Skip to main content

Full text of "USPTO Patents Application 08479810"

See other formats


IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

In re Patent Application of Date: May 15, 2008 

Applicants: Bednorz et al. Docket: YO987-074BZ 

Serial No.: 08/479,810 Group Art Unit: 1751 

Filed: June 7, 1995 Examiner: M. Kopec 

For: NEW SUPERCONDUCTIVE COMPOUNDS HAVING HIGH TRANSITION 
TEMPERATURE, METHODS FOR THEIR USE AND PREPARATION 



Comnnissionerfor Patents 

United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1450 



CORRECTED APPEAL BRIEF 



Part VII 
CFR37 §41.37(c)(1)(vii) 



VOLUME 3 
Part 1 

Preliminary Comments and 
Argument For the Patentability of Each Rejected Claims 1-149 



Respectfully submitted. 



/Daniel P Morris/ 

Dr. Daniel P. Morris, Esq. 
Reg. No. 32,053 
(914) 945-3217 



IBM CORPORATION 
Intellectual Property Law Dept. 



PRELIMINARY COMMENTS A 



All the claims are individually appealed. 

PRELIMINARY COMMENTS B 

Each rejected claim is appealed individually. In this part arguments are provided, 
for each claim individually, for why each claim is enabled in view of Applicants' 
teaching. Applicants do not rely on these enablement statements to provide a 
teaching that is missing from Applicants' teaching, but they corroborate the truth 
of Applicants' teaching and are therefore evidence that Applicants' claims are 
fully enabled by Applicants' teaching. For convenience in the comments 
Applicants will use the following shorthand notation which are defined below: 

Examiner's First Enablement Statement 

Examiner's Second Enablement Statement 

Examiner's Third Enablement Statement 

Examiner's Fourth Enablement Statement 

Poole 1988 Enablement Statement 

Poole 1995 Enablement Statement 

Poole 1996 Enablement Statement 

Schuller Enablement Statement 

Rao enablement Statement 



EXAMINER'S FIRST ENABLEMENT STATEMENT 

At page 8 of the Final Action the Examiner states (this is referred to herein as the 

Examiner's First Enablement Statement): 

The Examiner does not deny that the instant application includes "all know 
principles of ceramic science", or that once a person of skill in the art knows of a 
specific type of composition which is superconducting at greater than or equal to 
26K, such a person of skill in the art, using the techniques described in the 
application, which included all principles of ceramic fabrication known at the time 
the application was initially filed, can make the known superconductive 



Volume 3 



Page 2 of 1770 



compositions. Tlie numerous 1 .132 declarations, sucli as tliose of Mitzi, Sliaw, 
Dinger and Duncombee, and tlie Rao article, are directed to production of know 
superconductive materials. (Emphasis in the original) 

Thus the Examiner agrees that "a person of skill in the art, using the 
techniques described in the application, which included all principles of ceramic 
fabrication known at the time the application was initially filed, can make the 
known superconductive compositions." The principals of ceramic science taught 
by Applicants to fabricate high Tc Superconductors were known long before 
Applicants' discovery. 

EXAMINER'S SECOND ENABLEMENT STATEMENT 

The Examiner has essentially said this by rejecting Applicants' non-allowed 
claims as anticipated under §1 02(a) or obvious under §1 03(a) in view of the 
Asahi Shinbum article (Brief Attachment AV) at page 16 of the Office Action 
dated 07/30/1998. In regards to the rejection of claims 1 , 13-31 , 33-38, 40-46, 
55-59, 64, 67-72, 77-81 , 84-86, 91 -96, 1 03, 1 09, 1 1 1 -1 1 6, 1 1 9, 1 20 and 1 24 
under 35 USC 103(a) over the Asahi Shinbum article the Examiner states at 
page 17 of the Office Action dated 07/30/1998 "based on the teachings of the 
Asahi Shinbum article as a whole, it would have been obvious to one of such skill 
because that reference teaches superconductivity in an oxide compound of La 
and Cu with Ba having a structure of the so-called perovskite structure". In the 
Office Action of 07/30/1998 claim 123 was allowed over the Asahi Shinbum 
article because it showed criticality for the formula recited in this claim. 

The English translation of the Ashai Shinbum Article is page 2 of Brief 
Attachment AV. 

The Asahi Shinbum article states in the first paragraph: 

A new ceramic with a very high Tc of 30K of the superconducting transition has 
been found. The possibility of high Tc - superconductivity has been reported by 
scientists in Switzerland this spring. The group of Prof. Shoji TANAKA, Dept. 



Volume 3 



Page 3 of 1770 



Appl. Phys. Faculty of Engineering at tlie University of Tol<yo confirmed in 
November, tliat tliis is true. 

and in tlie second paragrapli: 

Tlie ceramic newly discovered, is an oxide compound of La and Cu with 
Barium which has a structure of the so-called perovskite and shows metal-like 
properties. Prof. Tanaka's laboratory confirmed that this material shows 
diamagnitism (Meisner effect) which is the most important indication of the 
existence of superconductivity. 

The Swiss scientist are the inventors (Applicants) of the present 
application. Thus this clearly refers to Applicants' work which was reported in 
Applicants' article (Brief Attachment AX) which is incorporated by reference in 
the present application. These passages say that Prof. Tanaka confirmed 
Applicants' work. The newly discovered ceramic referred to in the article is the 
ceramic reported on in Applicants' article. It is thus clear that for the Examiner 
to have rejected Applicants' claim over the Asahi Shinbum article under 35 
use 103, the Examiner necessarily had to find that Applicants' article fully 
enabled their claims. (This is the Examiner's Second Enablement Statement) 
The 35 use 103 rejection over the Asahi Shinbum article was overcome by 
Applicants swearing behind the date of the Ashai Shinbum article. 

