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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 323-329 



CORRECTED APPEAL BRIEF 



Part VII 



CFR37 §41.37(c)(1)(vii) 



VOLUME 3 



Part 3 



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 323/86 

CLAIM 323/86 recites: 

CLAIM 86 An apparatus comprising: 

a composition including a transition metal, a rare earth or 
rare earth-like element, 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 onset temperature greater 
than or equal to 26°K, 

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

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



CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim shuld be allowed since claim 86 is allowed. 



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

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



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CLAIM 323/87 



CLAIM 323/87 recites: 

CLAIM 86 An apparatus comprising: 

a composition including a transition metal, a rare earth or 
rare earth-like element, 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 onset temperature greater 
than or equal to 26°K, 

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

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

CLAIM 87 The apparatus of claim 86, where said transition 
metal is copper. 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 



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This claim should be allowed since claim 87 is allowed. 

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

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



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CLAIM 323/144 

CLAIM 323/144 recites: 

CLAIM 144 An apparatus comprising: 

a composition including a transition metal, a rare earth or 
rare earth-like element, 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 144 is allowed. 



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

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



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CLAIM 323/146 

CLAIM 323/146 recites: 

CLAIM 146 An apparatus: 

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

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

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

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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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 



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CLAIM 323/147 

CLAIM 323/147 recites: 

CLAIM 146 An apparatus: 

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

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

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

CLAIM 147 The apparatus of claim 146, where said 
composition is comprised of a metal oxide . 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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. 



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CLAIM 323/163 



CLAIM 323/163 recites: 

CLAIM 163 An apparatus comprising: 

a composition comprising copper, oxygen and any element 
selected from the group consisting of a Group II A element, a 
rare earth element and a Group III B element, where said 
composition is a mixed copper 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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 452 of 1770 



CLAIM 323/164 



CLAIM 323/164 recites: 

CLAIM 164 An apparatus comprising: 

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

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

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

said composition including a copper oxide and an element selected 
from the group consisting of Group II A element, a rare earth 
element and a Group III B element . 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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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 323/168 

CLAIM 323/168 recites: 

CLAIM 168 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 and a Group III B element, 
where said composition is a mixed copper 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 168 is allowed. 

Volume 3 Page 455 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 



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CLAIM 323/169 



CLAIM 169 An apparatus comprising: 

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

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

a current source passing 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 and 
at least one element selected from the group consisting of a 
rare earth element and a Group III B element. 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim169 is allowed. 



Volume 3 Page 457 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. 



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CLAIM 323/173 

CLAIM 323/173 recites: 

CLAIM 173 An apparatus comprising: 

a composition including a transition metal, oxygen and 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, 
where said composition is a mixed transitional metal oxide 
formed from said transition metal and said oxygen, said 
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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 



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This claim should be allowed since claim 173 is allowed. 

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

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



Volume 3 



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CLAIM 323/174 



CLAIM 174 An apparatus: 

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

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

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

said composition including a transitional metal oxide and at 
least one element selected from the group consisting of 
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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 174 is allowed. 

Volume 3 Page 461 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. 



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CLAIM 323/178 

CLAIM 323/178 recites: 

CLAIM 178 An apparatus comprising: 

a composition including copper, oxygen, 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, 
where said composition is a mixed copper 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 178 is allowed. 



Volume 3 Page 463 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. 



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CLAIM 323/182 



CLAIM 323/182 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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

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



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CLAIM 323/189 



CLAIM 323/189 recites: 



CLAIM 189 An apparatus comprising: 



a composition of the formula BaLa5-xCu505(3-y), wherein x 
is from about 0.75 to about 1 and y is the oxygen deficiency 
resulting from annealing said composition at temperatures 
from about 540oC to about 950oC and for times of about 15 
minutes to about 12 hours, said composition having a metal 
oxide phase which exhibits a superconducting state at a 
critical temperature greater than or equal to 26°K; 



a temperature controller maintaining the temperature of said 
composition at a temperature less than said critical 
temperature to induce said superconducting state in said 
metal oxide phase; and 

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



CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 189 is allowed. 



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

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



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CLAIM 323/196 

CLAIM 323/196 recites: 

CLAIM 196 An apparatus comprising: 

a composition including a transition metal, a Group III B 
element, 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 196 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 



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

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



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CLAIM 323/197 



CLAIM 323/197 recites: 

CLAIM 196 An apparatus comprising: 

a composition including a transition metal, a Group III B 
element, 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 197 The apparatus of claim 196, where said 
transition metal is copper. 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 197 is allowed. 



