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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 



In re Patent Application of 
Applicants: Bednorz et al. 
Serial No.: 08/479,810 
Filed: June 7, 1995 



Group Art Unit: 1751 
Examiner: M. Kopec 



Date: May 15, 2008 



Docket: YO987-074BZ 



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

Mail Stop: Appeal Brief - Patents 

Commissioner for Patents 

United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1450 



CORRECTED APPEAL BRIEF IN RESPONSE TO 
NOTICE OF NON-COMPLIANT APPEAL BRIEF Dated 11/15/2007 



Pursuant to 35 U.S.C. 134 and 37 C.F.R. 41.37, entry of this Appeal Brief in 
support of the Notice of Appeal filed April 20, 2006 in the above-identified matter is 
respectfully requested. This appeal is from the final rejection in the Office Action dated 
10/20/2005, referred to herein as the Final Action. The Final Action incorporates 
reasons for rejection from the Office Action dated 07/28/2004, which is referred to 
herein as the Office Action of 07/28/2004. 

In compliance with the requirements of CFR 37 §41 .37(c)(1)(/') to 37 CFR 37 
§41 .37(c)(1 )(x) are the following Parts ] to _X .respectively. 

This Appeal Brief is being submitted as five volumes: Volume 1 (Parts 1 & 2), 
Volume 2, Volume 3 (Parts 1-8), Volume 4 (Parts 1-4) and Volume 5 (Parts 1-3). 

This document is: 



Sir: 



VOLUME 1 - Part 1 



Volume 1 



Page 1 of 377 



Parti 

CFR37 §41 .37(c)(1)(f) 
Statement of Real Party in Interest 

The real party in interest in the above-identified patent application is the 
International Business Machines Corporation, Armonk, New York. 

Part II 
CFR37 §41.37(c)(1)(/i) 
Related Appeals and Interferences 

To Appellant's knowledge there are no prior or pending appeals or interferences 
related to this application. Copending parent Application Serial Number 08/303,561 
filed 09-Sep-1994 has been suspended pending the outcome of this appeal since 
essentially the same issues are presented therein. The present Application Serial 
Number 08/479,810 is a Continuation of Application Serial 08/303,561 filed 09/09/94 
which is a Continuation of Application Serial Number 08/060,470 filed 05//1 1/93 which is 
a Continuation of Application Serial Number 08/875,003 filed 04/25/92 which is a 
Division of Application Serial Number 07/053,307 filed 05/22/87 (all referred to herein as 
The Ancestral Applications of the present application.) 



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Part III 



Status of Claims 
CFR37 §41 .37(c)(1 )(//#) 

A. Claim Status 

Claims allowed as indicated in the "Notice of Non-Compliant Brief dated 11-15- 
2007" to the Final Action are: 65, 77-81 , 86, 87, 97-99, 1 03-1 08, 1 1 3, 1 1 4, 1 23-1 25, 
135-138, 140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213- 
216, 220, 221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 
280-282, 287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 
379, 380, 381, 384-388, 390-393, 396-401 , 403-406, 409-413, 420, 425, 502-507, 511- 
515. 

Applicants believe that the claims in the following list (under heading "Claims 
that Should be Allowed") should be allowed. These claims are part of multiple 
dependent claims 323, 326, 327, 328, 334, 337, 338, 348, 353, 354, 355, 356, 357, 422, 
424, 426, 427 and 495. The claim number listed after the forward slash i.e., 86 in 
323/86, is allowed thus the listed claims, i.e., 323/86, should be allowed. 

Claims rejected as indicated in the "Notice of Non-Compliant Brief dated 11-15- 
2007" to Final Action are: 1 -64, 66-72, 84, 85, 88-96, 1 00-1 02, 1 09-1 12,11 5-1 22, 1 26- 
134, 139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 
217-219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 
279, 283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347- 
357, 359-374, 376, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501, 
508-510 and 515-543. 

Assuming that the Examiner intended to reject some part of the multiple 
dependent claims 322, 326, 327, 328, 334, 337, 338, 348, 353, 354, 355, 356, 357, 422, 
424, 426, 427 and 495, that part of these multiply dependent that should be listed as 
rejected should exclude those that Applicants believe should be allowed as listed below. 



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Claims withdrawn are: 73-76, 82, 83, 377 and 378. 



Claims that Should be allowed: 



Multiple dependent claim 323: 



323/86 

323/87 

323/144 

323/168 

323/169 

323/173 

323/174 

323/178 

323/189 

323/196 

323/197 

323/214 

323/224 

323/235 

323/236 

323/259 

323/260 

323/264 

323/265 



Multiple dependent claim 326: 



326/138 



Multiple dependent claim 327: 



327/135 



Multiple dependent claim 328: 

328/97 

328/98 

328/99 

328/103 

328/104 

328/105 

328/106 

328/107 

328/108 

328/384 



Volume 1 Page 4 of 377 



Multiple dependent claim 334: 

334/276 
334/31 1 

Multiple dependent claim 337: 

337/114 

Multiple dependent claim 338: 

338/172 
338/263 
338/287 
338/288 

Multiple dependent claim 348: 

348/167 
348/177 
348/258 
348/269 
348/270 

Multiple dependent claim 353: 

353/140 
353/150 
353/151 
353/156 
353/157 
353/158 
353/159 
353/160 
353/161 
353/170 
353/171 
353/175 
353/176 
353/180 
353/181 
353/213 
353/214 
353/215 
353/216 
353/387 
353/388 



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353/389 
353/390 
353/391 
353/392 
353/393 
353/396 
353/397 
353/398 
353/400 
353/401 

Multiple dependent claim 354: 

354/185 
354/220 
354/241 
354/242 
354/243 
354/247 
354/248 
354/249 
354/250 
354/251 
354/252 
354/261 
354/262 
354/296 
354/297 
354/298 
354/299 
354/300 
354/301 
354/403 
354/404 
354/405 
354/406 
354/409 
354/410 

Multiple dependent claim 355: 

355/77 
355/78 
355/79 
355/80 
355/81 



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355/186 
355/379 
355/380 

Multiple dependent claim 356: 

356/124 
356/125 

Multiple dependent claim 357: 

