rare earth, 
and copper oxide and a temperature controller for 
maintaining said composition of matter at a temperature less 
than said Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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



Volume 3 



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

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



Volume 3 



Page 11 30 of 1770 



CLAIM 357/284 



CLAIM 357/284 recites: 

CLAIM 284 An apparatus comprising a source of a 
superconducting electrical current in a composition of matter 
comprising a Tc greater than or equal to 26°K carrying, said 
composition comprising at least one each of a III B element, 
and copper oxide and a temperature controller for 
maintaining said composition of matter at a temperature less 
than said Tc. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 1 94, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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



Volume 3 



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

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



Volume 3 



Page 11 32 of 1770 



CLAIM 357/317 



CLAIM 357/317 recites: 

CLAIM 282 An apparatus comprising a source of a 
superconducting electrical current in a composition of matter 
comprising a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a rare earth, 
alkaline earth, and copper oxide and a temperature 
controller for maintaining said composition of matter at a 
temperature less than said Tc. 

CLAIM 317 An apparatus according to claim 282 wherein 
said composition of matter comprises substantially layered 
perovskite crystal structure. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claims should be allowed since claim 317 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 



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

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



Volume 3 



Page 11 34 of 1770 



CLAIM 357/318 



CLAIM 357/318 recites: 

CLAIM 283 An apparatus comprising a source of a 
superconducting electrical current in a composition of matter 
comprising a Tc greater than or equal to 26°K, said 
composition comprising at least one each of a rare earth, 
and copper oxide and a temperature controller for 
maintaining said composition of matter at a temperature less 
than said Tc. 

CLAIM 318 An apparatus according to claim 283 wherein 
said composition of matter comprises a substantially layered 
perovskite crystal structure . 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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



Volume 3 



Page 11 35 of 1770 



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

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



Volume 3 



Page 11 36 of 1770 



CLAIM 357/319 



CLAIM 357/319 recites: 



CLAIM 284 An apparatus comprising a source of a 
superconducting electrical current in a composition of matter 
comprising a Tc greater than or equal to 26°K carrying, said 
composition comprising at least one each of a III B element, 
and copper oxide and a temperature controller for 
maintaining said composition of matter at a temperature less 
than said Tc. 

CLAIM 319 An apparatus according to claim 284 wherein 
said composition of matter comprises substantially layered 
perovskite crystal structure . 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

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



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Page 11 37 of 1770 



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

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



Volume 3 



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CLAIM 357/407 

CLAIM 357/407 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. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 



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Page 11 39 of 1770 



composition of matter can be made according to known 



principles of ceramic science . 



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

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



Volume 3 



Page 11 40 of 1770 



CLAIM 357/411 

CLAIM 357/411 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. 

CLAIM 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 



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composition of matter can be made according to known 
principles of ceramic science . 

This claim should be allowed since claim 411 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 11 42 of 1770 



CLAIM 357/412 

CLAIM 357/412 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 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claim should be allowed since claim 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 



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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 357/413 

CLAIM 357/413 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 357 An apparatus according to anyone of claims 190 
to 194, 225 to 229, 231 , 256, 257, 266, 267, 271 , 272, 281 to 
284, 31 7 to 31 9, 407, or 41 1 to 41 3, wherein said 
composition of matter can be made according to known 
principles of ceramic science . 

This claim should be allowed since claim 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 



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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. 



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