Volume 3 Page 471 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. 



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CLAIM 323/214 

CLAIM 323/214 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 



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189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 214 is allowed. 

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

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



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CLAIM 323/224 

CLAIM 323/224 recites: 

CLAIM 189 An apparatus comprising: 

a composition of the formula BaLa5-xCu505(3-y), wherein x 
is from about 0.75 to about 1 and y is the oxygen deficiency 
resulting from annealing said composition at temperatures 
from about 540oC to about 950oC and for times of about 15 
minutes to about 12 hours, said composition having a metal 
oxide phase which exhibits a superconducting state at a 
critical temperature greater than or equal to 26°K; 

a temperature controller maintaining the temperature of said 
composition at a temperature less than said critical 
temperature to induce said superconducting state in said 
metal oxide phase; and 

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

CLAIM 224 An apparatus according to claim 189 wherein 
said composition comprises a substantially layered 
perovskite crystal structure. 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 



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260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 



This claim should be allowed since claims 189 and 224 are 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 323/235 



CLAIM 323/235 recites: 

CLAIM 235 An apparatus comprising: 

a composition including a transition metal, a rare earth or 
rare earth-like 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 235 is allowed. 

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



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

The sentenced bridging page 1 and 2 of the specification states " Generally, 
superconductivity is considered to be a property of the metallic state of a material 
since all known superconductors are metallic under the conditions that cause 
them to be superconducting. A few normally non-metallic materials, for example, 
become 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 323/236 



CLAIM 323/236 recites: 



CLAIM 235 An apparatus comprising: 



a composition including a transition metal, a rare earth or 
rare earth-like 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 236 An apparatus according to claim 235, where 
said transition metal is copper. 



CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 236 is allowed. 



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

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



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CLAIM 323/237 



CLAIM 323/237 recites: 

CLAIM 237 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, and 

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

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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

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



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CLAIM 323/239 



CLAIM 323/239 recites: 

CLAIM 237 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, and 

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

CLAIM 238 An apparatus according to claim 237, where 
said composition is comprised of a metal oxide . 

CLAIM 239 An apparatus according to claim 238, where 
said composition is comprised of a transition metal oxide . 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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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 323/254 



CLAIM 323/254 recites: 

CLAIM 254 An apparatus comprising: 

a composition including copper, oxygen and an element 
selected from the group consisting of a Group II A element, a 
rare earth element and a Group III B 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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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 323/255 



CLAIM 323/255 recites: 

CLAIM 255 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 an element 
selected from the group consisting of Group II A element, a 
rare earth element and a Group III B element . 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



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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 323/259 



CLAIM 323/259 recites: 



CLAIM 259 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 and a Group III B 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 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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science. 



This claim should be allowed since claim 259 is allowed. 



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

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



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CLAIM 323/260 



CLAIM 323/260 recites: 



CLAIM 260 An apparatus comprising: 



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

a temperature 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 and 
at least one element selected from the group consisting of a 
rare earth element and a Group III B element. 



CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science. 



This claim should be allowed since claim 260 is allowed. 



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

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



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CLAIM 323/264 



CLAIM 323/264 recites: 

CLAIMS 264 An apparatus comprising: 

a composition including a transition metal, 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 and a Group III 
B element, where said composition is a mixed transitional 
metal oxide formed from said transition metal and said 
oxygen, said 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. 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 264 is allowed. 

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



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

The sentenced bridging page 1 and 2 of the specification states " Generally, 
superconductivity is considered to be a property of the metallic state of a material 
since all known superconductors are metallic under the conditions that cause 
them to be superconducting. A few normally non-metallic materials, for example, 
become 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 494 of 1770 



CLAIM 323/265 



CLAIM 323/265 recites: 



CLAIM 265 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 transitional metal oxide and at 
least one element selected from the group consisting of 
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 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 265 is allowed. 



Volume 3 



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

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



Volume 3 



Page 496 of 1770 



CLAIM 323/273 



CLAIM 323/273 recites: 

CLAIM 273 An apparatus comprising a composition 
comprising 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 for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a source of an electrical 
superconducting current through said composition with said 
phrase exhibiting said superconductivity. 

CLAIM 323 An apparatus according to anyone of claims 86, 
87, 144, 146, 147, 163, 164, 168, 169, 173, 174, 178, 182, 
189, 196, 197, 214, 224, 235, 236, 237, 239, 254, 255, 259, 
260, 264, 265 or 273, wherein said composition can be 
made according to known principles of ceramic science . 