357/190 
357/191 
357/225 
357/226 
357/231 
357/266 
357/267 
357/271 
357/272 
357/281 
357/282 
357/317 
357/411 
357/412 
357/413 

Multiple dependent claim 422: 

422/379 
422/380 

Multiple dependent claim 424: 

424/384 
424/385 
424/386 
424/387 

Multiple dependent claim 426: 

426/390 
426/391 
426/392 
426/393 
426/396 
426/397 



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426/398 
426/399 
426/400 
426/401 

Multiple dependent claim 427: 

427/412 
427/413 

Multiple dependent claim 495: 

495/379 



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B. Appealed Claims 

All rejected claims are appealed. Claims 1-64, 66-72, 84, 85, 88-96, 100-102, 
109-112, 115-122, 126-134, 139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 
188, 192-195, 198-212, 217-219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253- 
257, 268, 273-275, 278, 279, 283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 
331-334, 337-345, 347-357, 359-374, 376, 382, 383, 389, 394, 395, 402, 407, 408, 414- 
419, 421-424, 426-501, 508-510 and 515-543. Each rejected claim is appealed 
individually. None of these claims are appealed in a group except as indicated in 
Preliminary Comment A in Volume 3. 

A clean copy of these claims is contained in the Claim Appendix of Part VII to this 
Corrected Appeal Brief Volume 1 . 

Part IV 
CFR37 §41.37(c)(1)(/v) 

Status of Amendments 

Comment: This status of the claims is copied from the Notice of Non-Compliant Brief 
dated 1 1-15-2007, except for items 16 and 17 which correspond to Responses After 
Final submitted after 1 1-15-2007. 

Below is a proper listing of the After-Final Amendments including amendment date, 
entry status (Advisory Action), and status of pending claims: 

1) Amendment filed 12/06/05 (1st after-final amendment): ENTERED (Advisory Action 
mailed 12/28/05). Examiner Note: Rejection over admitted prior art (claims 438-440 
and 453) is withdrawn. 



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Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 113, 114, 123-125, 135-138, 140, 151, 157, 167-169, 172-174, 
177-179, 185, 186, 189-191, 196, 197, 213-216, 220, 221, 224-226, 231, 258-260, 264, 
265, 269, 270, 276, 277, 280-282, 287, 288, 296-301 , 304-307, 311, 312, 315-317, 502- 
507, 511-515. 

Claims rejected: 1-72,77-81,84-112, 115-122, 126-134, 139, 141-150, 152-156, 
158-166, 170, 171, 175, 176, 180-184, 187, 188, 192-195, 198-212, 217-219, 222, 223, 
227-230, 232-257, 261-263, 266-268, 271-275, 278, 279, 283-286, 289-295, 302, 303, 
308-310, 313, 314, 318-376, 379-501, 508-51 0,and 516-543. 

2) Amendment filed 04/12/06 (2nd after-final amendment): ENTERED (Advisory 
Action mailed 05/19/06). Examiner Note: entry of 1 .132 Declarations of Bednorz and 
Dennis Newns. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 113, 114, 123-125, 135-138, 140, 151, 157, 167-169, 172-174, 
177-179, 185, 186, 189-191, 196, 197, 213-216, 220, 221, 224-226, 231, 258-260, 264, 
265, 269, 270, 276, 277, 280-282, 287, 288, 296-301 , 304-307, 311, 312, 315-317, 502- 
507, 511-515. 

Claims rejected: 1-72,77-81,84-112, 115-122, 126-134, 139, 141-150, 152-156, 
158-166, 170, 171, 175, 176, 180-184, 187, 188, 192-195, 198-212, 217-219, 222, 223, 
227-230, 232-257, 261-263, 266-268, 271-275, 278, 279, 283-286, 289-295, 302, 303, 
308-310, 313, 314, 318-376, 379-501, 508-51 0,and 516-543. 

3) Amendment filed 04/19/06 (3rd after-final amendment): ENTERED (Advisory 
Action attached herewith). Examiner Note: Amend corrects status of claims 438 and 
439. As stated in Advisory Action mailed 12/28/05, the rejection over admitted prior art 
(claims 438-440 and 453) is withdrawn. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 113, 114, 123-125, 135-138, 140, 151, 157, 167-169, 172-174, 
177-179, 185, 186, 189-191, 196, 197, 213-216, 220, 221, 224-226, 231, 258-260, 264, 



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265, 269, 270, 276, 277, 280-282, 287, 288, 296-301 , 304-307, 311, 312, 315-317, 502- 
507, 511-515. 

Claims rejected: 1-72,77-81,84-112, 115-122, 126-134, 139, 141-150, 152-156, 
158-166, 170, 171, 175, 176, 180-184, 187, 188, 192-195, 198-212, 217-219, 222, 223, 
227-230, 232-257, 261-263, 266-268, 271-275,' 278, 279, 283-286, 289-295, 302, 303, 
308-310, 313, 314, 318-376, 379-501, 508-51 0,and 516-543. 

4) Amendment filed 07/06/06 (4th after-final amendment): ENTERED (Advisory Action 
mailed 08/14/06) . Examiner Note: Creation of Artifact sheet for books submitted in 
copending 08/303,561. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 113, 114, 123-125, 135-138, 140, 151, 157, 167-169, 172-174, 
177-179, 185, 186, 189-191, 196, 197, 213-216, 220, 221, 224-226, 231, 258-260, 264, 
265, 269, 270, 276, 277, 280-282, 287, 288, 296-301 , 304-307, 311, 312, 315-317, 502- 
507, 511-515. 