EXAMINER'S THIRD ENABLEMENT STATEMENT 

In the 07/053,307 ancestral application, in Office Action dated 04/20/91 (Brief 
Attachment AR) composition claims 1, 2, 5 through 1 1 inclusive, 40 through 44 
inclusive, 46, 48, 51 through 54 inclusive, 60, 62, and 66 were finally rejected 
under 35 U.S.C. 102(b) or in the alternative under 35 U.S.C. 103 as unpatentable 
over seven prior art references. Applicants rebutted the Examiner's reasons for 
rejection based on limitations in the claims directed to Applicants' new discovery 
of the superconductive properties of these materials. In the 07/053,307 
ancestral application final Office Action the Examiner asserted that the cited 



Volume 3 



Page 4 of 1770 



references appeared to disclose materials, which inherently provided 
superconductive properties and consequently therefore, rendered the 
composition claims unpatentable. Since a rejection of the composition of matter 
claims reciting the high Tc property based on inherency necessarily requires that 
the recited alleged inherent claimed high Tc property is a necessary 
consequence of the prior art description of compositions of matter, the rejection 
for inherency necessarily requires that a person of skill in the art be able to make 
the compositions of matter described in the prior art which necessarily means 
that it was and is the Examiner's position that a person of skill in the art is 
enabled to make high Tc compositions of matter. This is the Examiner's Third 
Enablement Statement. Applicants claims under appeal are directed to an 
apparatus, device, structure, etc. using high Tc compositions of matter and 
based on the Examiner's Third Enablement Statement these claims are enabled. 

EXAIVIINER'S FOURTH ENABLEIVIENT STATEIVIENT 

At page 59 of the Brief submitted on 1 1/27/2006 Applicants note that the 

Examiner states at page 6 of Office Action dated 07/28/2004: 

Small changes in composition can result in dramatic changes in or 
loss of superconducting properties. 

The Examiner cites no authority for why this statement is relevant to whether 
Applicants' claims are enabled. Arts that are usually considered predictable 
within the meaning of the US patent law are the mechanical and electrical arts. A 
mechanical apparatus is made up of gears, wheels, lever arms, etc. A small 
change in the size of one of these elements of a mechanical apparatus can result 
in the apparatus not functioning. An electrical apparatus is made up of resistors, 
capacitors, inductors, etc. A small change in the magnitude of one of these 
elements of an electrical apparatus can result in the apparatus not functioning. 
Thus that small changes in the value or magnitude of constituent elements of an 
invention can result in that apparatus not working is not prima facie evidence of 
lack of enablement as the Examiner's statement from page 6 of Office Action 



Volume 3 



Page 5 of 1770 



dated 07/28/2004 suggests. In actual fact, the Examiner's comnnent implies 
enablement. By stating that "[s]mall changes in composition can result in 
dramatic changes in or loss of superconducting properties" the Examiner is, in 
fact, acknowledging that the compositions can be made and tested to determine 
whether the composition has the desired superconducting property. This is all 
that enablement requires. Thus the Examiner's statement quoted above supports 
the enablement of Applicants' claims. As stated in the Brief, to satisfy the 
enablement requirement, an Applicant does not have to foresee all species that 
come within the scope of Applicants' claims. 

The Examiner's statement that "[s]mall changes in composition can result 
in dramatic changes in or loss of superconducting properties" is an Examiner's 
Fourth Enablement Statement. 

POOLE 1988 ENABLEMENT STATEMENT 

The chemistry involved in the process of making high Tc superconductor 
compositions does not have to be understood to fabricate samples as stated in 
the book "Copper Oxide Superconductors" by Charles P. Poole, et al. 1988 (See 
48 of DST AFFIDAVITS (Brief Attachment AM, AN and AO and Brief Attachment 
AW) which states at page 59: 

[c]opper oxide superconductors with a purity sufficient to exhibit zero resistivity or 
to demonstrate levitation (Early) are not difficult to synthesize. We believe that 
this is at least partially responsible for the explosive worldwide growth in these 
materials. 

Poole further states at page 61 : 

[i]n this section three methods of preparation will be described, namely, the solid 
state, the coprecipitation, and the sol-gel techniques (Hatfi). The widely used 
solid-state technique permits off-the-shelf chemicals to be directly calcined into 
superconductors, and it requires little familiarity with the subtle physicochemical 
process involved in the transformation of a mixture of compounds into a 
superconductor. 



Volume 3 



Page 6 of 1770 



Since skilled artisans can fabricate samples without knowing the chemistry and 
without a detailed theory thus this art is predictable. All that is needed is routine 
experimentation to fabricate samples. There is no evidence to the contrary. The 
Examiner has cited no evidence to the contrary and has presented no argument 
to the contrary. This is the Poole 1988 Enablement Statement. 

POOLE 1995 ENABLEMENT STATEMENT 

Charles Poole et al. published another book in 1995 entitled Superconductivity" 
Academic Press which has a Chapter 7 on "Perovskite and Cuprate 
Crystallographic Structures". (Brief Attachment Z). This book will be referred to 
as Poole 1995. 

At page 179 of Poole 1995 states: 

V. PEROVSKITE-TYPE SUPERCONDUCTING STRUCTURES 
In their first report on high-temperature superconductors Bednorz and Muller 
(1986) referred to their samples as "metallic, oxygen-deficient ... perovskite-like 
mixed-valence copper compounds." Subsequent work has confirmed that the 
new superconductors do indeed possess these characteristics. 

Applicants claim 517 and 537 explicitly recite these types of limitations. 