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



Volume 3 



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

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



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CLAIM 324/91 

CLAIM 324/91 recites: 

CLAIM 91 A combination, comprising: 

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

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

CLAIM 324 A combination according to anyone of claims 
91 , 92 or 36 to 39, wherein said composition can be made 
according to known principles of ceramic science . 

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



Volume 3 



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

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



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CLAIM 324/92 

CLAIM 324/92 recites: 

CLAIM 91 A combination, comprising: 

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

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

CLAIM 92 The combination of claim 91 , where said 
composition is a copper oxide . 

CLAIM 324 A combination according to anyone of claims 
91 , 92 or 36 to 39, wherein said composition can be made 
according to known principles of ceramic science . 

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



Volume 3 



Page 501 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 502 of 1770 



CLAIM 324/36 



CLAIM 324/36 recites: 

CLAIM 36 A combination comprising: 

a composition having a superconducting onset temperature 
greater than or equal to 26°K, said composition being 
comprised of a substituted copper oxide exhibiting mixed 
valence states and at least one other element in its 
crystalline structure, 

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 onset temperature, and 

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

CLAIM 324 A combination according to anyone of claims 
91 , 92 or 36 to 39, wherein said composition can be made 
according to known principles of ceramic science . 

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



Volume 3 



Page 503 of 1770 



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

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



Volume 3 



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CLAIM 324/37 

CLAIM 324/37 recites: 

CLAIM 36 A combination comprising: 

a composition having a superconducting onset temperature 
greater than or equal to 26°K, said composition being 
comprised of a substituted copper oxide exhibiting mixed 
valence states and at least one other element in its 
crystalline structure, 

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 onset temperature, and 

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

CLAIM 37 The combination of claim 36, where said at least 
one other element is an alkaline earth element . 

CLAIM 324 A combination according to anyone of claims 
91 , 92 or 36 to 39, wherein said composition can be made 
according to known principles of ceramic science . 
The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 



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. 



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CLAIM 324/38 

CLAIM 324/38 recites: 

CLAIM 36 A combination comprising: 

a composition having a superconducting onset temperature 
greater than or equal to 26°K, said composition being 
comprised of a substituted copper oxide exhibiting mixed 
valence states and at least one other element in its 
crystalline structure, 

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 onset temperature, and 

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

CLAIM 38 The combination of claim 36, where said at least 
one other element is an element which results in Cu3+ ions 
in said composition . 

CLAIM 324 A combination according to anyone of claims 
91 , 92 or 36 to 39, wherein said composition can be made 
according to known principles of ceramic science . 

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



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

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



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CLAIM 324/39 

CLAIM 324/39 recites: 

CLAIM 36 A combination comprising: 

a composition having a superconducting onset temperature 
greater than or equal to 26°K, said composition being 
comprised of a substituted copper oxide exhibiting mixed 
valence states and at least one other element in its 
crystalline structure, 

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 onset temperature, and 

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

CLAIM 39 The combination of claim 36, where said at least 
one other element is an element chosen to result in the 
presence of both Cu2+ and Cu3+ ions in said composition. 

CLAIM 324 A combination according to anyone of claims 
91 , 92 or 36 to 39, wherein said composition can be made 
according to known principles of ceramic science . 

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



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

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



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CLAIM 325/1 



CLAIM 325/1 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



Volume 3 



Page 511 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 512 of 1770 



CLAIM 325/2 



CLAIM 325/2 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 2 The superconducting apparatus of claim 1 , further 
including an alkaline earth element substituted for at least 
one atom of said rare earth or rare earth-like element in said 
composition. 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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. 



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CLAIM 325/3 

CLAIM 325/3 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 2 The superconducting apparatus of claim 1 , further 
including an alkaline earth element substituted for at least 
one atom of said rare earth or rare earth-like element in said 
composition. 

CLAIM 3 The superconducting apparatus of claim 2, where 
said transition metal is Cu . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 



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

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



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CLAIM 325/4 

CLAIM 325/4 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like element, a transition metal element capable of 
exhibiting multivalent states and oxygen, including at least 
one phase that exhibits superconductivit y at temperature 
greater than or equal to 26°K, a means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 2 The superconducting apparatus of claim 1 , further 
including an alkaline earth element substituted for at least 
one atom of said rare earth or rare earth-like element in said 
composition. 