Claims rejected: 1-72,77-81,84-112, 115-122, 126-134, 139, 141-150, 152-156, 
158-166, 170, 171, 175, 176, 180-184, 187, 188, 192-195, 198-212, 217-219, 222, 223, 
227-230, 232-257, 261-263, 266-268, 271-275, 278, 279, 283-286, 289-295, 302, 303, 
308-310, 313, 314, 318-376, 379-501 , 508-510 and 516-543. 5-6) 

Amendments filed 07/11/06 and 07/25/06 (5th and 6th after-final amendments): 
ENTERED (Advisory Action mailed 08/29/06). Examiner Note: Withdrawal of 1 12, 
second paragraph rejection(s). In view of the withdrawn rejection, previously rejected 
claims 65, 77-81 , 86, 87, 97-99, 1 03-1 08, 1 44, 1 45, 1 50, 1 52, 1 56, 1 58-1 61 , 1 70, 1 71 , 
175, 176, 180, 181, 235, 236, 241-243, 247-252, 261-263, 266, 267, 271, 272, 335, 
336, 346, 358, 375, 381, 384, 385, 386-388, 390-393, 396-401, 403-406, 409-413, 420, 
and 425 are now allowed. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 
140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 



Volume 1 



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287, 288, 296-301 , 304-307, 311, 312, 315-317, 335, 336, 346, 358, 375, 381, 384-388, 
390-393, 396-401 , 403-406, 409-413, 420, 425, 502-507, and 511-515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 

139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-334, 337-345, 347-357, 359-374, 
376, 379, 380, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501, 
508-510, 516-543. 

7) Amendment filed 09/13/06 (7th after-final amendment): ENTERED (Advisory Action 
attached herewith). Examiner Note: No claim amendment, only correction of status of 
claims (after withdrawal of 1 12 second para rejection in Advisory Action mailed 
08/29/06). See claim status below. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 

140, 144, 145, 150-152, 156-161, 167-18.1, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 381, 
384-388, 390-393, 396-401 , 403-406, 409-413, 420, 425, 502-507, and 511-515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 
139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 
359-374, 376, 379, 380, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 
426-501, 508-510, 516-543. 

8) Amendment filed 09/18/06 (8th after-final amendment): Not ENTERED (Advisory 
Action attached herewith). Examiner Note: Remarks have not been considered as such 
were not timely filed See 37 C.F.R. §41 .33 and MPEP 1 206.. See claim status below. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 



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Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 
140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312/315-317, 330, 335, 336, 346, 358, 375, 381, 384- 
388, 390-393, 396-401 , 403-406, 409-413, 420, 425, 502-507, and 511-515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 

139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 
359-374, 376, 379, 380, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 
426-501, 508-510, 516-543. 

9) Amendment filed 11/06/06 (9th after-final amendment): NOT ENTERED (Advisory 
Action attached herewith). Examiner Note: Remarks/exhibit have not been considered 
as such were not timely filed See 37 C.F.R. §41 .33 and MPEP 1206.. See claim status 
below. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 65, 77-81, 86, 87, 97-99, 1 03-1 08,. 1 13, 114, 123-125, 135-138, 

140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 381, 
384-388, 390-393, 396-401 , 403-406, 409-413, 420, 425, 502-507 and 511-515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 
139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 
359-374, 376, 379, 380, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 
426-501, 508-510, 516-543. 



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10) Amendment filed 11/13/06 (10th after-final amendment): ENTERED (Advisory 
Action attached herewith). Examiner Note: Interview Summary/Status of claims after 
withdrawal of 1 12 rejection. See claim status below. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 
140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 381, 
384-388, 390-393, 396-401 , 403-406, 409-413, 420, 425, 502-507, and 511-515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 

139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 
359-374, 376, 379, 380, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 
426-501, 508-510, 516-543. 

1 1 ) Amendment filed 1 1 1\ 4/06 (1 1 th after-final amendment): ENTERED (Advisory 
Action attached herewith). Examiner Note: 

Claims 379 and 380 are allowed. See remarks by applicant. See claim status below. 
Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 

140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 379, 
380, 381, 384-388, 390-393, 396-401, 403- 406, 409-413, 420, 425, 502-507, and 511- 
515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 
139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 



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359-374, 376, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501, 508- 
510, 516-543. 

12) Amendment filed 11/21/06 (12th after-final amendment): NOT ENTERED (Advisory 
Action attached herewith). Examiner Note: Proposed claim amend not entered. Does 
not simplify issues or place application in better form for appeal, does not cancel 
corresponding number of finally rejected claims. Remarks have not been considered as 
such were not timely filed See 37 C.F.R. §41 .33 and MPEP 1 206.. See claim status 
below. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 
140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 379, 
380, 381, 384-388, 390-393, 396-401, 403-406, 409-413, 420, 425, 502-507, and 511- 
515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 
139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 
359-374, 376, 382, 383, 389, 394, 395, 402,407, 408, 414-419, 421-424, 426-501, 508- 
510, 516-543. 

13) Amendment filed 11/25/06 (13th after-final amendment): NOT ENTERED (Advisory 
Action attached herewith). Examiner Note: Proposed claim amend not entered. Does 
not simplify issues or place application in better form for appeal, does not cancel 
corresponding number of finally rejected claims. Also, further consideration. Remarks 
have not been considered as such were not timely filed See 37 C.F.R. §41 .33 and 
MPEP 1206.. See claim status below. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 



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Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 
140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 379, 
380, 381, 384-388, 390-393, 396-401, 403-406, 409-413, 420, 425, 502-507, and 511- 
515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 

139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 
359-374, 376, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501, 508- 
510, 516-543. 

14) Amendment filed 11/25/06 (14th after-final amendment): NOT ENTERED (Advisory 
Action attached herewith). Examiner Note: Remarks/exhibit have not been considered 
as such were not timely filed See 37 C.F.R. §41 .33 and MPEP 1206. See claim status 
below. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 

140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 379, 
380, 381, 384-388, 390-393, 396-401, 403-406, 409-413, 420, 425, 502-507, and 511- 
515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 
139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 
359-374, 376, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501, 508- 
510, 516-543. 



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15) Amendment filed 11/27/06 (15th after-final amendment): NOT ENTERED (Advisory 
Action attached herewith). Examiner Note: Proposed claim amend not entered. Does 
not simplify issues or place application in better form for appeal, does not cancel 
corresponding number of finally rejected claims. Also, further consideration. Remarks 
have not been considered as such were not timely filed See 37 C.F.R. §41 .33 and 
MPEP 1206.. See claim status below. 

Claims withdrawn: 73-76, 82, 83, 377, 378. 