Thus Poole 1988 states that the high Tc superconducting materials "are not 
difficult to synthesize" and Poole 1995 states that "the new superconductors do 
indeed possess [the] characteristics" that Applicants' specification describes 
these new superconductors to have. 
This is the Poole 1995 Enablement Statement. 

POOLE 1996 ENABLEMENT STATEMENT 

Paragraph 48 of each DST AFFIDAVIT (Brief Attachments AM, AN and AO) 
note that the book "The New Superconductors", by Frank J. Owens and Charles 
P. Poole, Plenum Press, 1996, referred to herein as Poole 1996 in Chapter 8 
entitled "New High Temperature Superconductors" starting a page 97 (See Brief 



Volume 3 



Page 7 of 1770 



Attachment AG) shows in Section 8.3 starting at page 98 entitled "Layered 
Structure of the Cuprates" schematic diagrams of the layered structure of the 
cuprate superconductors. Poole 1996 states in the first sentence of Section 8.3 
at page 98 "All cuprate superconductors have the layered structure shown in Fig. 
8.1 ." This is consistent with the teaching of Bednorz and Mueller that "These 
compositions have a layer-type Crystalline Structure often Perovskite-like" as 
noted in paragraph 14 of each of the DST AFFIDAVITS (above). Poole 1996 
further states in the first sentence of Section 8.3 at page 98 "The flow of 
supercurrent takes place in conduction layers and bonding layers support and 
hold together the conduction layers". The caption of Fig. 8.1 states "Layering 
scheme of the cuprate superconductors". Fig. 8.3 shows details of the 
conduction layers for difference sequence of copper oxide planes and Fig. 8.4 
presents details of the bonding layers for several of the cuprates which include 
binding layers for lanthanum superconductor La2Cu04, neodymium 
superconductor Nd2Cu04, yttrium superconductor YBa2Cu302n+4, bismuth 
superconductor Bi2Sr2Can-1 Cun02n+4, thallium superconductor TI2Ba2Can- 
1Cun02n+4, and mercury superconductor HgBa2Can-1Cun02n+2. Fig. 8.5 at 
pages 102 and 103 show a schematic atomic structure showing the layering 
scheme for thallium superconductors. Fig. 8.10 at page 109 shows a schematic 
crystal structure showing the layering scheme for La2Cu04. Fig. 8.1 1 at page 
110 shows a schematic crystal structure showing the layering scheme for 
HgBa2Ca2Cu308+x. Paragraph 48 of each DST AFFIDAVIT states that "[t]he 
layering shown in Poole 1996 for high Tc superconductors is consistent with the 
layering as taught by Bednorz and Mueller in their patent application." This is 
the Poole 1996 Enablement Statement. 



SCHULLER ENABLEMENT STATEMENT 

Page 4 of the Final Rejection which cites Schuller et al "A Snapshot View of High 
Temperature Superconductivity 2002" (report from workshop on High 
Temperature Superconductivity held April 5-8, 2002 in San Diego) which the 
Examiner states "discusses both the practical applications and theoretical 



Volume 3 



Page 8 of 1770 



mechanisnns relating to superconductivity" and tliat "empirical searches in the 
oxides gave rise to many superconducting systems" 

Schuller is acknowledging that experimental researchers using intuition and 
systematic searches found the other known high Tc superconductors. 
Systematic searching is applying what is known to the experimental solid state 
scientist, that is, knowledge of how to fabricate compounds of the same class as 
the compounds in which Bednorz and Muller first discovered High Tc 
superconductivity. 

Schuller states "Of course, 'enlightened' empirical searches either guided by 
chemical and materials intuition or systematic searches using well-defined 
strategies may prove to be fruitful. It is interesting to note that while empirical 
searches in the oxides gave rise to many superconducting systems, similar 
(probable?) searches after the discovery of superconductivity in MgB2 have not 
uncovered any new superconductors." Schuller is acknowledging that 
experimental researchers using intuition and systematic searches found the other 
known high Tc superconductors. Systematic searching is applying what is 
known to the experimental solid state scientist, that is, knowledge of how to 
fabricate compounds of the same class as the compounds in which Bednorz and 
Muller first discovered High Tc superconductivity. In addition Applicants' 
specification explicitly teaches that High Tc materials can include Mg. Mg is an 
alkaline earth element. See for example. Clain 2 and the support in the 
specification identified in Brief Volume 2 for Claim 2. The combination of Mg 
and O is claimed for example in claim 428. This is the Schuller Enablement 
Statement. 

RAO ENABLEMENT STATEMENT 

The article of Rao et al. (Brief Attachment AB) states at page1 , first paragraph 
of left column: 



Volume 3 



Page 9 of 1770 



Several methods of synthesis have been employed for preparing cuprates, with 
the objective of obtaining pure monophasic products with good superconducting 
characteristics [3, 4]. The most common method of synthesis of cuprate 
superconductors is the traditional ceramic method which has been employed for 
the preparation of a large variety of oxide materials [5]. Although the ceramic 
method has yielded many of the cuprates with satisfactory characteristics, 
different synthetic strategies have become necessary in order to control factors 
such as the cation composition, oxygen stoichiometry, cation oxidation states 
and carrier concentration. Specifically noteworthy amongst these methods are 
chemical or solution routes which permit better mixing of the constituent cations 
in order to reduce the diffusion distance in the solid state [5, 6]. Such methods 
include coprecipitation, use of precursors, the sol-gel method and the use of 
alkali fluxes. The combustion method or self-propagating high-temperature 
synthesis (SHS) has also been employed. 

