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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 330-353 



CORRECTED APPEAL BRIEF 



Part VII 



CFR37 §41.37(c)(1)(vii) 



VOLUME 3 



Part 4 



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 330 

Claim 330 which is allowed recites: 

CLAIM 330 An apparatus according to anyone of claims 185 
or 220, wherein said superconductive composition can be 
made according to known principles of ceramic science. 



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CLAIM 331 



CLAIM 331 recites: 

CLAIM 111 A device comprising a superconducting 
transition metal oxide having a superconductive onset 
temperature greater than or equal to 26°K, said 
superconducting transition metal oxide being at a 
temperature less than said superconducting onset 
temperature and having a superconducting current flowing 
therein. 

CLAIM 331 A device according to claim 111, wherein said 
superconductive transition metal oxide can be made 
according to known principles of ceramic science . 

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



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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. 



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CLAIM 332/183 



CLAIM 332/183 recites: 

CLAIM 183 An apparatus comprising a superconducting 
transition metal oxide having a superconductive onset 
temperature greater than or equal to 26°K, a temperature 
controller maintaining said superconducting transition metal 
oxide at a temperature less than said superconducting onset 
temperature and a current source flowing a superconducting 
current therein. 

CLAIM 332 An apparatus according to anyone of claims 
1 83, 217, 218, 274 or 309, wherein said superconductive 
transition metal oxide can be made according to known 
principles of ceramic science . 

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



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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. 



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CLAIM 332/217 



CLAIM 332/217 recites: 

CLAIM 182 An apparatus comprising a composition having 
a transition temperature greater than or equal to 26°K, the 
composition including a rare earth or alkaline earth element, 
a transition metal element capable of exhibiting multivalent 
states and oxygen, including at least one phase that exhibits 
superconductivity at temperature greater than or equal to 
26°K, a temperature controller maintaining said composition 
at said temperature to exhibit said superconductivity and a 
current source passing an electrical superconducting current 
through said composition with said phrase exhibiting said 
superconductivity. 

CLAIM 217 An apparatus according to claim 182 wherein 
said composition comprises a substantially layered 
perovskite crystal structure . 

CLAIM 332 An apparatus according to anyone of claims 
1 83, 217, 218, 274 or 309, wherein said superconductive 
transition metal oxide can be made according to known 
principles of ceramic science . 

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



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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 332/218 



CLAIM 332/218 recites: 

CLAIM 183 An apparatus comprising a superconducting 
transition metal oxide having a superconductive onset 
temperature greater than or equal to 26°K, a temperature 
controller maintaining said superconducting transition metal 
oxide at a temperature less than said superconducting onset 
temperature and a current source flowing a superconducting 
current therein. 

CLAIM 218 An apparatus according to claim 183 wherein 
said superconducting transition metal oxide comprises a 
substantially layered perovskite crystal structure . 

CLAIM 332 An apparatus according to anyone of claims 
1 83, 217, 218, 274 or 309, wherein said superconductive 
transition metal oxide can be made according to known 
principles of ceramic science . 

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



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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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Page 687 of 1770 



CLAIM 332/274 



CLAIM 332/274 recites: 

CLAIM 274 An apparatus comprising providing a 
superconducting transition metal oxide comprising a 
superconductive onset temperature greater than or equal 
to 26°K, a temperature controller for maintaining said 
superconducting transition metal oxide at a temperature 
less than said superconducting onset temperature and a 
source of a superconducting current therein. 

CLAIM 332 An apparatus according to anyone of claims 
1 83, 217, 218, 274 or 309, wherein said superconductive 
transition metal oxide can be made according to known 
principles of ceramic science . 

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



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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. 



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CLAIM 332/309 



CLAIM 332/309 recites: 

CLAIM 274 An apparatus comprising providing a 
superconducting transition metal oxide comprising a 
superconductive onset temperature greater than or equal 
to 26°K, a temperature controller for maintaining said 
superconducting transition metal oxide at a temperature 
less than said superconducting onset temperature and a 
source of a superconducting current therein. 

CLAIM 309 An apparatus according to claim 274 wherein said 
superconducting transition metal oxide comprises a 
substantially layered perovskite crystal structure. 

CLAIM 332 An apparatus according to anyone of claims 
1 83, 217, 218, 274 or 309, wherein said superconductive 
transition metal oxide can be made according to known 
principles of ceramic science . 

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



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

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



Volume 3 



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CLAIM 333 



CLAIM 333 recites: 

CLAIM 1 1 2 A device comprising a superconducting 
copper oxide having a superconductive onset temperature 
greater than or equal to 26°K, said superconducting copper 
oxide being at a temperature less than said 
superconducting onset temperature and having a 
superconducting current flowing therein. 

CLAIM 333 A device according to claim 112, wherein said 
superconductive copper oxide can be made according to 
known principles of ceramic science . 

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



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



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Page 693 of 1770 



CLAIM 334/275 



CLAIM 334/275 recites: 

CLAIM 275 An apparatus comprising a superconducting 
copper oxide comprising a superconductive onset 
temperature greater than or equal to 26°K, a temperature 
controller for maintaining said superconducting copper oxide 
at a temperature less than said superconducting onset 
temperature and a source of a superconducting current in 
said superconducting oxide. 

CLAIM 334 An apparatus according to anyone of claims 
275, 276, 31 0 or 31 1 , wherein said superconductive copper 
oxide can be made according to known principles of ceramic 
science . 

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



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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. 



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CLAIM 334/276 



CLAIM 334/276 recites: 

CLAIM 276 An apparatus comprising a superconducting 
oxide composition comprising a superconductive onset 
temperature greater than or equal to 26°K , a temperature 
controller for maintaining said superconducting copper oxide 
at a temperature less than said superconducting onset 
temperature and a source of a superconducting current 
therein, said composition comprising at least one each of 
rare earth, an alkaline earth, and copper. 

CLAIM 334 An apparatus according to anyone of claims 
275, 276, 31 0 or 31 1 , wherein said superconductive copper 
oxide can be made according to known principles of ceramic 
science . 

This claim should be allowed since claim 276 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. 



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CLAIM 334/310 



CLAIM 334/310 recites: 

CLAIM 275 An apparatus comprising a superconducting 
copper oxide comprising a superconductive onset 
temperature greater than or equal to 26°K, a temperature 
controller for maintaining said superconducting copper oxide 
at a temperature less than said superconducting onset 
temperature and a source of a superconducting current in 
said superconducting oxide. 

CLAIM 310 An apparatus according to claim 275 wherein 
said superconducting copper oxide comprises a substantially 
layered perovskite crystal structure . 