Claims allowed: 65, 77-81, 86, 87, 97-99, 103-108, 113, 114, 123-125, 135-138, 
140, 144, 145, 150-152, 156-161, 167-181, 185, 186, 189-191, 196, 197, 213-216, 220, 
221, 224-226, 231, 235, 236, 241-243, 247-252, 258-267, 269-272, 276, 277, 280-282, 
287, 288, 296-301 , 304-307, 311, 312, 315-317, 330, 335, 336, 346, 358, 375, 379, 
380, 381, 384-388, 390-393, 396-401, 403-406, 409-413, 420, 425, 502-507, and 511- 
515. 

Claims rejected: 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 115-122, 126-134, 
139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217- 
219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 
283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 
359-374, 376, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501, 508- 
510, 516-543. 

16) The Response After Final Rejection submitted (01/31/2008) entitled "Sixteenth 
Supplemental Response" has not been responded to with and Advisory Action as of the 
submission of this Corrected Appeal Brief. 

1 7) The Response(s) After Final Rejection submitted 03-20-2008 entitled 
"Seventeenth Supplemental Response" and "Attachment to the Seventeenth 
Supplemental Response" has not been responded to with an Advisory Action as of the 
submission of this Corrected Appeal Brief. 



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PartV 



CFR37 §41.37(c)(1)(v) 
Summary of Claimed Subject Matter 

Applicants in 1986 discovered that ceramic materials have superconductive critical 
temperatures (Tc) of greater than or equal to 26 K. Applicants were awarded the Nobel 
Prize in Physics in 1987 for this discovery.. 

Applicants' claims are directed to a superconductive device, apparatus, structure, etc. 
carrying a superconductive current in an electrical element having a (Tc) of greater 
than or equal to 26 K. 

Applicants and no other persons received a Nobel Prize for this invention since this was 
not know prior to their discovery. 

Subsequent discoverers of species that come within the scope of Applicants' rejected 
claims, did not share in Applicants' Nobel Prize and were not awarded an independent 
Nobel Prize. 

In Volume 2 of the Appeal Brief a summary is provided of each rejected claim and 
where support for these claims is found in the first filed Ancestral Application Number 
07/053, 307 filed 05/22/1987. 

The Summary of each claim uses the version of the claims from the "Thirteenth 
Supplementary Response" submitted 1 1/25/2006 which was not entered when this Brief 
was filed. Changes to the claims in the "Thirteenth Supplementary Response" do not 
change the scope of the amended claims or the support thereof in the specification. 

The summary of each claim shows that the electrical element that carries the 
superconductive current preferably has one or more the following properties (referred to 
as Applicants' High Tc Properties) : 



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• Is a ceramic 

• Is ceramic like 

• Comprises a ceramic characteristic 

• Is an oxide 

• Comprises oxygen 

• Comprises oxygen in stochiomeric amount 

• Comprises oxygen in nonstochiomeric amount 

• Comprises a metal 

• Comprises a transition metal 

• Comprises copper 

• Comprises a metal oxide 

• Comprises a transition metal oxide 

• Comprises copper oxide 

• Comprises a multivalent metal 

• Comprises a multivalent transition metal 

• Comprises a multivalent copper 

• Is layered 

• Is layer-like 

• Is layer-type 

• Comprises a layered characteristic 

• Is a perovskite 

• Is perovskite like 

• Is perovskite type 

• Is perovskite related 

• Substantially perovskite 

• Comprises a perovskite characteristic 

• Comprises a Group MA element 

• Comprises a Group 1MB element 

• Comprises a rare earth element 



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• Comprises a rare earth like element 

• Comprises a rare earth characteristic 

• Is mixed valent 

• Comprises a multivalent metal 

• Comprises a multivalent transition metal 

• Comprises a multivalent copper 

• Comprises a mixed valent metal ions 

• Comprises a mixed valent transition metal ions 

• Comprises a mixed valent copper ions 

• Comprises a substantially layered perovskite crystal structure 

• Comprises a substituted transition metal oxide. 

• Comprises four elements no one of which is a superconductor 

• Comprising one or more of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, 
Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

• Comprises one or more of of Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

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

With or without any of the forgoing properties the electrical element that carries the 
superconductive current can be made according to known principle of ceramic science 

This list of Applicants' High Tc Properties is exemplary only and is not limiting and is not 
intended to introduce limitations into Applicants' claims. 

These Applicants' High Tc Properties identify properties that the species of 
superconducting elements, describe in the specification, may possess. The recitation 



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of these properties provide direction for persons of skill in the art to look for other 
species, having these properties, that superconduct at a temperature greater than or 
equal to 26 K. 

As described below no undue experimentation is needed to make such species and 
therefore, Applicants do not have to provide "guidance" on how to do experimentation 
to make such species. Guidance is only needed when undue experimentation would be 
needed without such guidance to make species by experiments that were not actually 
performed by Applicants. 

A few of the claims will be discussed here. As stated above detailed comments on each 
appealed claim is in Volume 2. 

CLAIMS 438 TO 465 

CLAIM 438 recites 

An apparatus comprising: a means for conducting a 
superconducting current at a temperature greater than or equal to 
26°K and a means for providing an electric current to flow in said 
means for conducting a superconducting current. 

In this claim the element carrying the superconducting current is in means plus function 
form. Means for conducting a superconducting current at a temperature greater than or 
equal to 26°K are described at page 3, line 1 to page 28, line 5 of the specification. 

CLAIM 439 adds the structural property that for the apparatus described in claim 438 
the "means for conducting a superconductive current comprises a T c greater than or 
equal to 26°K." 

CLAIM 440 adds to the apparatus of claim 438 "a temperature controller for maintaining 
said means for conducting a superconducting current at a said temperature." 



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The "means for conducting a superconducting current" in each of claims 438. 439 and 
440 is defined to have the following list of structural properties in the claim identified: 

• CLAIM 441 - comprises oxygen. 

• CLAIM 442 - comprises one or more of the groups consisting of Be, Mg, Ca, Sr, 
Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

• CLAIM 443 - comprises one or more of Be, Mg, Ca, Sr, Ba and Ra and one or 
more of Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

• CLAIM 444 - comprises a layered structure. 

• CLAIM 438 - comprises a substantially perovskite structure. 

• CLAIM 446 - comprises a perovskite-like structure. 

• CLAIM 447 - comprises a perovskite related structure. 

• CLAIM 448 - comprises a structure having a perovskite characteristic. 

• CLAIM 449 - comprises a transition metal. 