CLAIM 3 The superconducting apparatus of claim 2, where 
said transition metal is Cu . 

CLAIM 4 The superconducting apparatus of claim 3, where 
said alkaline earth element is selected from the group 
consisting of B, Ca, Ba, and Sr . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 



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366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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

The sentenced bridging page 1 and 2 of the specification states " Generally, 
superconductivity is considered to be a property of the metallic state of a material 
since all known superconductors are metallic under the conditions that cause 
them to be superconducting. A few normally non-metallic materials, for example, 
become 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 325/5 



CLAIM 325/5 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 5 The superconducting apparatus of claim 1 , where 
said transition metal element is selected from the group 
consisting of Cu, Ni, and Cr . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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 325/6 

CLAIM 325/6 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 2 The superconducting apparatus of claim 1 , further 
including an alkaline earth element substituted for at least 
one atom of said rare earth or rare earth-like element in said 
composition. 

CLAIM 6 The superconducting apparatus of claim 2, where 
said rare earth or rare earth-like element is selected from the 
group consisting of La, Nd, and Ce . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 



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

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



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CLAIM 325/7 



CLAIM 325/7 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 7 The superconducting apparatus of claim 1 , where said 
phase is crystalline with a perovskite-like structure . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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 325/8 

CLAIM 325/8 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 2 The superconducting apparatus of claim 1 , further 
including an alkaline earth element substituted for at least 
one atom of said rare earth or rare earth-like element in said 
composition. 

CLAIM 8 The superconducting apparatus of claim 2, 
where said phase is crystalline with a perovskite-like 
structure . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 



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

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



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CLAIM 325/9 



CLAIM 325/9 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 9 The superconducting apparatus of claim 1 , where 
said phase exhibits a layer-like crystalline structure . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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 528 of 1770 



CLAIM 325/10 



CLAIM 325/10 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 10 The superconducting apparatus of claim 1, where 
said phase is a mixed copper oxide phase . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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 530 of 1770 



CLAIM 325/11 



CLAIM 325/1 1 recites: 

CLAIM 1 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or rare 
earth-like 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 means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a current source for passing an 
electrical superconducting current through said composition 
while exhibiting said superconductivity. 

CLAIM 1 1 The superconducting apparatus of claim 1 , where 
said composition is comprised of mixed oxides with alkaline 
earth doping . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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 325/33 



CLAIM 325/33 recites: 

CLAIM 33 A superconducting apparatus comprising a 
composition having a superconducting onset temperature 
greater than or equal to 26°K, the composition being 
comprised of a copper oxide doped with an alkaline earth 
element where the concentration of said alkaline earth 
element is near to the concentration of said alkaline earth 
element where the superconducting copper oxide phase in 
said composition undergoes an orthorhombic to tetragonal 
structural phase transition . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
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 325/34 



CLAIM 325/34 recites: 

CLAIM 34 A superconducting apparatus having a 
superconducting onset temperature greater than or equal to 
26°K, the composition being comprised of a mixed copper 
oxide doped with an element chosen to result in Cu3+ ions in 
said composition and a current source for passing a 
superconducting current through said superconducting 
composition. 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in 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 325/35 



CLAIM 325/35 recites: 

CLAIM 34 A superconducting apparatus having a 
superconducting onset temperature greater than or equal to 
26°K, the composition being comprised of a mixed copper 
oxide doped with an element chosen to result in Cu3+ ions in 
said composition and a current source for passing a 
superconducting current through said superconducting 
composition. 

CLAIM 35 The superconducting apparatus of claim 34, 
where said doping element includes an alkaline earth 
element . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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 325/66 



CLAIM 325/66 recites: 

CLAIM 66 An apparatus comprising a superconductive 
composition having a transition temperature greater than or equal 
to 26°K, the composition including a multivalent transition metal 
oxide and at least one additional element, said composition having 
a distorted orthorhombic crystalline structure , a source of current 
for passing a superconducting electric current in said transition 
metal oxide, and a cooling apparatus for maintaining said transition 
metal oxide below said onset temperature and at a temperature 
greater than or equal to 26°K. 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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

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



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CLAIM 325/67 



CLAIM 325/67 recites: 

CLAIM 66 An apparatus comprising a superconductive 
composition having a transition temperature greater than or equal 
to 26°K, the composition including a multivalent transition metal 
oxide and at least one additional element, said composition having 
a distorted orthorhombic crystalline structure , a source of current 
for passing a superconducting electric current in said transition 
metal oxide, and a cooling apparatus for maintaining said transition 
metal oxide below said onset temperature and at a temperature 
greater than or equal to 26°K. 