CLAIM 334 An apparatus according to anyone of claims 
275, 276, 31 0 or 31 1 , wherein said superconductive copper 
oxide can be made according to known principles of ceramic 
science . 

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



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Page 698 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. 



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Page 699 of 1770 



CLAIM 334/311 



CLAIM 334/31 1 recites: 

CLAIM 276 An apparatus comprising a superconducting 
oxide composition comprising a superconductive onset 
temperature greater than or equal to 26°K , a temperature 
controller for maintaining said superconducting copper oxide 
at a temperature less than said superconducting onset 
temperature and a source of a superconducting current 
therein, said composition comprising at least one each of 
rare earth, an alkaline earth, and copper. 

CLAIM 31 1 An apparatus according to claim 276 wherein 
said superconducting oxide composition comprises a 
substantially layered perovskite crystal structure. 

CLAIM 334 An apparatus according to anyone of claims 
275, 276, 31 0 or 31 1 , wherein said superconductive copper 
oxide can be made according to known principles of ceramic 
science . 

This claim should be allowed since claim 311 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. 



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CLAIM 335 

Claim 335 which is allowed recites: 

CLAIM 335 A device according to claim 113, wherein said 
superconductive oxide composition can be made according 
to known principles of ceramic science. 

CLAIM 336 

Claim 336 which is allowed recites: 

CLAIM 336 An apparatus according to anyone of claims 
186, 221, 272, 312 or 41 3, wherein said superconductive 
oxide composition can be made according to known 
principles of ceramic science. 



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CLAIM 337/114 



CLAIM 337/114 recites: 

CLAIM 1 14 A device comprising a superconducting oxide 
composition having a superconductive onset temperature 
greater than or equal to 26°K, said superconducting copper 
oxide being at a temperature less than said superconducting 
onset temperature and having a superconducting current 
flowing therein, said composition comprising at least one 
each of a group NIB element, an alkaline earth, and copper. 

CLAIM 337 A device according to anyone of claims 1 14 or 
1 1 7, wherein said transition metal oxide can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 114 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 



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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. 



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CLAIM 337/117 



CLAIM 337/1 17 recites: 

CLAIM 117 A structure comprising a transition metal oxide 
having a Tc greater than or equal to 26°K carrying a 
superconducting current. 

CLAIM 337 A device according to anyone of claims 1 14 or 
1 1 7, wherein said transition metal oxide can be made 
according to known principles of ceramic science . 

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

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 



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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 338/24 



CLAIM 338/24 recites: 

CLAIM 24 An apparatus comprising: 

a transition metal oxide having a phase therein which 
exhibits a superconducting state at a critical temperature 
greater than or equal to of 26°K, 

means for lowering the temperature of said material at least 
to said critical temperature to produce said superconducting 
state in said phase, and 

means for passing an electrical superconducting current 
through said transition metal oxide while it is in said 
superconducting state. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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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 338/25 



CLAIM 338/25 recites: 

CLAIM 24 An apparatus comprising: 

a transition metal oxide having a phase therein which 
exhibits a superconducting state at a critical temperature 
greater than or equal to of 26°K, 

means for lowering the temperature of said material at least 
to said critical temperature to produce said superconducting 
state in said phase, and 

means for passing an electrical superconducting current 
through said transition metal oxide while it is in said 
superconducting state. 

CLAIM 25 The apparatus of claim 24, where said transition 
metal oxide is comprised of a transition metal capable of 
exhibiting multivalent states . 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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

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



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CLAIM 338/26 



CLAIM 338/26 recites: 

CLAIM 24 An apparatus comprising: 

a transition metal oxide having a phase therein which 
exhibits a superconducting state at a critical temperature 
greater than or equal to of 26°K, 

means for lowering the temperature of said material at least 
to said critical temperature to produce said superconducting 
state in said phase, and 

means for passing an electrical superconducting current 
through said transition metal oxide while it is in said 
superconducting state. 

CLAIM 26 The apparatus of claim 24, where said transition 
metal oxide is comprised of a Cu oxide . 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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

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



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CLAIM 338/60 



CLAIM 338/60 recites: 

CLAIM 60 An apparatus comprised of a transition metal 
oxide , and at least one additional element , said 
superconductor having a distorted crystalline structure 
characterized by an oxygen deficiency and exhibiting a 
superconducting onset temperature greater than or equal to 
of 26°K, a source of current for passing a superconducting 
electric current in said transition metal oxide, and a cooling 
apparatus for maintaining said transition metal oxide below 
said onset temperature at a temperature greater than or 
equal to 26°K. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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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 338/61 



CLAIM 338/61 recites: 

CLAIM 60 An apparatus comprised of a transition metal 
oxide , and at least one additional element , said 
superconductor having a distorted crystalline structure 
characterized by an oxygen deficiency and exhibiting a 
superconducting onset temperature greater than or equal to 
of 26°K, a source of current for passing a superconducting 
electric current in said transition metal oxide, and a cooling 
apparatus for maintaining said transition metal oxide below 
said onset temperature at a temperature greater than or 
equal to 26°K. 

CLAIM 61 The apparatus of claim 60, where said transition 
metal is Cu . 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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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 338/62 



CLAIM 338/62 recites: 

CLAIM 62 An apparatus comprised of a transition metal 
oxide and at least one additional element , said 
superconductor having a distorted crystalline structure 
characterized by an oxygen excess and exhibiting a 
superconducting onset temperature greater than or equal to 
26°K, a source of current for passing a superconducting 
electric current in said transition metal oxide, and a cooling 
apparatus for maintaining said transition metal oxide below 
said onset temperature and at a temperature greater than or 
equal to of 26°K. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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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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Page 718 of 1770 



CLAIM 338/63 



CLAIM 338/63 recites: 

CLAIM 60 An apparatus comprised of a transition metal 
oxide , and at least one additional element , said 
superconductor having a distorted crystalline structure 
characterized by an oxygen deficiency and exhibiting a 
superconducting onset temperature greater than or equal to 
of 26°K, a source of current for passing a superconducting 
electric current in said transition metal oxide, and a cooling 
apparatus for maintaining said transition metal oxide below 
said onset temperature at a temperature greater than or 
equal to 26°K. 

CLAIM 63 The apparatus of claim 62, where said transition metal 
is Cu 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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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 338/116 



CLAIM 338/116 recites: 

CLAIM 116 An apparatus comprising a transition metal 
oxide having a Tc greater than or equal to 26°K carrying a 
superconducting current said transition metal oxide is 
maintained at a temperature less than said Tc. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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



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Page 722 of 1770 



CLAIM 338/141 



CLAIM 338/141 recites: 

CLAIM 141 An apparatus comprising a transition metal 
oxide having a phase therein which exhibits a 
superconducting state at a critical temperature greater than 
or equal to 26°K, 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature 
to produce said superconducting state in said phase, and 

a current source passing an electrical supercurrent through 
said transition metal oxide while it is in said superconducting 
state. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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Page 723 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. 