• CLAIM 450 - comprises a copper oxide. 

• CLAIM 451 - comprises oxygen in a nonstoichiomeric amount. 

• CLAIM 452 - comprises a multivalent transition metal. 

• CLAIM 453 - the means for conducting a superconducting current can be made 
according to known principles of ceramic science. 



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CLAIM 454-465 depend respectively from claims 441 to 452, wherein the "means for 
conducting a superconducting current can be made according to known principles of 
ceramic science." 

Consequently, the claim set 438 to 465 have claims 438 and 440 which recite the 
element carrying the superconducting current in means plus function form ("a means for 
conducting a superconducting current at a temperature greater than or equal to 26°K") 
and claims 439 and 441 to 465 recite structural properties corresponding to this means. 

These structural properties identify properties that the species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species, having these 
properties, that superconduct at a temperature greater than or equal to 26 K. 

CLAIM 466 

Claim 466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a T c greater 
than or equal to 26°K; 

said superconductive current carrying element comprises a property 
selected from one or more of the group consisting of a mixed valent 
oxide, a transition metal, a mixed valent transition metal, a perovskite 
structure, a perovskite-like structure, a perovskite related structure, a 
layered structure, a stoichiomeric or nonstoichiomeric oxygen 
contents and a dopant. 



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This claim recites that the "superconductive current carrying element comprises a 
property selected from one or more of the group consisting of a:" 

• a mixed valent oxide, 

• a transition metal, 

• a mixed valent transition metal, 

• a perovskite structure, 

• a perovskite-like structure, 

• a perovskite related structure, 

• a layered structure, 

• a stoichiomeric or nonstoichiomeric oxygen contents and a 

• dopant. 

These structural properties identify properties that the species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species, having these 
properties, that superconduct at a temperature greater than or equal to 26 K. 

CLAIMS 466 TO 473 

Claim 466 recites: 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a T c greater than 
or equal to 26°K 

said superconductive current carrying element comprises an oxide, a 
layered perovskite structure or a layered perovskite-like structure and 
comprises a stoichiomeric or nonstoichiomeric oxygen content. 



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This claim recites that a "superconductive current carrying element comprises" the 
properties: 

• an oxide, 

• a layered perovskite structure or a layered perovskite-like structure and 

• a stoichiomeric or nonstoichiomeric oxygen content. 

CLAIM 467 more specifically defines the apparatus according to claim 466 to be 
wherein said superconductive current carrying element is at a temperature greater than 
or equal to 26 K. 

CLAIM 468 adds to the apparatus according to claim 466, a temperature controller for 
maintaining said superconductive current carrying element at a temperature less than 
the T c . 

The superconductive current carrying element of claims 466, 467 or 468 comprises: 

• CLAIM 469 - one or more of the group consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

o CLAIM 471 adds to CLAIM 469 - a transition metal. 

• CLAIM 474 adds to claim 471 , wherein the superconducting current 
carrying element can be made according to known principles of 
ceramic science. 

• CLAIM 470 - one or more of Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

o CLAIM 472 adds to claim 470 - a transition metal. 

• CLAIM 475 adds to 472, wherein the superconducting current 
carrying element can be made according to known principles of 
ceramic science. 



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• CLAIM 473 adds to claims 466, 467, or 468, the property wherein the 
superconducting current carrying element can be made according to known 
principles of ceramic science. 

These structural properties identify properties that the species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 

CLAIMS 476 TO 491 

Claim 476 recites 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a T c greater than 
or equal to 26 K' 

said superconductive current carrying element comprises an oxide, a 
layered perovskite structure or a layered perovskite-like structure and 
comprises a stoichiomeric or nonstoichiomeric oxygen content. 

In this claim the superconductive current carrying element comprises 
o an oxide, 

o a layered perovskite structure or a layered perovskite-like structure and 
o comprises a stoichiomeric or nonstoichiomeric oxygen content. 

CLAIM 477 more specifically defines the apparatus according to claim 476 to be 
wherein the superconductive current carrying element is at a temperature greater than 
or equal to 26 K. 



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CLAIM 478 adds to the apparatus according to claim 476 a temperature controller for 
maintaining the superconductive current carrying element at a temperature less than the 
To 

The " superconductive current carrying element" of claims 476, 477 or 478 is defined to 
have the following list of structural properties in the claims identified: 

o CLAIM 479 - one or more of the group consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

o CLAIM 481 - adds to claim 479, wherein the superconductive current 
carrying element comprises a transition metal. 

o CLAIM 480 - one or more of Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

o CLAIM 482 - adds to claim 480, wherein the superconductive current 
carrying element comprises a transition metal. 

o CLAIM 483 - copper oxide. 

CLAIM 484 more specifically defines the apparatus according to anyone of claims 476, 
477 or 478 to be wherein the superconductive current carrying element can be made 
according to known principles of ceramic science. 

CLAIMS 485 to 491 add to claims 479 to 484 respectively "wherein said 
superconductive current carrying element can be made according to known principles of 
ceramic science." 

These structural properties identify properties that species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 



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CLAIM 496 

Claim 496 recites: 

CLAIM 496 A superconductive apparatus for causing electric- 
current flow in a superconductive state at a temperature greater 
than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive 
composition, the superconductive composition comprising a 
copper-oxide compound having a crystal structure comprising a 
perovskite related structure and a layered characteristic, the 
composition having a superconductor transition temperature T c 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 T c of the superconductive 
composition; and 

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

This claim recites that a "a superconductor element made of a superconductive 
composition, the superconductive composition comprising" the properties: 

• a copper-oxide compound 

• having a crystal structure comprising a perovskite related 
structure and 

• a layered characteristic, 

These structural properties identify properties that species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 



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provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 

CLAIMS 517 TO 521 

Claim 517 recites: 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a T c greater than 
or equal to 26 K; 

said superconductive current carrying element comprises a metallic, 
oxygen-deficient, perovskite-like, mixed valent copper compound. 

This claim states that the "superconductive current carrying element" comprises: 

o a metallic, 

o oxygen-deficient, 

o perovskite-like, 

o mixed valent copper compound. 

CLAIM 518 more specifically defines the apparatus according to claim 517 to be 
wherein the superconductive current carrying element is at a temperature greater than 
or equal to 26 K. 