Reference 5 of the Rao et al., article is another example of a reference to the 
general principles of ceramic science incorporated into Applicants' teaching. The 
Rao et al. article states that the 29 materials reported on in the article and listed 
in Table 1 thereof are fabricated using the general principles of ceramic science. 
Moreover, the Rao article states that these materials are fabricated by what the 
Rao article calls the "ceramic method" which is the preferred embodiment in 
Applicants' specification, yet 12 of the 29 materials in Table 1 do not come within 
the scope of the claims allowed by the Examiner. Thus known examples 
fabricated according to Applicants' teaching will not literally come within the 
scope of the claims so far allowed to Applicants. All 29 materials of Table 1 are 
fabricated through experimentation, i.e., without undue experimentation as 
shown in the affidavits in Brief Attachments AH, Al, AJ, AK, AL, AM, AN and AO 
and Poole 1988 (Brief Attachments AF and AW) Poole 1995 (Brief Attachment 
W) Poole 1996 (Brief Attachment AG) and the Rao article (Brief Attachment 
AB). This is the Rao Enablement Statement. 



Volume 3 



Page 10 of 1770 



PRELIMINARY COMMENTS C 



The quoted text of eache claim includes the correction of the typographical errors 
noted at page 240, of the first page of Section VIII, of Volume 1 of this Corrected 
Appeal Brief. This has been done so that each claim can be understood 



Volume 3 



Page 11 of 1770 



PRELIMINARY COMMENTS D 



The Examiner has provided no evidence or argument that a species that comes 
within the scope of any of Applicants' claims exists, or can be made, but cannot 
be made and determined to have the high Tc superconductive property following 
Applicants teaching, when viewed from the point of view of a person or ordinary 
skill in the art as of Applicants earliest priority date. The Examiner has provided 
no reason to doubt that a person of skill in the art as of Applicants earliest priority 
date can not practice ny of Applicants' claims rejected as not enabled. Thus the 
Examiner has not made out a prima facie case of lack of enablement. In view 
thereof Applicants request the Board to reverse the rejections of Applicants' 
claims for lack of enablement. 



Volume 3 



Page 12 of 1770 



ARGUMENTS FOR THE PATENTABILITY OF 
EACH CLAIM INDIVIDUALLY 
CLAIM 1 

Claim 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. 

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



Volume 3 



Page 13 of 1770 



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



Volume 3 



Page 14 of 1770 



CLAIM 2 



Claim 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. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 15 of 1770 



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



Volume 3 



Page 16 of 1770 



CLAIM 3 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
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 17 of 1770 



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



Volume 3 



Page 18 of 1770 



CLAIM 4 



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

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



Volume 3 



Page 19 of 1770 



has given no specific reasons for rejecting tliis claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 20 of 1770 



CLAIM 5 



Claim 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 . 

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



Volume 3 



Page 21 of 1770 



Examiner's First, Second, Tliird and Fourtli Enablement Statements, tlie Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 22 of 1770 



CLAIM 6 



Claim 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 . 

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



Volume 3 



Page 23 of 1770 



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



Volume 3 



Page 24 of 1770 



CLAIM 7 

Claim 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 . 

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



Volume 3 



Page 25 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 26 of 1770 



CLAIM 8 



Claim 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 . 

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



Volume 3 



Page 27 of 1770 



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



Volume 3 



Page 28 of 1770 



CLAIM 9 



Claim 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 . 

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



Volume 3 



Page 29 of 1770 



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



Volume 3 



Page 30 of 1770 



CLAIM 10 



Claim 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 . 

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



Volume 3 



Page 31 of 1770 



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



Volume 3 



Page 32 of 1770 



CLAIM 11 



Claim 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 . 

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



Volume 3 



Page 33 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 34 of 1770 



CLAIM 12 



Claim 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. 

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



Volume 3 



Page 35 of 1770 



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

Applicant notes that the Schuller Enablement Statement specifically states that 
systematic study in the oxides give rise to many high Tc systems. A systematic 
study is what a person of ordinary skill in the art knows how to do. 



Volume 3 



Page 36 of 1770 



CLAIM 13 



Claim 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 . 

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



Volume 3 



Page 37 of 1770 



Examiner's First, Second, Tliird and Fourtli Enablement Statements, tlie Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 38 of 1770 



CLAIM 14 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 39 of 1770 



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



Volume 3 



Page 40 of 1770 



CLAIM 15 



Claim 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 . 

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



Volume 3 



Page 41 of 1770 



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



Volume 3 



Page 42 of 1770 



CLAIM 16 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
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 43 of 1770 



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



Volume 3 



Page 44 of 1770 



CLAIM 17 



Claim 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 1 7 The combination of claim 1 5, where said additional 
element is a rare earth or rare earth-like element . 

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



Volume 3 



Page 45 of 1770 



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



Volume 3 



Page 46 of 1770 



CLAIM 18 



Claim 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 1 8 The combination of claim 1 5, where said additional 
element is an alkaline earth element . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
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 47 of 1770 



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



Volume 3 



Page 48 of 1770 



CLAIM 19 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 49 of 1770 



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



Volume 3 



Page 50 of 1770 



CLAIM 20 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 51 of 1770 



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



Volume 3 



Page 52 of 1770 



CLAIM 21 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
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 53 of 1770 



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



Volume 3 



Page 54 of 1770 



CLAIM 22 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has given no specific reasons for rejecting this claim as not enabled. The 
Examiner has not shown why a person of ordinary skill in the art cannot, based 
on Applicants' teaching, determine without undue experimentation, species that 
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 55 of 1770 



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



Volume 3 



Page 56 of 1770 



CLAIM 23 



Claim 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 . 