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Page 724 of 1770 



CLAIM 338/142 



CLAIM 338/142 recites: 

CLAIM 141 An apparatus comprising a transition metal 
oxide having a phase therein which exhibits a 
superconducting state at a critical temperature greater than 
or equal to 26°K, 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature 
to produce said superconducting state in said phase, and 

a current source passing an electrical supercurrent through 
said transition metal oxide while it is in said superconducting 
state. 

CLAIM 142 The apparatus of claim 141, where said 
transition metal oxide is comprised of a transition metal 
capable of exhibiting multivalent states . 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



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

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



Volume 3 



Page 726 of 1770 



CLAIM 338/143 



CLAIM 338/143 recites: 

CLAIM 141 An apparatus comprising a transition metal 
oxide having a phase therein which exhibits a 
superconducting state at a critical temperature greater than 
or equal to 26°K, 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature 
to produce said superconducting state in said phase, and 

a current source passing an electrical supercurrent through 
said transition metal oxide while it is in said superconducting 
state. 

CLAIM 143 The apparatus of claim 141, where said 
transition metal oxide is comprised of a Cu oxide. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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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 728 of 1770 



CLAIM 338/172 

CLAIM 338/172 recites: 

CLAIM 172 An apparatus comprising: 

a transition metal oxide having a phase therein which 
exhibits a superconducting state at a critical temperature 
greater than or equal to 26°K; 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature 
to produce said superconducting state in said phase; 

a current source passing an electrical supercurrent through 
said copper oxide while it is in said superconducting state; 

said transitional metal oxide 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. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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

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



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Page 730 of 1770 



CLAIM 338/187 



CLAIM 338/187 recites: 

CLAIM 187 An apparatus comprising a superconducting 
electrical current in a transition metal oxide having a Tc 
greater than or equal to 26°K and maintaining said transition 
metal oxide at a temperature less than said Tc. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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



Volume 3 



Page 732 of 1770 



CLAIM 338/222 



CLAIM 338/222 recites: 

CLAIM 187 An apparatus comprising a superconducting 
electrical current in a transition metal oxide having a Tc 
greater than or equal to 26°K and maintaining said transition 
metal oxide at a temperature less than said Tc. 

CLAIM 222 An apparatus according to claim 187 wherein 
said transition (SIC) metal oxide comprises a substantially 
layered perovskite crystal structure. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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Page 733 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 734 of 1770 



CLAIM 338/232 

CLAIM 338/232 recites: 

CLAIM 232 An apparatus comprising: 

a transition metal oxide comprising a phase therein which 
exhibits a superconducting state at a critical temperature 
greater than or equal to 26°K, 

a temperature controller for maintaining the temperature of 
said material at a temperature less than said critical 
temperature to produce said superconducting state in said 
phase, and 

a source of an electrical supercurrent through said transition 
metal oxide while it is in said superconducting state. 



CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



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

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



Volume 3 



Page 736 of 1770 



CLAIM 338/233 

CLAIM 338/233 recites: 

CLAIM 232 An apparatus comprising: 

a transition metal oxide comprising a phase therein which 
exhibits a superconducting state at a critical temperature 
greater than or equal to 26°K, 

a temperature controller for maintaining the temperature of 
said material at a temperature less than said critical 
temperature to produce said superconducting state in said 
phase, and 

a source of an electrical supercurrent through said transition 
metal oxide while it is in said superconducting state. 

CLAIM 233 An apparatus according to claim 232, where 
said transition metal oxide is comprised of a transition metal 
capable of exhibiting multivalent states . 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide 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. 



Volume 3 



Page 738 of 1770 



CLAIM 338/234 



CLAIM 338/234 recites: 

CLAIM 232 An apparatus comprising: 

a transition metal oxide comprising a phase therein which 
exhibits a superconducting state at a critical temperature 
greater than or equal to 26°K, 

a temperature controller for maintaining the temperature of 
said material at a temperature less than said critical 
temperature to produce said superconducting state in said 
phase, and 

a source of an electrical supercurrent through said transition 
metal oxide while it is in said superconducting state. 

CLAIM 234 An apparatus according to claim 232, where 
said transition metal oxide is comprised of a Cu oxide . 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



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

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



Volume 3 



Page 740 of 1770 



CLAIM 338/263 



CLAIM 338/263 recites: 



CLAIM 263 An apparatus comprising: 

a transition metal oxide comprising a phase therein which 
exhibits a superconducting state at a critical temperature 
greater than or equal to 26°K; 

a temperature controller for maintaining the temperature of 
said material at a temperature less than said critical 
temperature to produce said superconducting state in said 
phase; 

a source of an electrical supercurrent through said transition 
metal oxide while it is in said superconducting state; 

said transitional metal oxide includes at least one element 
selected from the group consisting of a Group II A element 
and at lest one element selected from the group consisting 
of a rare earth element and a Group III B element. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 263 is allowed. 

Volume 3 Page 741 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 742 of 1770 



CLAIM 338/285 



CLAIM 338/285 recites: 

CLAIM 285 An apparatus comprising a source of a 
superconducting electrical current in a transition metal oxide 
comprising a Tc greater than or equal to 26°K and a 
temperature controller for maintaining said transition metal 
oxide at a temperature less than said Tc. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



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



Volume 3 



Page 744 of 1770 



CLAIM 338/287 



CLAIM 338/287 recites: 

CLAIM 287 An apparatus comprising: 

a composition including a transition metal, a group 1MB 
element, an alkaline earth element, and oxygen, where said 
composition is a mixed transition metal oxide comprising a 
non-stoichiometric amount of oxygen therein and exhibiting a 
superconducting state at a temperature greater than or equal 
to 26°K, 

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

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

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 287 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 



Volume 3 



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

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



Volume 3 



Page 746 of 1770 



CLAIM 338/288 



CLAIM 338/288 recites: 



CLAIM 287 An apparatus comprising: 



a composition including a transition metal, a group 1MB 
element, an alkaline earth element, and oxygen, where said 
composition is a mixed transition metal oxide comprising a 
non-stoichiometric amount of oxygen therein and exhibiting a 
superconducting state at a temperature greater than or equal 
to 26°K, 



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

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

CLAIM 288 An apparatus according to claim 287, where 
said transition metal is copper. 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

This claim should be allowed since claim 288 is allowed. 