CLAIM 51 9 adds to the apparatus according to claim 517 a temperature controller for 
maintaining the superconductive current carrying element at a temperature less than 
said T c . 

The " superconductive current carrying element" of claims 517, 518 or 519 is defined to 
have the following list of structural properties in the claim identified: 



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o CLAIM 520 - one or more of the group consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho Er, Tm, Yb and Lu. 

o CLAIM 521 - one or more of Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 

These structural properties identify properties that species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 

CLAIMS 522 TO 534 

Claim 522 recites: 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a T c 
greater than or equal to 26 K; 

said superconductive current carrying element comprises a 
composition that can be made according to known principles of 
ceramic science. 

This claim recites that a "a superconductor element made of a superconductive 
composition, the superconductive composition comprises" the properties : 
o "that can be made according to known principles of ceramic science." 

CLAIM 523 more specifically defines the apparatus of claim 522 to be wherein the 
superconductive current carrying element is at a temperature greater than or equal to 
26 K. 



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CLAIM 524 adds to the apparatus according to claim 523 a temperature controller for 
maintaining said superconductive current carrying element at a temperature less than 
said T c . 

CLAIM 529 adds that the superconductive current carrying element comprises copper 
oxide. 

The " superconductive current carrying element" of claims 522, 523 or 524 is defined to 
have the following list of structural properties in the claim identified: 

o CLAIM 525 - one or more of the group consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 
o CLAIM 527 - adds to claim 525 comprises a transition metal. 

o CLAIM 526 - one or more of Be, Mg, Ca, Sr, Ba and Ra and one or more of Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu. 
o CLAIM 528 - adds to claim 527 comprises a transition metal. 

o CLAIM 530 - substantially perovskite. 

o CLAIM 531 - a perovskite-like structure. 

o CLAIM 532 - a perovskite related structure. 

o CLAIM 533 - a nonstoichiometric amount of oxygen. 

o CLAIM 534 - a layered structure. 

These structural properties identify properties that species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 



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provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 

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. 

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

These structural properties identify properties that species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 



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CLAIM 146 TO 148 

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

CLAIM 147 mores specifically defines the apparatus of claim 146 to be where the 
composition is comprised of a metal oxide. 

CLAIM 148 mores specifically defines the apparatus of claim 146 to be where the 
composition is comprised of a transition metal oxide. 

These structural properties identify properties that species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 



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CLAIM 536 

Claim 536 recites: 

CLAIM 536 An apparatus comprising: 



a means for carrying a superconductive current 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 means for carrying a 
superconductive current exhibits said superconductive state, and 

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

In this claim the element carrying the superconducting current is in means plus function 
form. Means for conducting a superconducting current at a temperature greater than or 
equal to 26°K are described at page 3, line 1 to page 28, line 5 of the specification. 

These structural properties identify properties that species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 



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Claim 537 recites: 



CLAIM 537 



CLAIM 537 An apparatus comprising: 

a metallic, oxygen-deficient, perovskite-like, mixed valent transition metal 
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. 
This claim recites that a "composition exhibiting a superconductive state at a 
temperature greater than or equal to 26°K" comprising the properties : 

• a metallic, 

• oxygen-deficient, 

• perovskite-like, 

• mixed valent transition metal composition 

These structural properties identify properties that species of superconducting 
elements, describe in the specification, possess. The recitation of these properties 
provide direction for persons of skill in the art to look for other species having these 
properties that superconduct at a temperature greater than or equal to 26 K. 



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Claim 540 



CLAIMS 540 TO 542 

recites: 

CLAIM 540 An apparatus comprising: 



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

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

This claim states that the composition exhibiting a superconductive state at a 
temperature greater than or equal to 26°K comprises oxygen. 

CLAIM 541 further defines claim 540 to be where said composition is comprised of a 
metal oxide. 

CLAIM 542 further defines claim 541 to be where said composition is comprised of a 
transition metal oxide. 



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PART V 
CONCLUSION 



The description of Applicants' claims above is for illustration purposes and in view of the 
large number of claims under appeal to facilitate recognition of the organizational 
structure of the claims. For purposes of prosecution history estoppel no limitations are 
included in the claims by this description. In Volume 2 of this Appeal Brief there is a 
description of each claim under appeal. For purposes of prosecution history estoppel no 
limitations are included in the claims by those descriptions. A number of Applicants' 
claims refer to a means for passing a current and a means for cooling the 
superconducting element. The "Sixteenth Supplemental Response" submitted 
01/31/2008, which was not entered at the time of submission of this Brief, provides a 
reference in Attachment A thereof, which is Brief Attachment BL, published in 1986 
giving a summary of temperature control apparatus. Brief Attachment BL is the table of 
contents, the Preface and Chapter 1 of the book "Cryogentic Engineering" by B. A. 
Hands, Copyright 1986, Published by Academic Press, Inc. Chapter 1 is entitled 
"Survey of Cryogenic Engineering." This is being provided to show the general state of 
the art of apparatus for controlling temperature to be in low temperature ranges as used 
in superconductivity. Superconductivity was discovered in 191 1 and apparatus to 
control temperature were well know in the art prior to Applicants' earliest priority date. 

Pages 1 and 2 of the specification describe technologies using superconductors such 
as the Josephson junction technology which extensively use current sources and 
cooling systems. Current sources are commonly used in the electronic arts and do not 
need detailed description. Apparatus for controlling temperature for superconductivity 
are well known in the art and do not need description. 



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Part VI 



CFR37 §41.37(c)(1)(w) 
Grounds of Rejection to be reviewed on appeal 

1 ) Claims 1 -64, 66-72, 84, 85, 88-96, 1 00-1 02, 1 09-1 12,11 5-1 22, 1 26-1 34, 1 39, 
141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217-219, 
222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 283- 
286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 359- 
374, 376, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501 , 508-510 
and 515-543 have been rejected under 35 U.S.C. 112, first paragraph, because as 
stated by the Examiner "the specification, while being enabling for compositions 
comprising a transition metal oxide containing at least a) an alkaline earth element or 
Group MA element and b) a rare-earth element or Group 1MB element, does not 
reasonably provide enablement for the invention as claimed." 