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



Volume 3 



Page 57 of 1770 



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



Volume 3 



Page 58 of 1770 



CLAIM 24 



Claim 24 recites: 

CLAIM 24 An apparatus comprising: 

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

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

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

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



Volume 3 



Page 59 of 1770 



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



Volume 3 



Page 60 of 1770 



CLAIM 25 



Claim 25 recites: 

CLAIM 24 An apparatus comprising: 

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

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

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

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 61 of 1770 



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



Volume 3 



Page 62 of 1770 



CLAIM 26 



Claim 26 recites: 

CLAIM 24 An apparatus comprising: 

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

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

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

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 63 of 1770 



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



Volume 3 



Page 64 of 1770 



CLAIM 27 



Claim 27 recites: 

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

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



Volume 3 



Page 65 of 1770 



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



Volume 3 



Page 66 of 1770 



CLAIM 28 



Claim 28 recites: 

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

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

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



Volume 3 



Page 67 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 68 of 1770 



CLAIM 29 



Claim 29 recites: 

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

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

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



Volume 3 



Page 69 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 70 of 1770 



CLAIM 30 



Claim 30 recites: 

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

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

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
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 71 of 1770 



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



Volume 3 



Page 72 of 1770 



CLAIM 31 



Claim 31 recites: 

CLAIM 27 A superconducting apparatus comprising a 
composition having a transition temperature greater than or 
equal to 26°K, said composition being a substituted Cu-oxide 
including a superconducting phase having a structure which 
is structurally substantially similar to the orthorhombic- 
tetragonal 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 . 

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



Volume 3 



Page 73 of 1770 



Examiner's First, Second, Tliird and Fourtli Enablement Statements, tlie Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 74 of 1770 



CLAIM 32 



Claim 32 recites: 

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

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

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

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



Volume 3 



Page 75 of 1770 



Applicants' teaching, determine witliout undue experimentation, species tliat 
come witliin tlie scope of tliis claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 76 of 1770 



CLAIM 33 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 77 of 1770 



CLAIM 34 



Claim 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. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 78 of 1770 



CLAIM 35 



Claim 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 . 

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



Volume 3 



Page 79 of 1770 



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



Volume 3 



Page 80 of 1770 



CLAIM 36 



Claim 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. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 81 of 1770 



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



Volume 3 



Page 82 of 1770 



CLAIM 37 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
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 83 of 1770 



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



Volume 3 



Page 84 of 1770 



CLAIM 38 



Claim 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 . 

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



Volume 3 



Page 85 of 1770 



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



Volume 3 



Page 86 of 1770 



CLAIM 39 



Claim 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. 

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



Volume 3 



Page 87 of 1770 



come within tlie scope of tliis claim otiier tlian tliose tliat tlie Examiner lias 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 88 of 1770 



CLAIM 40 



Claim 40 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 89 of 1770 



CLAIM 41 



Claim 41 recites: 

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

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

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



Volume 3 



Page 90 of 1770 



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



Volume 3 



Page 91 of 1770 



CLAIM 42 



Claim 42 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 92 of 1770 



CLAIM 43 



Claim 43 recites: 

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

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 93 of 1770 



CLAIM 44 



Claim 44 recites: 

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

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

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



Volume 3 



Page 94 of 1770 



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



Volume 3 



Page 95 of 1770 



CLAIM 45 



Claim 45 recites: 

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

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

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

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



Volume 3 



Page 96 of 1770 



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



Volume 3 



Page 97 of 1770 



CLAIM 46 



Claim 46 recites: 

CLAIM 46 An apparatus having a superconductor having a 
superconducting onset temperature greater than or equal to 
26°K, said superconductor being an oxide having multivalent 
oxidation states and including a metal, said oxide having a 
crystalline structure which is oxygen deficient and means for 
passing a superconducting electric current through said 
superconductor. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 98 of 1770 



CLAIM 47 



Claim 47 recites: 

CLAIM 46 An apparatus having a superconductor having a 
superconducting onset temperature greater than or equal to 
26°K, said superconductor being an oxide having multivalent 
oxidation states and including a metal, said oxide having a 
crystalline structure which is oxygen deficient and means for 
passing a superconducting electric current through said 
superconductor. 

CLAIM 47 The apparatus of claim 46, where said transition 
metal is Cu . 

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



Volume 3 



Page 99 of 1770 



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



Volume 3 



Page 100 of 1770 



CLAIM 48 



Claim 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. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 101 of 1770 



CLAIM 49 



Claim 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 . 

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



Volume 3 



Page 102 of 1770 



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



Volume 3 



Page 103 of 1770 



CLAIM 50 



Claim 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 . 

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



Volume 3 



Page 104 of 1770 



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



Volume 3 



Page 105 of 1770 



CLAIM 51 



Claim 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 . 

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



Volume 3 



Page 106 of 1770 



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



Volume 3 



Page 107 of 1770 



CLAIM 52 



Claim 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 . 

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



Volume 3 



Page 108 of 1770 



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



Volume 3 



Page 109 of 1770 



CLAIM 53 



Claim 53 recites: 

CLAIM 53 A superconductive apparatus comprised of a 
copper oxide having a layer-like crystalline structure and at 
least one additional element substituted in said crystalline 
structure, said structure being oxygen deficient and 
exhibiting a superconducting onset temperature greater than 
or equal to 26°K. 

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



Volume 3 



Page 110 of 1770 



CLAIM 54 



Claim 54 recites: 

CLAIM 53 A superconductive apparatus comprised of a 
copper oxide having a layer-like crystalline structure and at 
least one additional element substituted in said crystalline 
structure, said structure being oxygen deficient and 
exhibiting a superconducting onset temperature greater than 
or equal to 26°K. 