Volume 3 Page 747 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 748 of 1770 



CLAIM 338/313 



CLAIM 338/313 recites: 

CLAIM 278 An apparatus comprising a source of a 
superconducting electrical current in a transition metal oxide 
comprising a Tc greater than or equal to 26°K and a 
temperature controller for maintaining said transition metal 
oxide at a temperature less than said Tc. 

CLAIM 313 An apparatus according to claim 278 wherein 
said transition (SIC) metal oxide comprises a substantially 
layered perovskite crystal structure . 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



Page 749 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 750 of 1770 



CLAIM 338/320 



CLAIM 338/320 recites: 

CLAIM 285 An apparatus comprising a source of a 
superconducting electrical current in a transition metal oxide 
comprising a Tc greater than or equal to 26°K and a 
temperature controller for maintaining said transition metal 
oxide at a temperature less than said Tc. 

CLAIM 320 An apparatus according to claim 285 wherein 
said transition metal oxide comprises substantially layered 
perovskite crystal structure . 

CLAIM 338 An apparatus according to anyone of claims 24 
to 26, 60 to 63, 116, 141 to 143, 172, 187, 222,232 to 234, 
263, 278, 285, 287, 288, 313 or 320, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



Page 751 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 752 of 1770 



CLAIM 339/27 



CLAIM 339/27 recites: 

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

CLAIM 339 A superconductive apparatus according to 
anyone of claims 27-32, 1 32 or 370, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



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

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



Volume 3 



Page 754 of 1770 



CLAIM 339/28 



CLAIM 339/28 recites: 

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

CLAIM 28 The superconducting apparatus of claim 27, 
where said substituted Cu-oxide includes a rare earth or rare 
earth-like element . 

CLAIM 339 A superconductive apparatus according to 
anyone of claims 27-32, 1 32 or 370, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



Page 755 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 756 of 1770 



CLAIM 339/29 



CLAIM 339/29 recites: 

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

CLAIM 29 The superconducting apparatus of claim 27, 
where said substituted Cu-oxide includes an alkaline earth 
element . 

CLAIM 339 A superconductive apparatus according to 
anyone of claims 27-32, 1 32 or 370, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



Page 757 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 758 of 1770 



CLAIM 339/30 

CLAIM 339/30 recites: 

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

CLAIM 29 The superconducting apparatus of claim 27, 
where said substituted Cu-oxide includes an alkaline earth 
element . 

CLAIM 30 The superconducting apparatus of claim 29, 
where said alkaline earth element is atomically large with 
respect to Cu . 

CLAIM 339 A superconductive apparatus according to 
anyone of claims 27-32, 1 32 or 370, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



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 760 of 1770 



CLAIM 339/31 



CLAIM 339/31 recites: 

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

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

CLAIM 339 A superconductive apparatus according to 
anyone of claims 27-32, 1 32 or 370, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



Page 761 of 1770 



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

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



Volume 3 



Page 762 of 1770 



CLAIM 339/32 

CLAIM 339/32 recites: 

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

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

CLAIM 32 The superconducting apparatus of claim 31 , 
where said crystalline structure is layer-like, enhancing the 
number of Jahn-Teller polarons in said composition . 

CLAIM 339 A superconductive apparatus according to 
anyone of claims 27-32, 1 32 or 370, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 



Volume 3 



Page 763 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 764 of 1770 



CLAIM 339/132 



CLAIM 339/132 recites: 

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

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

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

CLAIM 132 The combination of claim 12, where said 
composition includes a substantially perovskite 
superconducting phase . 

CLAIM 339 A superconductive apparatus according to 
anyone of claims 27-32, 1 32 or 370, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

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



Volume 3 



Page 765 of 1770 



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

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



Volume 3 



Page 766 of 1770 



CLAIM 339/370 

CLAIM 339/370 recites: 

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

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

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

CLAIM 339 A superconductive apparatus according to 
anyone of claims 27-32, 1 32 or 370, wherein said transition 
metal oxide can be made according to known principles of 
ceramic science . 

Volume 3 Page 767 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 768 of 1770 



CLAIM 340 



CLAIM 340 recites: 

CLAIM 118 An apparatus comprising a transition metal 
oxide having a Tc greater than or equal to 26°K carrying a 
superconducting current. 

CLAIM 340 An invention according to claim 118, wherein 
said transition metal oxide can be made according to known 
principles of ceramic science . 

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

The sentenced bridging page 1 and 2 of the specification states 



Volume 3 



Page 769 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 770 of 1770 



CLAIM 341 



CLAIM 341 recites: 

CLAIM 1 28 A transition metal oxide device comprising a Tc 
greater than or equal to 26°K and carrying a 
superconducting current. 

CLAIM 341 A transition metal oxide device according to 
claim 128, wherein said transition metal oxide can be made 
according to known principles of ceramic science . 

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

The sentenced bridging page 1 and 2 of the specification states 



Volume 3 



Page 771 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 772 of 1770 



CLAIM 342/40 



CLAIM 342/40 recites: 

CLAIM 40 An apparatus comprising a superconductor 
exhibiting a superconducting onset at an onset temperature 
greater than or equal to 26°K, said superconductor being 
comprised of at least four elements, none of which is itself 
superconducting at a temperature greater than or equal to 
26°K , means for maintaining said superconductor at an 
operating temperature in excess of said onset temperature 
to maintain said superconductor in a superconducting state 
and means for passing current through said superconductor 
while in said superconducting state. 

CLAIM 342 An apparatus according to anyone of claims 40 
to 45, wherein said superconductor 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 773 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 774 of 1770 



CLAIM 342/41 



CLAIM 342/41 recites: 

CLAIM 40 An apparatus comprising a superconductor 
exhibiting a superconducting onset at an onset temperature 
greater than or equal to 26°K, said superconductor being 
comprised of at least four elements, none of which is itself 
superconducting at a temperature greater than or equal to 
26°K , means for maintaining said superconductor at an 
operating temperature in excess of said onset temperature 
to maintain said superconductor in a superconducting state 
and means for passing current through said superconductor 
while in said superconducting state. 

CLAIM 41 The apparatus of claim 40, where said elements 
include a transition metal and oxygen . 

CLAIM 342 An apparatus according to anyone of claims 40 
to 45, wherein said superconductor can be made according 
to known principles of ceramic science . 

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



Volume 3 



Page 775 of 1770 



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

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



Volume 3 



Page 776 of 1770 



CLAIM 342/42 



CLAIM 342/42 recites: 

CLAIM 42 A apparatus having a superconducting onset 
temperature greater than or equal to 26°K, said 
superconductor being a doped transition metal oxide, where 
said transition metal is itself non-superconducting and a 
current source for passing a superconducting electric current 
through said composition. 