2) Applicants request the claim of priority in paper submitted 04/27/1998 be 
granted. The Examiner did not respond to Applicants' arguments in support thereof in 
Applicants' responses of 08/02/1 999, 03001/2004 and other responses. The Decision 
on the Pre-Appeal Brief did not respond to Applicants' request to be granted the claimed 
priority. In the alternative Applicants request entry of a statement in the record that this 
issue does not have to be decided to resolve the issues in this appeal and thus the 
denial of priority is withdrawn and left as an issue not decided on. 

Applicants note that the Notice of Panel Decision from Pre-Appeal Brief Review 
dated May 19, 2006 did not respond to any of Applicants' issues or arguments in the 
Pre-appeal Brief submitted April 20, 2006. 



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Part VII 

CFR37 §41.37(c)(1)(w7) 
Argument 

Preliminary Comment 

Part A 

Applicants note that the USPTO participants on the Notice of Panel Decision 
from Pre-Appeal Brief Review dated 05/19/2006 are: The current Examiner, current 
Supervisory Examiner at the time of the Panel Decision (SPE at the time of Panel 
Decision) and another Supervisory Examiner. The SPE at the time of the Panel 
Decision was the Examiner of record of the parent application of the present application 
and was the Examiner of record in the present application from the filing date, June 7, 
1995, until at least July 30, 1998 which is the last paper in the record of the current 
application signed by then Examiner who was the SPE at the time of the Panel 
Decision. The issues on appeal were first raised by the SPE at the time of the Panel 
Decision and sustained by current Examiner. Thus two of the three members of the 
Pre-Appeal Brief review panel were reviewing their own rejections. Since two members 
of the review panel were Examiners of the present application, to the extent that the 
Notice of Decision on the Pre-Appeal Brief reaffirms the prosecution history, Applicants 
believe that no deference or weight should be given to the result of the Notice of Panel 
Decision from Pre-Appeal Brief Review. 

Reference to attachments to this Appeal Brief are Brief Attachment # for Appeal 
Brief Attachment number. 

The Final Action of 10/20/2005, which is the basis of this appeal will be referred 
to herein as the Final Action. The Final Action incorporates portions of the Office Action 
dated 07/28/2004, which will be referred to herein as Office Action 07/28/2004 or as OA 
07/28/2004. 



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Preliminary Comment 
PartB 



In the Final Action Claims 1 -5, 7-1 1 , 1 7, 1 9, 23, 28, 52-54, 59, 65, 72, 77-81 , 86, 
87, 94, 96-108, 144, 145, 149, 150, 152-156, 158-161, 165, 166, 170, 171, 175, 176, 
180, 181, 235, 236, 240, 241-252, 257, 261, 262, 266, 267, 271, 272, 361-413, 414- 
427, 433, 434, 446, 448, 466-495 and 537-539 were rejected under 35 U.S.C. 112, 
second paragraph, as being indefinite. The rejection of these claims was based on 
terms which the Examiner has stated were indefinite for the first time in the ancestral 
applications of the present application. (See Appl. Ser. No. 07/053,307 Office Actions 
dated 08/08/1990 and 04/25/1991 in which claim terms were rejected as indefinite.) 
Notwithstanding, Applicants having submitted extensive documentary and affidavit 
evidence showing that the terms, rejected as indefinite, were well known and 
understood in the ceramic arts, were used in issued US Patents and the claims of those 
patents, the Examiner did not withdraw the rejections for indefiniteness until Applicants 
submitted on 07/11/2006 the "Fifth Response After Final Rejection" and submitted on 
07/25/2006 the "Sixth Response After Final Rejection". The repeated maintaining of the 
indefinite rejections substantially contributed to the long pendency of this application. 
The rejection for indefiniteness was withdrawn in Advisory Action dated 08/29/2006, 
based on Applicants' arguments first presented in the Ancestral Application Serial 
Number 07/053,307 filed 05/22/1987. 



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Preliminary Comment 
Parte 



As described in detail below during the long prosecution history of the present 
application many of Applicants' claims rejected as not enabled, were repeatedly 
rejected as anticipated or obvious (under 35 USC 102, 103) over the Asahi Shinbum 
Article (Brief Attachment AV). The Asahi Shinbum Article merely states that a 
researcher in Japan reproduced Applicants' work. Applicants repeatedly argued, inter 
alia, that the Asahi Shinbum Article was not a reference under 35 USC 102 since alone 
it was not enabling and for enablement it relied on Applicants' Article (Brief Attachment 
AX) which is incorporated by reference at page 6 of Applicants' specification. The 
Examiner repeatedly rejected Applicants' argument for why the Asahi Shinbum article 
was not a reference under 35 USC 102. Applicants avoided the Asahi Shinbum Article 
by swearing behind it though affidavits submitted during the prosecution of Applicants' 
first filed application, Ser. No. 07/053,307. In View of their affidavits the Examiner 
withdrew the rejections over the Asahi Shinbum article. In view of this Applicants have 
argued in numerous responses that it necessarily follows from the withdrawn rejections 
of Applicants' claims under 35 USC 1 02 and 1 03 over the Asahi Shinbum Article that 
Applicants' claims are enabled in the view of the Examiner's rejection since for a single 
reference to anticipate or render obvious claims, the reference must be enabling. Since 
the enablement of the Asahi Shinbum Article requires Applicants' Article which is part of 
Applicants' teaching, Applicants' teaching is enabling of Applicants' claims . In order to 
avoid Applicants' arguments the Final Action states at the bottom of page 12 "Even if 
this disclosure were available as a prior art publication the Examiner contends that the 
article may not be applied as operable prior art." The Examiner is here agreeing with 
Applicants' first argument, made in 1992 when this reference was first cited. The 
repeated rejection of Applicants claims over the Asahi Shinbum Article and the 
Examiner's refusal to agree that it was not a reference under 35 USC 102 has 
substantially contributed to the long pendency of this application. 



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Preliminary Comment 
PartD 

Attachments herein use the following identification scheme. The Attachments 
are Brief Attachments A to Z followed by Brief Attachments AA to AZ, followed by Brief 
Attachments BA to BL. This identification scheme is used so that reference to 
attachments in the argument herein will use the same identification that is used by a 
number of lengthy affidavits submitted during the prosecution that are referred to in the 
argument herein. 