CLAIM 67 The apparatus of claim 66, where said transition 
metal oxide is a mixed copper oxide . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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

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



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CLAIM 325/68 



CLAIM 325/68 recites: 

CLAIM 66 An apparatus comprising a superconductive 
composition having a transition temperature greater than or equal 
to 26°K, the composition including a multivalent transition metal 
oxide and at least one additional element, said composition having 
a distorted orthorhombic crystalline structure , a source of current 
for passing a superconducting electric current in said transition 
metal oxide, and a cooling apparatus for maintaining said transition 
metal oxide below said onset temperature and at a temperature 
greater than or equal to 26°K. 

CLAIM 67 The apparatus of claim 66, where said transition 
metal oxide is a mixed copper oxide . 

CLAIM 68 The apparatus of claim 67, where said one 
additional element is an alkaline earth element . 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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 325/109 



CLAIM 325/1096 recites: 

CLAIM 109 A superconductive 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, means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and means for passing an electrical 
superconducting current through said composition while 
exhibiting said superconductivity. 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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 325/130 



CLAIM 325/130 recites: 

CLAIM 130 A superconductive apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, the composition including a rare earth or 
Group III B 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, means for maintaining said 
composition at said temperature to exhibit said 
superconductivity and a means for passing an electrical 
superconducting current through said composition which 
exhibiting said superconductivity. 

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



Volume 3 



Page 547 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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CLAIM 325/361 



CLAIM 325/361 recites: 

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

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



Volume 3 



Page 549 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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CLAIM 325/362 



CLAIM 325/362 recites: 

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

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

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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. 



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CLAIM 325/363 

CLAIM 325/363 recites: 

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

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

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

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 



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

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



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Page 554 of 1770 



CLAIM 325/364 



CLAIM 325/364 recites: 

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

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

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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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Page 556 of 1770 



CLAIM 325/365 

CLAIM 325/365 recites: 

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

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

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

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 



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

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



Volume 3 



Page 558 of 1770 



CLAIM 325/366 



CLAIM 325/366 recites: 

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

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

CLAIM 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 

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



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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 325/370 

CLAIM 325/370 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 325 A superconductive apparatus according to 
anyone of claims 1 to 11, 33 to 35, 66 to 68,109, 130, 361- 
366 or 370, wherein said composition can be made 
according to known principles of ceramic science . 



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

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



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Page 562 of 1770 



CLAIM 326/93 



CLAIM 326/93 recites: 

CLAIM 93 An apparatus, comprising: 

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

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

CLAIM 326 An apparatus according to anyone of claims 93 
to 95 or 138, wherein said mixed 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 



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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 326/94 



CLAIM 326/94 recites: 

CLAIM 93 An apparatus, comprising: 

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

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

CLAIM 94 The apparatus of claim 93, where said copper 
oxide material exhibits a layer-like crystalline structure . 

CLAIM 326 An apparatus according to anyone of claims 93 
to 95 or 138, wherein said mixed 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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1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is not enabled by Applicants' teaching in 
view of the underlined limitation of the claim which includes specific limitations on 
the scope of this claim. 

The sentenced bridging page 1 and 2 of the specification states " Generally, 
superconductivity is considered to be a property of the metallic state of a material 
since all known superconductors are metallic under the conditions that cause 
them to be superconducting. A few normally non-metallic materials, for example, 
become 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 326/95 



CLAIM 326/95 recites: 

CLAIM 93 An apparatus, comprising: 

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

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

CLAIM 95 The apparatus of claim 93, where said 
copper oxide material exhibits a mixed valence state . 

CLAIM 326 An apparatus according to anyone of claims 93 
to 95 or 138, wherein said mixed copper oxide can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 138 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 



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

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



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CLAIM 326/138 

CLAIM 326/138 recites: 

CLAIM 93 An apparatus, comprising: 

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

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



CLAIM 138 The apparatus of claim 93, where said copper 
oxide material exhibits a substantially layered crystalline 
structure. 

CLAIM 326 An apparatus according to anyone of claims 93 
to 95 or 138, wherein said mixed 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. 