CLAIM 342 An apparatus according to anyone of claims 40 
to 45, wherein said superconductor 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 777 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 778 of 1770 



CLAIM 342/43 



CLAIM 342/43 recites: 

CLAIM 42 A apparatus having a superconducting onset 
temperature greater than or equal to 26°K, said 
superconductor being a doped transition metal oxide, where 
said transition metal is itself non-superconducting and a 
current source for passing a superconducting electric current 
through said composition. 

CLAIM 43 The apparatus of claim 42, where said doped 
transition metal oxide is multivalent in said superconductor. 

CLAIM 342 An apparatus according to anyone of claims 40 
to 45, wherein said superconductor can be made according 
to known principles of ceramic science . 

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



Volume 3 



Page 779 of 1770 



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

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



Volume 3 



Page 780 of 1770 



CLAIM 342/44 



CLAIM 342/44 recites: 

CLAIM 42 A apparatus having a superconducting onset 
temperature greater than or equal to 26°K, said 
superconductor being a doped transition metal oxide, where 
said transition metal is itself non-superconducting and a 
current source for passing a superconducting electric current 
through said composition. 

CLAIM 44 The apparatus of claim 42, further including an 
element which creates a mixed valent state of said transition 
metal . 

CLAIM 342 An apparatus according to anyone of claims 40 
to 45, wherein said superconductor 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 781 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 782 of 1770 



CLAIM 342/45 



CLAIM 342/45recites: 

CLAIM 42 A apparatus having a superconducting onset 
temperature greater than or equal to 26°K, said 
superconductor being a doped transition metal oxide, where 
said transition metal is itself non-superconducting and a 
current source for passing a superconducting electric current 
through said composition. 

CLAIM 43 The apparatus of claim 42, where said doped 
transition metal oxide is multivalent in said superconductor. 

CLAIM 45 The apparatus of claim 43, where said transition 
metal is Cu . 

CLAIM 342 An apparatus according to anyone of claims 40 
to 45, wherein said superconductor 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 783 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 784 of 1770 



CLAIM 343/119 



CLAIM 343/1 19 recites: 

CLAIM 119 A device comprising a copper oxide having a Tc 
greater than or equal to 26°K carrying a superconducting 
current said copper oxide is maintained at a temperature 
less than said Tc. 

CLAIM 343 A device according to anyone of claims 1 1 9 or 
121, wherein said copper oxide can be made according to 
known principles of ceramic science . 

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

The sentenced bridging page 1 and 2 of the specification states 



Volume 3 



Page 785 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 786 of 1770 



CLAIM 343/119 



CLAIM 343/1 19 recites: 

CLAIM 121 A device comprising a copper oxide having a Tc 
greater than or equal to 26°K carrying a superconducting 
current. 

CLAIM 343 A device according to anyone of claims 1 1 9 or 
121, wherein said copper oxide can be made according to 
known principles of ceramic science . 

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

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 788 of 1770 



CLAIM 344 



CLAIM 344 recites: 

CLAIM 120 An apparatus comprising a copper oxide having 
a Tc greater than or equal to 26°K carrying a 
superconducting current said copper oxide is maintained at a 
temperature less than said Tc. 

CLAIM 344 An apparatus according to claim 120, wherein 
said copper oxide can be made according to known 
principles of ceramic science . 

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

The sentenced bridging page 1 and 2 of the specification states 



Volume 3 



Page 789 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 790 of 1770 



CLAIM 345 



CLAIM 345 recites: 

CLAIM 122 An apparatus comprising a copper oxide having 
a Tc greater than or equal to 26°K carrying a 
superconducting current. 

CLAIM 345 An invention according to claim 122, wherein 
said copper oxide can be made according to known 
principles of ceramic science . 

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

The sentenced bridging page 1 and 2 of the specification states 



Volume 3 



Page 791 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 792 of 1770 



CLAIM 346 

Claim 346 which is allowed recites: 

CLAIM 346 A superconductive apparatus according to claim 
123, wherein said copper oxide can be made according to 
known principles of ceramic science. 



Volume 3 



Page 793 of 1770 



CLAIM 347 



CLAIM 347 recites: 

CLAIM 129 A copper oxide device comprising a TC greater 
than or equal to 26°K and carrying a superconducting 
current. 

CLAIM 347 A copper oxide device according to claim 129, 
wherein said copper oxide can be made according to known 
principles of ceramic science . 

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

The sentenced bridging page 1 and 2 of the specification states 



Volume 3 



Page 794 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 795 of 1770 



CLAIM 348/162 



CLAIM 348/162 recites: 



CLAIM 162 An apparatus comprising copper oxide having a 
phase therein which exhibits a superconducting state at a 
critical temperature greater than or equal to 26°K; 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature 
to produce said superconducting state in said phase; 

a current source passing an electrical supercurrent through 
said copper oxide while it is in said superconducting state; 

said copper oxide 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 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 



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



Volume 3 



Page 796 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 797 of 1770 



CLAIM 348/167 



CLAIM 348/167 recites: 

CLAIM 167 An apparatus comprising: 

a copper oxide having a phase therein which exhibits a 
superconducting state at a critical temperature greater than 
or equal to 26°K; 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature 
to produce said superconducting state in said phase; 

a current source passing an electrical supercurrent through 
said copper oxide while it is in said superconducting state; 

said copper oxide includes an element selected from the 
group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth 
element and a Group III B element. 

CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 

This claim should be allowed since claime 167 s 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 



Volume 3 



Page 798 of 1770 



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

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



Volume 3 



Page 799 of 1770 



CLAIM 348/177 



CLAIM 348/177 recites: 

CLAIM 177 An apparatus comprising: 

a copper oxide having a phase therein which exhibits a 
superconducting state at a critical temperature greater than 
or equal to 26°K; 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature 
to produce said superconducting state in said phase; 

a current source passing an electrical supercurrent through 
said copper oxide while it is in said superconducting state; 

said copper oxide includes at least one 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. 

CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 

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



Volume 3 



Page 800 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 801 of 1770 



CLAIM 348/188 



CLAIM 348/188 recites: 

CLAIM 188 An apparatus comprising a current source 
flowing a superconducting current in a copper oxide having a 
Tc greater than or equal to 26°K and a temperature 
controller maintaining said copper oxide at a temperature 
less than said Tc. 

CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 

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



Volume 3 



Page 802 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 803 of 1770 



CLAIM 348/223 



CLAIM 348/223 recites: 

CLAIM 188 An apparatus comprising a current source 
flowing a superconducting current in a copper oxide having a 
Tc greater than or equal to 26°K and a temperature 
controller maintaining said copper oxide at a temperature 
less than said Tc. 