CLAIM 54 The superconductor of claim 53, where said 
additional element creates a mixed valent state of said 
copper oxide in said superconductor. 

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



Volume 3 



Page 111 of 1770 



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



Volume 3 



Page 112 of 1770 



CLAIM 55 



Claim 55 recites: 

CLAIM 55 A combination, comprising: 

a transition metal oxide having an superconducting onset 
temperature greater than about 26°K and having an oxygen 
deficiency , said transition metal being non-superconducting 
at said superconducting onset temperature and said oxide 
having multivalent states . 

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

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

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



Volume 3 



Page 113 of 1770 



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



Volume 3 



Page 114 of 1770 



CLAIM 56 



CLAIM recites: 

CLAIM 55 A combination, comprising: 

a transition metal oxide liaving an superconducting onset 
temperature greater than about 26°K and having an oxygen 
deficiency , said transition metal being non-superconducting 
at said superconducting onset temperature and said oxide 
having multivalent states . 

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

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

CLAIM 56 The combination of claim 55, where said 
transition metal is Cu . 

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



Volume 3 



Page 115 of 1770 



Examiner's First, Second, Tliird and Fourtli Enablement Statements, tlie Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 116 of 1770 



CLAIM 57 



Claim 57 recites: 

CLAIM 57 A combination including; 

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

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

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

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



Volume 3 



Page 117 of 1770 



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



Volume 3 



Page 118 of 1770 



CLAIM 58 



Claim 58 recites: 

CLAIM 58 A combination, comprised of: 

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

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

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

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



Volume 3 



Page 119 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 120 of 1770 



CLAIM 59 



Claim 59 recites: 

CLAIM 59 A combination, comprised of: 

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

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

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 121 of 1770 



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



Volume 3 



Page 122 of 1770 



CLAIM 60 



Claim 60 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 123 of 1770 



CLAIM 61 



Claim 61 recites: 

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

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

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



Volume 3 



Page 124 of 1770 



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



Volume 3 



Page 125 of 1770 



CLAIM 62 



Claim 62 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 126 of 1770 



CLAIM 63 



Claim 63 recites: 

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

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

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



Volume 3 



Page 127 of 1770 



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



Volume 3 



Page 128 of 1770 



CLAIM 64 



Claim 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. 

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



Volume 3 



Page 129 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 130 of 1770 



CLAIM 65 

Claim 65 which is allowed recites: 

CLAIM 65 An apparatus comprising a composition 
exhibiting superconductivity at temperatures greater than or 
equal to 26°K, said composition being a ceramic-like 
material in the RE-AE-TM-0 system, where RE is a rare 
earth or near rare earth element, AE is an alkaline earth 
element, TM is a multivalent transition metal element having 
at least two valence states in said composition, and O is 
oxygen , the ratio of the amounts of said transition metal in 
said two valence states being determined by the ratio RE : 
AE, a source of current for passing a superconducting 
electric current in said transition metal oxide, and a cooling 
apparatus for maintaining said transition metal oxide below 
said onset temperature and at a temperature greater than or 
equal to 26°K. 



Volume 3 



Page 131 of 1770 



CLAIM 66 



Claim 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. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 132 of 1770 



CLAIM 67 



Claim 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 . 

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



Volume 3 



Page 133 of 1770 



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



Volume 3 



Page 134 of 1770 



CLAIM 68 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 135 of 1770 



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



Volume 3 



Page 136 of 1770 



CLAIM 69 



Claim 69 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

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



Volume 3 



Page 137 of 1770 



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



Volume 3 



Page 138 of 1770 



CLAIM 70 



Claim 70 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

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

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



Volume 3 



Page 139 of 1770 



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



Volume 3 



Page 140 of 1770 



CLAIM 71 



Claim 71 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

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

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

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



Volume 3 



Page 141 of 1770 



Examiner's First, Second, Tliird and Fourtli Enablement Statements, tlie Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 142 of 1770 



CLAIM 72 



Claim 72 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

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

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

CLAIM 72 The combination of claim 71 , where said mixed 
copper oxide further includes a rare earth or rare earth-like 
element . 

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



Volume 3 



Page 143 of 1770 



come within tlie scope of tliis claim otiier tlian tliose tliat tlie Examiner lias 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 144 of 1770 



CLAIM 73 



Claim 73 is witlidrawn: 

CLAIM 74 

CLAIM 74 is withdrawn 

CLAIM 75 

Claim 75 is withdrawn 

CLAIM 76 

CLAIM 76 is withdrawn 



Volume 3 



Page 145 of 1770 



CLAIM 77 

Claim 77 which is allowed recites: 

CLAIM 77 A combination, comprising: 

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

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



Volume 3 



Page 146 of 1770 



CLAIM 78 

CLAIM 78 which is allowed recites: 

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

CLAIM 79 

Claim 79 which is allowed recites: 

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

CLAIM 80 

Claim 80 which is allowed recites: 

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

CLAIM 81 

CLAIM 81 which is allowed recites: 

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



Volume 3 



Page 147 of 1770 



CLAIM 82 



CLAIM 82 is withdrawn 



CLAIM 83 is withdrawn 



CLAIM 83 



Volume 3 



Page 148 of 1770 



CLAIM 84 



Claim 84 recites: 

CLAIM 84 A superconducting combination, comprising: 

a mixed transition metal oxide composition containing a non- 
stoichiometric amount of oxygen therein, a transition metal 
and at least one additional element , said composition having 
substantially zero resistance to the flow of electricity 
therethrough when cooled to a superconducting state at a 
temperature greater than or equal to 26°K, said mixed 
transition metal oxide has a superconducting onset 
temperature greater than or equal to 26°K, and 

electrical means for passing an electrical superconducting 
current through said composition when said composition is in 
said superconducting state at a temperature greater than or 
equal to 26°K, and less than said superconducting onset 
temperature. 