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CLAIM 327/64 



CLAIM 327/64 recites: 

CLAIM 64 A combination, comprising: 

a mixed copper oxide composition having enhanced polaron 
formation , said composition including an element causing 
said copper to have a mixed valent state in said composition, 
said composition further having a distorted octahedral 
oxygen environment leading to a Tc greater than or equal to 
26°K, 

means for providing a superconducting current through said 
composition at temperatures greater than or equal to 26°K 
and less than said Tc, and 

means for cooling said composition to a temperature greater 
than or equal to 26°K and less than said Tc. 

CLAIM 327 A combination according to anyone of claims 64 
or 1 35, wherein said mixed 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. 



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CLAIM 327/135 



CLAIM 327/135 recites: 

CLAIM 135 A combination, comprising: 

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

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

CLAIM 327 A combination according to anyone of claims 64 
or 1 35, wherein said mixed copper oxide can be made 
according to known principles of ceramic science . 

This claim should be allowed since claim 135 is allowed. 

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



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

The sentenced bridging page 1 and 2 of the specification states " Generally, 
superconductivity is considered to be a property of the metallic state of a material 
since all known superconductors are metallic under the conditions that cause 
them to be superconducting. A few normally non-metallic materials, for example, 
become 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 328/48 



CLAIM 328/48 recites: 

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

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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, 



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

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



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CLAIM 328/49 



CLAIM 328/49 recites: 

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

CLAIM 49 The superconductive apparatus of claim 48, 
where said transition metal oxide is multivalent in said 
composition . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



Volume 3 



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

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



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CLAIM 328/50 



CLAIM 328/50 recites: 

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

CLAIM 50 The superconductive apparatus of claim 48, 
where said transition metal is Cu . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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

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



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CLAIM 328/51 



CLAIM 328/51 recites: 

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

CLAIM 51 The superconductive apparatus of claim 48, where said 
substitutions include an alkaline earth element . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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

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



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CLAIM 328/52 



CLAIM 328/52 recites: 

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

CLAIM 52 The superconductive apparatus of claim 48, 
where said substitutions include a rare earth or rare earth- 
like element . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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

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



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Page 584 of 1770 



CLAIM 328/96 



CLAIM 328/96 recites: 

CLAIM 96 A superconductive apparatus for causing electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a layer-type perovskite-like 
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 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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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 328/97 

CLAIM 328/97 recites: 

CLAIM 96 A superconductive apparatus for causing electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a layer-type perovskite-like 
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 97 The superconductive apparatus according to 
claim 96 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 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 



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or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 97 is allowed. 

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

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



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CLAIM 328/98 

CLAIM 328/98 recites: 

CLAIM 96 A superconductive apparatus for causing electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a layer-type perovskite-like 
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 97 The superconductive apparatus according to 
claim 96 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 98 The superconductive apparatus according to 
claim 97 in which the rare-earth or rare-earth-like element is 
lanthanum. 



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CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 98 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 



Volume 3 



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



Volume 3 



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CLAIM 328/99 

CLAIM 328/99 recites: 

CLAIM 96 A superconductive apparatus for causing electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a layer-type perovskite-like 
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 97 The superconductive apparatus according to 
claim 96 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 99 The superconductive apparatus according 
to claim 97 in which the alkaline-earth element is 
barium. 



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CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 99 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 



Volume 3 



Page 593 of 1770 



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



Volume 3 



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CLAIM 328/100 

CLAIM 328/100 recites: 

CLAIM 96 A superconductive apparatus for causing electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a layer-type perovskite-like 
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 100 The superconductive apparatus according to 
claim 96 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

Volume 3 Page 595 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 596 of 1770 



CLAIM 328/101 

CLAIM 328/101 recites: 

CLAIM 96 A superconductive apparatus for causing electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a layer-type perovskite-like 
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 100 The superconductive apparatus according to 
claim 96 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 101 The superconductive apparatus according to 
claim 100 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion . 



Volume 3 



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CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 598 of 1770 



CLAIM 328/102 

CLAIM 328/102 recites: 

CLAIM 96 A superconductive apparatus for causing electric- 
current flow in a superconductive state at a temperature 
greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a layer-type perovskite-like 
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 100 The superconductive apparatus according to 
claim 96 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 101 The superconductive apparatus according to 
claim 100 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion . 