CLAIM 223 An apparatus according to claim 188 wherein 
said copper oxide comprises a substantially layered 
perovskite crystal structure . 

CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 

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



Volume 3 



Page 804 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 805 of 1770 



CLAIM 348/253 

CLAIM 348/253 recites: 

CLAIM 253 An apparatus comprising: 

a copper oxide comprising a phase therein which exhibits a 
superconducting state at a critical temperature greater than 
or equal to 26°K; 

a temperature controller for maintaining the temperature of 
said material at a temperature less than said critical 
temperature to produce said superconducting state in said 
phase; 

a source of an electrical supercurrent through said copper 
oxide while it is in said superconducting state; 

said copper oxide 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 . 

a temperature controller maintaining the temperature of said 
material at a temperature less than said critical temperature 
to produce said superconducting state in said phase; 

a current source passing an electrical supercurrent through 
said copper oxide while it is in said superconducting state; 



Volume 3 



Page 806 of 1770 



said copper oxide 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 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 

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

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 807 of 1770 



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



Volume 3 



Page 808 of 1770 



CLAIM 348/258 

CLAIM 348/258 recites: 

CLAIM 258 An apparatus comprising: 

a copper oxide comprising a phase therein which exhibits a 
superconducting state at a critical temperature greater than 
or equal to 26°K; 

a temperature controller for maintaining the temperature of 
said material at a temperature less than said critical 
temperature to produce said superconducting state in said 
phase; 

a source of an electrical supercurrent through said copper 
oxide while it is in said superconducting state; 

said copper oxide 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. 



CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 



This claim should be allowed since claim 258 is allowed. 



Volume 3 



Page 809 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 810 of 1770 



CLAIM 348/268 

CLAIM 348/268 recites: 

CLAIM 268 An apparatus comprising: 

a copper oxide comprising a phase therein which exhibits a 
superconducting state at a critical temperature greater than 
or equal to 26°K; 

a temperature controller for maintaining the temperature of 
said material at a temperature less than said critical 
temperature to produce said superconducting state in said 
phase; 

a source for an electrical supercurrent through said copper 
oxide while it is in said superconducting state; 

said copper oxide includes at least one element selected 
from 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 . 

CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 



Volume 3 



Page 811 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 812 of 1770 



CLAIM 348/269 



CLAIM 348/269 recites: 



CLAIM 269 An apparatus comprising: 



a composition including copper, oxygen and an element 
selected from the group consisting of at least one Group II A 
element and at least one element selected from the group 
consisting of a rare earth element at least one element 
selected from the group consisting of a Group 1MB element, 
where said composition is a mixed copper oxide comprising 
a non-stoichiometric amount of oxygen therein and exhibiting 
a superconducting state at a temperature greater than or 
equal to 26°K; 



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

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

CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 



This claim should be allowed since claime 269 is allowed. 



Volume 3 



Page 813 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 814 of 1770 



CLAIM 348/270 

CLAIM 348/270 recites: 

CLAIM 270 An apparatus comprising: 

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

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

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

said composition including a copper oxide and at least one 
element selected from the group consisting of 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 1MB element. 



CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 



This claim should be allowedsince claim 270 is allowed. 



Volume 3 



Page 815 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 816 of 1770 



CLAIM 348/279 



CLAIM 348/279 recites: 

CLAIM 279 An apparatus comprising a source of a 
superconducting current in a copper oxide comprising a Tc 
greater than or equal to 26°K and a temperature controller 
for maintaining said copper oxide at a temperature less than 
said Tc. 

CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 

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



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



Volume 3 



Page 818 of 1770 



CLAIM 348/314 



CLAIM 348/314 recites: 

CLAIM 279 An apparatus comprising a source of a 
superconducting current in a copper oxide comprising a Tc 
greater than or equal to 26°K and a temperature controller 
for maintaining said copper oxide at a temperature less than 
said Tc. 

CLAIM 279 An apparatus comprising a source of a 
superconducting current in a copper oxide comprising a Tc 
greater than or equal to 26°K and a temperature controller 
for maintaining said copper oxide at a temperature less than 
said Tc. 

CLAIM 314 An apparatus according to claim 279 wherein 
said copper oxide comprises a substantially layered 
perovskite crystal structure . 

CLAIM 348 An apparatus according to anyone of claims 
162, 167, 177, 188, 223, 253, 258, 268, 269, 270, 279 or 
314, wherein said copper oxide can be made according to 
known principles of ceramic science . 

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



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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 820 of 1770 



CLAIM 349 



CLAIM 349 recites: 

CLAIM 57 A combination including; 

a superconducting oxide having a superconducting onset 
temperature greater than or equal to 26°K and containing at 
least 3 elements which are non-superconducting at said 
onset temperature , 

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

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

CLAIM 349 A combination according to claim 57, wherein 
said superconductive oxide can be made according to 
known principles of ceramic science . 

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



Volume 3 



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

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



Volume 3 



Page 822 of 1770 



CLAIM 350/58 



CLAIM 350/58 recites: 

CLAIM 58 A combination, comprised of: 

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

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

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

CLAIM 350 A combination according to anyone of claims 58 
or 373, wherein said copper oxide conductor 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 823 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 824 of 1770 



CLAIM 350/272 



CLAIM 350/272 recites: 

CLAIM 373 A combination, comprised of: 

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

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

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

CLAIM 350 A combination according to anyone of claims 58 
or 373, wherein said copper oxide conductor can be made 
according to known principles of ceramic science . 

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



Volume 3 



Page 825 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 826 of 1770 



CLAIM 351 



CLAIM 351 recites: 

CLAIM 59 A combination, comprised of: 

a ceramic-like material having an onset of superconductivity 
at an onset temperature greater than or equal to 26°K, 

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

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

CLAIM 351 A combination according to claim 59, wherein 
said ceramic-like material can be made according to known 
principles of ceramic science . 

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



Volume 3 



Page 827 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 828 of 1770 



CLAIM 352/69 



CLAIM 352/69 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

CLAIM 352 A superconductive combination according to 
anyone of claims 69 to 71 or 1 34, 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 



Volume 3 



Page 829 of 1770 



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

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



Volume 3 



Page 830 of 1770 



CLAIM 352/70 



CLAIM 352/70 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

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

CLAIM 352 A superconductive combination according to 
anyone of claims 69 to 71 or 1 34, 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 



Volume 3 



Page 831 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 832 of 1770 



CLAIM 352/71 



CLAIM 352 /71 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

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

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

CLAIM 352 A superconductive combination according to 
anyone of claims 69 to 71 or 1 34, 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 



Volume 3 



Page 833 of 1770 



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

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



Volume 3 



Page 834 of 1770 



CLAIM 352/134 

CLAIM 352/134 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

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

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

CLAIM 134 The combination of claim 71 , where said mixed 
copper oxide further includes a rare earth or Group III B 
element . 