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



Volume 3 



Page 149 of 1770 



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



Volume 3 



Page 150 of 1770 



CLAIM 85 



Claim 85 recites: 

CLAIM 84 A superconducting combination, comprising: 

a mixed transition metal oxide composition containing a non- 
stoichiometric amount of oxygen therein, a transition metal 
and at least one additional element , said composition having 
substantially zero resistance to the flow of electricity 
therethrough when cooled to a superconducting state at a 
temperature greater than or equal to 26°K, said mixed 
transition metal oxide has a superconducting onset 
temperature greater than or equal to 26°K, and 

electrical means for passing an electrical superconducting 
current through said composition when said composition is in 
said superconducting state at a temperature greater than or 
equal to 26°K, and less than said superconducting onset 
temperature. 

CLAIM 85 The combination of claim 84, where said transition 
metal is copper . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
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 151 of 1770 



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



Volume 3 



Page 152 of 1770 



CLAIM 86 

CLAIM 86 which is allowed 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. 



Volume 3 



Page 153 of 1770 



CLAIM 87 



Claim 87 which is allowed recites: 



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



Volume 3 



Page 154 of 1770 



CLAIM 88 

Claim 88 recites: 

CLAIM 88 An apparatus comprising: 

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

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

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

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



Volume 3 



Page 155 of 1770 



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



Volume 3 



Page 156 of 1770 



CLAIM 89 

Claim 89 recites: 

CLAIM 88 An apparatus comprising: 

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

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

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

CLAIM 89 The apparatus of claim 88, where said 
composition is comprised of a metal oxide . 

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



Volume 3 



Page 157 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 158 of 1770 



CLAIM 90 

Claim 90 recites: 

CLAIM 88 An apparatus comprising: 

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

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

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

CLAIM 90 The apparatus of claim 88, where said 
composition is comprised of a transition metal oxide . 

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



Volume 3 



Page 159 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 160 of 1770 



CLAIM 91 



Claim 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. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 161 of 1770 



CLAIM 92 

Claim 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 . 

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



Volume 3 



Page 162 of 1770 



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



Volume 3 



Page 163 of 1770 



CLAIM 93 



CLAIM 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. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 164 of 1770 



CLAIM 94 



Claim 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 . 

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



Volume 3 



Page 165 of 1770 



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



Volume 3 



Page 166 of 1770 



CLAIM 95 



Claim 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 . 

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



Volume 3 



Page 167 of 1770 



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



Volume 3 



Page 168 of 1770 



CLAIM 96 



Claim 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. 

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



Volume 3 



Page 169 of 1770 



Examiner's First, Second, Tliird and Fourtli Enablement Statements, tlie Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 170 of 1770 



CLAIM 97 

Claim 97 which is allowed 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. 



Volume 3 



Page 171 of 1770 



CLAIM 98 

Claim 98 which is allowed recites: 

CLAIM 98 The superconductive apparatus according to 
claim 97 in which the rare-earth or rare-earth-like element is 
lanthanum. 

CLAIM 99 

Claim 99 which is allowed recites: 

CLAIM 99 The superconductive apparatus according 
to claim 97 in which the alkaline-earth element is 
barium. 



Volume 3 



Page 172 of 1770 



CLAIM 100 



Claim 100 recites: 

CLAIM 100 The superconductive apparatus according to 
claim 96 in which the copper-oxide compound of the 
superconductive composition includes mixed valent copper 
ions. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 173 of 1770 



CLAIM 101 



Claim 101 recites: 

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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 174 of 1770 



CLAIM 102 



Claim 102 recites: 

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 . 

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

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



Volume 3 



Page 175 of 1770 



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



Volume 3 



Page 176 of 1770 



CLAIM 103 

Claim 103 which is allowed 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 



Page 177 of 1770 



Claim 104 which is allowed recites: 

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

CLAIM 105 

Claim 105 which is allowed recites: 

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

CLAIM 106 

Claim 106 which is allowed recites: 

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



Volume 3 



Page 178 of 1770 



CLAIM 107 

Claim 107 which is allowed recites: 

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 

Claim 108 which is allowed recites: 

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



Volume 3 



Page 179 of 1770 



CLAIM 109 



Claim 109 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. 

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



Volume 3 



Page 180 of 1770 



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



Volume 3 



Page 181 of 1770 



CLAIM 110 



Claim 110 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
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 182 of 1770 



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



Volume 3 



Page 183 of 1770 



CLAIM 111 



Claim 111 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 184 of 1770 



CLAIM 112 



Claim 112 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 185 of 1770 



CLAIM 113 

Claim 113 which is allowed recites: 

CLAIM 113 A device comprising a superconducting oxide 
composition having a superconductive onset temperature 
greater than or equal to 26°K, said superconducting copper 
oxide being at a temperature less than said superconducting 
onset temperature and having a superconducting current 
flowing therein, said composition comprising at least one 
each of rare earth, an alkaline earth, and copper. 