Volume 3 



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CLAIM 102 The superconductive apparatus according to 
claim 101 in which oxygen is present in the copper-oxide 
compound in a nonstoichiometric atomic proportion . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



Volume 3 



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



Volume 3 



Page 601 of 1770 



CLAIM 328/103 

CLAIM 328/103 recites: 

CLAIM 103 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 Tq=o, the transition-onset temperature Tc being 
greater than or equal to 26°K; 

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

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

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 



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or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 103 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 603 of 1770 



CLAIM 328/104 

CLAIM 328/104 recites: 

CLAIM 103 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 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 



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CLAIM 104 The superconductive apparatus according to 
claim 103 in which the rare-earth or rare-earth-like element 
is lanthanum. 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 104 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 



Volume 3 



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them to be superconducting. A few normally non-metallic materials, for example, 
become 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 606 of 1770 



CLAIM 328/105 

CLAIM 328/105 recites: 

CLAIM 103 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 Tq=o, the transition-onset temperature Tc being 
greater than or equal to 26°K; 

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

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

CLAIM 105 The superconductive apparatus according to 
claim 103 in which the alkaline-earth element is barium. 



Volume 3 



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CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 105 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 



Volume 3 



Page 608 of 1770 



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



Volume 3 



Page 609 of 1770 



CLAIM 328/106 

CLAIM 328/106 recites: 

CLAIM 103 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 Tq=o, the transition-onset temperature Tc being 
greater than or equal to 26°K; 

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

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

CLAIM 106 The superconductive apparatus according to 
claim 103 in which the copper-oxide compound of the 



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superconductive composition includes mixed valent copper 
ions. 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 106 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, 



Volume 3 



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become 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 612 of 1770 



CLAIM 328/107 

CLAIM 328/107 recites: 

CLAIM 103 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 Tq=o, the transition-onset temperature Tc being 
greater than or equal to 26°K; 

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

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

CLAIM 106 The superconductive apparatus according to 
claim 103 in which the copper-oxide compound of the 



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superconductive composition includes mixed valent copper 
ions. 

CLAIM 107 The superconductive apparatus according to 
claim 106 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion. 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 107 is allowed. 

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



Volume 3 



Page 614 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 615 of 1770 



CLAIM 328/108 

CLAIM 328/108 recites: 

CLAIM 103 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 Tq=o, the transition-onset temperature Tc being 
greater than or equal to 26°K; 

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

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



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CLAIM 106 The superconductive apparatus according to 
claim 103 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions. 

CLAIM 107 The superconductive apparatus according to 
claim 106 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion. 

CLAIM 108 The superconductive apparatus according to 
claim 107 in which oxygen is present in the copper-oxide 
compound in a nonstoichiometric atomic proportion. 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 108 is allowed. 

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



Volume 3 



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

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



Volume 3 



Page 618 of 1770 



CLAIM 328/198 

CLAIM 328/198 recites: 

CLAIM 198 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) 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 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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

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



Volume 3 



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CLAIM 328/199 

CLAIM 328/199 recites: 

CLAIM 198 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) 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 199 The superconductive apparatus according to 
claim 198 in which the copper-oxide compound of the 
superconductive composition includes at least one element 
selected from the group consisting of a rare-earth element, a 
Group III B element and an alkaline-earth element . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 



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or 384, 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 



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CLAIM 328/200 

CLAIM 328/200recites: 

CLAIM 198 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) 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 199 The superconductive apparatus according to 
claim 198 in which the copper-oxide compound of the 
superconductive composition includes at least one element 
selected from the group consisting of a rare-earth element, a 
Group III B element and an alkaline-earth element . 

CLAIM 200 The superconductive apparatus according to 
claim 199 in which the rare-earth is lanthanum . 



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CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



Volume 3 



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



Volume 3 



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CLAIM 328/201 

CLAIM 328/201 recites: 

CLAIM 198 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) 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 199 The superconductive apparatus according to 
claim 198 in which the copper-oxide compound of the 
superconductive composition includes at least one element 
selected from the group consisting of a rare-earth element, a 
Group III B element and an alkaline-earth element . 

CLAIM 201 The superconductive apparatus according to 
claim 199 in which the alkaline-earth element is barium . 



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CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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CLAIM 328/202 

CLAIM 328/202 recites: 

CLAIM 198 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) 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 202 The superconductive apparatus according to 
claim 198 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 



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or 384, 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 



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CLAIM 328/203 

CLAIM 328/203 recites: 

CLAIM 198 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) 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 202 The superconductive apparatus according to 
claim 198 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 203 The superconductive apparatus according to 
claim 202 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion . 