CLAIM 352 A superconductive combination according to 
anyone of claims 69 to 71 or 1 34, wherein said 
superconductive composition can be made according to 
known principles of ceramic science . 



Volume 3 



Page 835 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 836 of 1770 



CLAIM 353/139 

CLAIM 353/139 recites: 

CLAIM 139 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 



Volume 3 



Page 837 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 838 of 1770 



CLAIM 353/140 

CLAIM 353/140 recites: 

CLAIM 140 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



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Page 839 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim is allowed since claim 140 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 840 of 1770 



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



Volume 3 



Page 841 of 1770 



CLAIM 353/149 

CLAIM 353/149 recites: 

CLAIM 149 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 



Volume 3 



Page 842 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 843 of 1770 



CLAIM 353/150 

CLAIM 353/150 recites: 

CLAIM 149 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 150 The superconductive apparatus according to 
claim 149 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 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 



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1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 150 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 845 of 1770 



CLAIM 353/151 

CLAIM 353/151 recites: 

CLAIM 149 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 150 The superconductive apparatus according to 
claim 149 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. 



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CLAIM 151 The superconductive apparatus according to 
claim 150 in which the rare-earth or rare-earth-like element 
is lanthanum. 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

The claim should be allowed since claim 151 is ALLOWE 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 848 of 1770 



CLAIM 353/152 

CLAIM 353/152 recites: 

CLAIM 149 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 150 The superconductive apparatus according to 
claim 149 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. 



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CLAIM 152 The superconductive apparatus according to 
claim 150 in which the alkaline-earth element is barium. 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claime 152 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 



Page 851 of 1770 



CLAIM 353/153 

CLAIM 353/153 recites: 

CLAIM 149 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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



CLAIM 153 The superconductive apparatus according to 
claim 149 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 



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CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 853 of 1770 



CLAIM 353/154 

CLAIM 353/154 recites: 

CLAIM 149 A superconductive apparatus for causing 
electric current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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



CLAIM 153 The superconductive apparatus according to 
claim 149 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 



Volume 3 



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CLAIM 154 The superconductive apparatus according to 
claim 153 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion . 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 855 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 856 of 1770 



CLAIM 353/155 recites: 

CLAIM 139 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 153 The superconductive apparatus according to 
claim 149 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 



Volume 3 



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CLAIM 154 The superconductive apparatus according to 
claim 153 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion . 

CLAIM 155 The superconductive apparatus according to 
claim 154 in which oxygen is present in the copper-oxide 
compound in a nonstoichiometric atomic proportion . 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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. 



Volume 3 



Page 858 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 859 of 1770 



CLAIM 353/156 

CLAIM 353/156 recites: 

CLAIM 156 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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 
having a superconductive/resistive-transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 860 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 156 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 861 of 1770 



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



Volume 3 



Page 862 of 1770 



CLAIM 353/157 

CLAIM 353/157 recites: 

CLAIM 156 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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 
having a superconductive/resistive-transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



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Page 863 of 1770 



CLAIM 157 The superconductive apparatus according to 
claim 156 in which the rare-earth or rare-earth-like element 
is lanthanum. 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 157 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 864 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 865 of 1770 



CLAIM 353/158 

CLAIM 353/158 recites: 

CLAIM 156 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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 
having a superconductive/resistive-transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 866 of 1770 



CLAIM 158 The superconductive apparatus according to 
claim 156 in which the alkaline-earth element is barium. 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 158 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 867 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 868 of 1770 



CLAIM 353/1159 

CLAIM 353/159 recites: 

CLAIM 156 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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 
having a superconductive/resistive-transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 869 of 1770 



CLAIM 159 The superconductive apparatus according to 
claim 156 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions. 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 870 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 871 of 1770 



CLAIM 353/160 

CLAIM 353/160 recites: 

CLAIM 156 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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 
having a superconductive/resistive-transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



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CLAIM 159 The superconductive apparatus according to 
claim 156 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions. 

CLAIM 160 The superconductive apparatus according to 
claim 159 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion. 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed because claim 160 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 



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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 



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CLAIM 353/161 

CLAIM 353/161 recites: 

CLAIM 156 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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 
having a superconductive/resistive-transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0 , the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



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CLAIM 159 The superconductive apparatus according to 
claim 156 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions. 

CLAIM 160 The superconductive apparatus according to 
claim 159 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion. 

CLAIM 161 The superconductive apparatus according to 
claim 160 in which oxygen is present in the copper-oxide 
compound in a nonstoichiometric atomic proportion. 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 161 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. 



Volume 3 



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CLAIM 353/170 

CLAIM 353/170 recites: 

CLAIM 170 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound 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 and at least one element selected from 
the group consisting of a rare earth element and a Group III 
B element; 

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 



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

This claim should be allowed since claim 170 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 879 of 1770 



CLAIM 353/171 

CLAIM 353/171 recites: 

CLAIM 171 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



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CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 171 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 



Page 882 of 1770 



CLAIM 353/175 

CLAIM 353/175 recites: 

CLAIM 175 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a transition metal oxide compound 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 an element selected from the group 
consisting of a Group II A element and at least one element 
selected from the group consisting of a rare earth element 
and a Group III B element; 

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 



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

This claim should be allowed since claim 175 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 884 of 1770 



CLAIM 353/176 

CLAIM 353/176 recites: 

CLAIM 176 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a transition metal-oxide compound having 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 having a superconductive/resistive transition 
defining a superconductive/resistive-transition temperature 
range between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 885 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 176 is allowed, 

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

The sentenced bridging page 1 and 2 of the specification states 
" Generally, superconductivity is considered to be a property of the metallic state of 
a material since all known superconductors are metallic under the conditions that 
cause them to be superconducting. A few normally non-metallic materials, for 



Volume 3 



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example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



Volume 3 



Page 887 of 1770 



CLAIM 353/180 

CLAIM 353/180 recites: 

CLAIM 180 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound 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 a 
Group II A element, and at least one element selected from 
the group consisting of a rare earth element and a Group III 
B element; 

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 



Volume 3 



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This claim should be allowed since claim 180 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 889 of 1770 



CLAIM 353/181 

CLAIM 353/181 recites: 

CLAIM 181 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



Volume 3 



Page 890 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 181 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 891 of 1770 



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



Volume 3 



Page 892 of 1770 



CLAIM 353/205 

CLAIM 353/205 recites: 

CLAIM 205 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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, a Group III 
B element and an alkaline-earth element , the composition 
having a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 893 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 894 of 1770 