CLAIM 114 

Claim 114 which is allowed recites: 

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



Volume 3 



Page 186 of 1770 



CLAIM 115 



Claim 115 recites: 

CLAIM 1 1 5 A device comprising a transition metal oxide 
having a Tc greater than or equal to 26°K carrying a 
superconducting current said transition metal oxide is 
maintained at a temperature less than said Tc. 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 187 of 1770 



CLAIM 116 



Claim 116 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 188 of 1770 



CLAIM 117 



Claim 117 recites: 

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

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



Volume 3 



Page 189 of 1770 



CLAIM 118 



Claim 118 recites: 

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

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



Volume 3 



Page 190 of 1770 



CLAIM 119 



Claim 119 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 191 of 1770 



CLAIM 120 



Claim 120 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 192 of 1770 



CLAIM 121 



Claim 121 recites: 

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

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



Volume 3 



Page 193 of 1770 



CLAIM 122 



Claim 122 recites: 

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

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



Volume 3 



Page 194 of 1770 



CLAIM 123 

Claim 123 which is allowed recites: 

CLAIM 123 A superconductive apparatus comprising: 

a composition of the formula BaxLax-5Cu50Y 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 for 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 for passing an electrical current through 
said composition while said metal oxide phase is in said 
superconducting state. 

CLAIM 124 

Claim 124 which is allowed recites: 

CLAIM 124 A device comprising a composition of matter 
having a Tc greater than or equal to 26°K carrying a 
superconducting current, said composition comprising at 



Volume 3 



Page 195 of 1770 



least one each of a NIB element, an alkaline earth, and 
copper oxide said device is maintained at a temperature less 
than said Tc. 

CLAIM 125 

Claim 125 which is allowed recites: 

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



Volume 3 



Page 196 of 1770 



CLAIM 126 



Claim 126 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 197 of 1770 



CLAIM 127 



Claim 127 recites: 

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the scope of this claim 
without undue experimentation. Examples of Applicants' evidence are: the 
Examiner's First, Second, Third and Fourth Enablement Statements, the Poole 
1988, 1995 and 1996 Enablement Statements, the Schuller Enablement 
Statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns and Bednorz in Brief Attachments AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 198 of 1770 



CLAIM 128 



Claim 128 recites: 

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

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



Volume 3 



Page 199 of 1770 



CLAIM 129 



Claim 129 recites: 

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

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



Volume 3 



Page 200 of 1770 



CLAIM 130 



Claim 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. 

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



Volume 3 



Page 201 of 1770 



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



Volume 3 



Page 202 of 1770 



CLAIM 131 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
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 203 of 1770 



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



Volume 3 



Page 204 of 1770 



CLAIM 132 



Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 205 of 1770 



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



Volume 3 



Page 206 of 1770 



CLAIM 133 



Claim 133 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 133 The superconducting apparatus of claim 27, 
where said substituted Cu-oxide includes a rare earth or 
Group III B element . 

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



Volume 3 



Page 207 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 208 of 1770 



CLAIM 134 



Claim 134 recites: 

CLAIM 69 A superconductive combination, comprising: 

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

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

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

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

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

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



Volume 3 



Page 209 of 1770 



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



CLAIM 135 

Claim 135 which is allowed 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. 



Volume 3 



Page 210 of 1770 



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 136 

Claim 136 which is allowed recites: 

CLAIM 136 The combination of claim 77, where said 
crystalline structure is substantially perovskite. 



Volume 3 



Page 211 of 1770 



CLAIM 137 

Claim 137 which is allowed recites: 

CLAIM 137 An apparatus comprising: 

a composition including a transition metal, a rare earth or 
Group III B element, an alkaline earth element, and oxygen, 
where said composition is a mixed transition metal oxide 
having a non-stoichimetric 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 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 138 

Claim 138 which is allowed recites: 

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



Volume 3 



Page 212 of 1770 



CLAIM 139 



Claim 139 recites: 

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

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

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

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

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



Volume 3 



Page 213 of 1770 



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



Volume 3 



Page 214 of 1770 



CLAIM 140 

Claim 140 which is allowed recites: 

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

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

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

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



Volume 3 



Page 215 of 1770 



CLAIM 141 



Claim 141 recites: 

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

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

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

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



Volume 3 



Page 216 of 1770 



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



Volume 3 



Page 217 of 1770 



CLAIM 142 



Claim 142 recites: 

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

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

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

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

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 218 of 1770 



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



Volume 3 



Page 219 of 1770 



CLAIM 143 



Claim 143 recites: 

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

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

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

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

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



Volume 3 



Page 220 of 1770 



statement and Applicants' Affidavits of Mitzi, Dinger, Tsuei, Sliaw, Duncombe, 
Newns and Bednorz in Brief Attaclinnents AH to AR. In particular the Examiner 
has given no reason for why this claim is 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 221 of 1770 



CLAIM 144 

Claim 144 which is allowed 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 145 

Claim 145 which is allowed recites: 

CLAIM 145 The apparatus of claim 144, where said 
transition metal is copper. 



Volume 3 



Page 222 of 1770 



CLAIM 146 

Claim 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. 

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



Volume 3 



Page 223 of 1770 



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



Volume 3 



Page 224 of 1770 



CLAIM 147 

Claim 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 . 

The Examiner has not made as to this claim a prima facie case of lack of 
enablement for the reasons given in all volumes of this Brief. The Examiner has 
given no specific reasons for rejecting this claim as not enabled. The Examiner 
has not shown why a person of ordinary skill in the art cannot, based on 
Applicants' teaching, determine without undue experimentation, species that 
come within the scope of this claim other than those that the Examiner has 
expressly stated are enabled. Applicants have shown extensive evidence that 
persons of skill in the art can determine species within the 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 225 of 1770 



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



Volume 3 



Page 226 of 1770 



CLAIM 148 

Claim 148 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 148 The apparatus of claim 146, where said 
composition is comprised of a transition metal oxide. 



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



Volume 3 



Page 227 of 1770 



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



Volume 3 



Page 228 of 1770 



CLAIM 149 



Claim 149 recites: 

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

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

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

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

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



Volume 3 



Page 229 of 1770 



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



Volume 3 



Page 230 of 1770