Volume 3 Page 630 of 1 770 



CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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CLAIM 328/204 

CLAIM 328/204 recites: 

CLAIM 198 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) 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 202 The superconductive apparatus according to 
claim 198 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions . 

CLAIM 203 The superconductive apparatus according to 
claim 202 in which the copper-oxide compound includes at 
least one element in a nonstoichiometric atomic proportion . 

Volume 3 Page 632 of 1 770 



CLAIM 204 The superconductive apparatus according to 
claim 203 in which oxygen is present in the copper-oxide 
compound in a nonstoichiometric atomic proportion . 

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



Volume 3 



Page 633 of 1770 



them to be superconducting. A few normally non-metallic materials, for example, 
become 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 328/371 



CLAIM 328/371 recites: 

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

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

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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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 



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CLAIM 328/383 

CLAIM 328/383 recites: 

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

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

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

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

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 
or 384, 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 



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 638 of 1770 



CLAIM 328/384 

CLAIM 328/384 recites: 

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

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

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

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

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

CLAIM 328 A superconductive apparatus according to 
anyone of claims 48 to 52, 96 to 1 08, 1 98 to 204, 371 , 383 



Volume 3 



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or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science . 

This claim should be allowed since claim 384 is allowed. 

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

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



Volume 3 



Page 640 of 1770 



CLAIM 329/12 



CLAIM 329/12 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 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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

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



Volume 3 



Page 642 of 1770 



CLAIM 329/13 



CLAIM 329/13 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 13 The combination of claim 12, where said 
superconductive composition includes a transition metal 
oxide . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



Volume 3 



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

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



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CLAIM 329/14 



CLAIM 329/14 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 14 The combination of claim 12, where said 
superconductive composition includes Cu-oxide . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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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 329/15 



CLAIM 329/15 recites: 

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

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

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

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

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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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. 



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CLAIM 329/16 

CLAIM 329/16 recites: 

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

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

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

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

CLAIM 16 The combination of claim 15, where said 
transition metal is Cu . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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

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



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CLAIM 329/17 

CLAIM 329/17 recites: 

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

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

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

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

CLAIM 17 The combination of claim 15, where said 
additional element is a rare earth or rare earth-like element . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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

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



Volume 3 



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CLAIM 329/18 

CLAIM 329/18 recites: 

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

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

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

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

CLAIM 18 The combination of claim 15, where said 
additional element is an alkaline earth element . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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 654 of 1770 



CLAIM 329/19 



CLAIM 329/19 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 19 The combination of claim 12, where said 
composition includes a perovskite-like superconducting 
phase . 



CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



Volume 3 



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

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



Volume 3 



Page 656 of 1770 



CLAIM 329/20 



CLAIM 329/20 recites: 

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

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

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

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

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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 



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CLAIM 329/21 

CLAIM 329/21 recites: 

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

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

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

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

CLAIM 21 The combination of claim 20, where said 
substituted transition metal oxide includes a multivalent 
transition metal element . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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. 



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CLAIM 329/22 



CLAIM 329/22 recites: 

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

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

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

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

CLAIM 22 The combination of claim 20, where said 
substituted transition metal oxide is an oxide of copper . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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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 662 of 1770 



CLAIM 329/23 



CLAIM 329/23 recites: 

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

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

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

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

CLAIM 23 The combination of claim 20, where said 
substituted transition metal oxide has a layer-like structure . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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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 664 of 1770 



CLAIM 329/110 

CLAIM 329/1 10 recites: 

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

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

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

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

CLAIM 1 1 0 The combination of claim 1 5, where said 
additional element is rare earth or alkaline earth element . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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

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



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CLAIM 329/131 

CLAIM 329/131 recites: 

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

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

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

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

CLAIM 1 31 The combination of claim 1 5, where said 
additional element is a rare earth or Group III B element . 

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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

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



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CLAIM 329/132 



CLAIM 329/132 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 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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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. 



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CLAIM 329/367 

CLAIM 329/367 recites: 

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

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

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

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

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

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
wherein said superconductive composition can be made 
according to known principles of ceramic science . 



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

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



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CLAIM 329/368 



CLAIM 329/368 recites: 

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

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

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

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

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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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. 



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CLAIM 329/369 

CLAIM 329/369 recites: 

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

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

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

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

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

CLAIM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 
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 



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

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



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CLAIM 329/370 

CLAIM 329/370 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 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 1 1 0, 1 31 , 1 32 or 367-370, 



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

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

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



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