CLAIM 353/206 

CLAIM 353/206 recites: 

CLAIM 205 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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, a Group III 
B element and an alkaline-earth element , the composition 
having a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



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Page 895 of 1770 



CLAIM 206 The superconductive apparatus according to 
claim 205 in which said at least one element is lanthanum . 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 896 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 897 of 1770 



CLAIM 353/207 

CLAIM 353/207 recites: 

CLAIM 205 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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, a Group III 
B element and an alkaline-earth element , the composition 
having a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 898 of 1770 



CLAIM 207 The superconductive apparatus according to 
claim 205 in which the alkaline-earth element is barium . 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 899 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 900 of 1770 



CLAIM 353/208 

CLAIM 353/208 recites: 

CLAIM 205 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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, a Group III 
B element and an alkaline-earth element , the composition 
having a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 901 of 1770 



CLAIM 208 The superconductive apparatus according to 
claim 205 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 902 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 903 of 1770 



CLAIM 353/209 

CLAIM 353/209 

CLAIM 205 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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, a Group III 
B element and an alkaline-earth element , the composition 
having a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 904 of 1770 



CLAIM 208 The superconductive apparatus according to 
claim 205 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 209 The superconductive apparatus according to 
claim 208 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion . 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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. 



Volume 3 



Page 905 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 906 of 1770 



CLAIM 353/210 

CLAIM 353/210 recites: 

CLAIM 205 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having 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, a Group III 
B element and an alkaline-earth element , the composition 
having a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range 
between an upper limit defined by a transition-onset 
temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the 
transition-onset temperature Tc being greater than or equal 
to 26°K; 

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

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



Volume 3 



Page 907 of 1770 



CLAIM 208 The superconductive apparatus according to 
claim 205 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 209 The superconductive apparatus according to 
claim 208 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion . 

CLAIM 210 The superconductive apparatus according to 
claim 209 in which oxygen is present in the copper-oxide 
compound in a nonstoichiometric atomic proportion . 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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, 



Volume 3 



Page 908 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 909 of 1770 



CLAIM 353/211 

CLAIM 353/211 recites: 

CLAIM 21 1 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having a 
substantially layered perovskite 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; 

(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 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 



Volume 3 



Page 910 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 911 of 1770 



CLAIM 353/212 

CLAIM 353/212 recites: 

CLAIM 212 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having a 
substantially layered perovskite 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-bulk- 
resistivity intercept temperature Tp=o of the superconductive 
composition; and 

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



Volume 3 



Page 912 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 913 of 1770 



CLAIM 353/213 

CLAIM 353/213 recites: 

CLAIM 213 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 



Volume 3 



Page 914 of 1770 



This claim should be allowed since claim 213 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 915 of 1770 



CLAIM 353/214 

CLAIM 353/214 recites: 

CLAIM 214 A superconductive apparatus for conducting an electric 
current essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition consisting 
essentially of a copper-oxide compound having a substantially 
layered perovskite crystal structure, the copper-oxide compound 
including a Group II A element and at least one element selected 
from the group consisting of a rare earth element and a Group 1MB 
element, the composition having a superconductive/resistive 
transition defining a superconductive-resistive-transition 
temperature range between an upper limit defined by a transition- 
onset temperature Tc and a lower limit defined by an effectively- 
zero-bulk-resistivity intercept temperature Tp=0, the transition-onset 
temperature Tc being greater than or equal to 26°K; 

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 



Volume 3 



Page 916 of 1770 



1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 917 of 1770 



CLAIM 353/215 

CLAIM 353/215 recites: 

CLAIM 215 A superconductive apparatus for causing 
electric-current flow in a superconductive state at a 
temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 208 The superconductive apparatus according to 
claim 205 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 



Volume 3 Page 91 8 of 1 770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
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 919 of 1770 



CLAIM 353/216 

CLAIM 353/216 recites: 

CLAIM 216 A superconductive apparatus for conducting an 
electric current essentially without resistive losses, 
comprising: 

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

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

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



Volume 3 



Page 920 of 1770 



CLAIM 208 The superconductive apparatus according to 
claim 205 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 
This claim should be allowed since claim 216 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 921 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 922 of 1770 



CLAIM 353/387 

CLAIM 353/387 recites: 

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

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

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

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



Volume 3 



Page 923 of 1770 



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



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 387 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 924 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 925 of 1770 



CLAIM 353/388 

CLAIM 353/388 recites: 



CLAIM 388 An apparatus comprising: 

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

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

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



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science. 



This claim should be allowed since claim 388 allowed. 



Volume 3 



Page 926 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 927 of 1770 



CLAIM 353/389 

CLAIM 353/389 recites: 

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

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

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 



Volume 3 



Page 928 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 929 of 1770 



CLAIM 353/390 

CLAIM 353/390 recites: 

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

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

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

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

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



Volume 3 



Page 930 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 390 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 931 of 1770 



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



Volume 3 



Page 932 of 1770 



CLAIM 353/391 

CLAIM 353/391 recites: 

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

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

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

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

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



Volume 3 



Page 933 of 1770 



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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 391 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 934 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 935 of 1770 



CLAIM 353/392 

CLAIM 353/392 recites: 

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

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

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

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



Volume 3 



Page 936 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 392 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 937 of 1770 



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



Volume 3 



Page 938 of 1770 



CLAIM 353/393 

CLAIM 353/393 recites: 

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

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

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

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



Volume 3 



Page 939 of 1770 



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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 393 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 940 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 941 of 1770 



CLAIM 353/396 

CLAIM 353/396 recites: 

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

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

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 



Volume 3 



Page 942 of 1770 



1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 396 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 943 of 1770 



CLAIM 353/397 

CLAIM 353/397 recites: 

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

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

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



Volume 3 



Page 944 of 1770 



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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 397 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 945 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 946 of 1770 



CLAIM 353/398 

CLAIM 353/398 recites: 

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

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

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

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



Volume 3 



Page 947 of 1770 



CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 398 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 948 of 1770 



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



Volume 3 



Page 949 of 1770 



CLAIM 353/399 

CLAIM 353/399 recites: 

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

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

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



Volume 3 



Page 950 of 1770 



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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 399 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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CLAIM 353/400 

CLAIM 353/400 recites: 

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

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

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

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

CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 



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

This claim should be allowed since claim 400 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 353/401 

CLAIM 353/401 recites: 

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

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

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

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



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CLAIM 353 A superconductive apparatus according to 
anyone of claims 139, 140, 149 to 155, 156 to 161, 170, 171, 
1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 401 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 



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example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants 
discovered that ceramic materials are superconductors. 



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