Applicants note that the DST AFFIDAVITS (Brief Attachments AM, AN and AO) 
in U 2 thereof refer to Attachments A to Z and AA of the "FIRST SUPPLELMENTAL 
AMENDMENT" in response to Office Action date July 28, 2004 and to Attachments AB 
to AG of the "THIRD SUPPLEMENTAL AMENDMENT" in response to the Office Action 
dated July 28, 2004. These attachments are the same as Brief Attachments A to Z and 
AA to AG. 

Part VIII Section 1 
CFR37 §41.37(c)(1)(w/f) 
Summary of Argument 

SUBSECTION A: SUMMARY OF ARGUMENT 
CLAIM OF PRIORITY TO PRIORITY DOCUMENT 

Applicants request the claim of priority in their paper submitted 04/27/1998 be 
granted. The Examiner did not respond to Applicants' arguments in support thereof in 
Applicants' responses of 08/02/1 999, 03001/2004 and other responses. Alternatively, 
Applicants request entry of a statement that this issue does not have to be decided to 
resolve the issues in this appeal and thus the denial of priority is withdrawn and left as 
an issue undecided. 

In their paper submitted 04/27/1998 Applicants claimed, under 35 USC Section 
1 1 9, the priority of an application filed on 23 January 1 987 on their behalf in the 



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European Patent Office as European patent application Serial No. 87100961 .9 (referred 
to herein as "the European '961 patent application" or the Priority Document). 
Submitted in the parent application (Application Serial No. 07/053,307 filed 05/22/1987) 
of the present application were (1) a certified copy of the European '961 patent 
application upon which the claim to priority is based; and (2) a supplemental Declaration 
and Power of Attorney for the application duly executed by the Applicants, Drs. Bednorz 
and Mueller on 4 February 1992 and 28 February 1992, respectively, in which a claim of 
priority under 35 USC Section 1 19 to the European '961 patent application is made. 

SUBSECTION B: SUMMARY OF ARGUMENT 
REJECTIONS UNDER 35 USC 112 H 1 FOR LACK OF ENABLEMENT 

Claims 1-64, 66-72, 84, 85, 88-96, 100-102, 109-1 12, 1 15-122, 126-134, 139, 141-143, 
146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217-219, 222, 223, 
227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 283-286, 289- 
295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 359-374, 376, 
379, 380, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501 , 508-510 
and 515-543) are rejected under 35 U.S.C. 112 If 1, as not enabled. 

SUBSECTION B (i): SUMMARY OF ARGUMENT 
REJECTIONS UNDER 35 USC 112 H 1 FOR LACK OF ENABLEMENT CLAIMS IN 
MEANS PLUS FUNCTION FORM 

In Claims 438, 440 and 536 the "means for conducting a superconductive current" is in 
means plus function form. MPEP § 2181 Part II states "35 U.S.C. 112, sixth paragraph 
states that a claim limitation expressed in means-plus-function language 'shall be 
construed to cover the corresponding structure described in the specification and 
equivalents thereof.'" The Examiner has allowed claims 113, 114, 123-125, 135- 
138,140,151, 157, 167-169, 172-174, 177-179, 185, 186, 189-191, 196, 197, 213-216, 
220, 221, 224-226, 231, 258-260, 264, 265, 269, 270, 276, 277, 280-282, 287, 288, 
296-301 , 304-307, 311,31 2, 31 5-31 7, 502-507 and 51 1 -51 6 at page 2 of the Advisory 
Action dated 1 1/15/2007. In the Final Action the Examiner states these claims are 



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allowed "because the specification, [is] enabling for compositions comprising a transition 
metal oxide containing at least a) an alkaline earth element or Group MA element and b) 
a rare-earth element or Group 1MB element" Thus since the Examiner has allowed 
claims to specific examples described in the specification, the claims in means plus 
function form can not be rejected as not being enabled and the rejection should be 
reversed. It is Applicants' view that the CAFC decision In re Donaldson 29 USPQ2d 
1845 (1994) requires this result. Therefore, Applicants respectfully request the Board to 
reverse the rejection of claims 438, 440 and 536 as not being enabled under 35 USC 
112, first paragraph. 

SUBSECTION B (ii): SUMMARY OF ARGUMENT 
REJECTIONS UNDER 35 USC 112 H 1 FOR LACK OF ENABLEMENT CLAIMS NOT 
IN MEANS PLUS FUNCTION FORM 

The key issue of this appeal is whether the generic claims under appeal satisfy 
the requirements of 35 USC 112, first paragraph, and are thus enabled. The Examiner 
has not made out a prima facie case of lack of enablement since the Examiner has 
given no reason to doubt that a person of skill in the art can practice Applicants' claimed 
invention to their full scope. Applicants' specification discloses methods well known in 
the prior art to fabricate specific examples of a number of high Tc superconducting 
materials and Applicants' specification teaches that other species can be made by the 
same known principals of ceramic science and equivalents thereof. During the 
prosecution of this application other species of high Tc superconductors have been 
made. It is Applicants' understanding of the Examiner's comments in the Final Action 
that the Examiner agrees "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 compositions." Since the known methods disclosed 
by Applicants are used to fabricate species within the scope of Applicants claims, it is 
Applicants' position that persons of skill in the art can determine those species without 
undue experimentation and consequently, Applicants have enabled their claims to their 



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full scope. When species are determinable without undue experimentation, the art is a 
predictable art. Even though a high Tc material is a chemical composition, all aspects 
of chemistry are not unpredictable. That chemistry is not per se unpredictable is 
generally recognized by decisions of the Board and the Courts, for example at 427 F.2d 
833, 839 the CCPA in In re Fisher states "In cases involving unpredictable factors such 
as most chemical reactions." Thus all chemical reactions are unpredictable Applicants' 
evidence shows that the chemistry involved in formation of high Tc materials does not 
have to be understood to fabricate them which is one reason for why species are readily 
determinable. If the chemistry does not have to be understood to fabricate species, it is 
improper to refer to the art of high Tc super-conductivity as unpredictable. Applicants' 
claims are directed to an apparatus using the high Tc material and not to a composition 
of matter. 

At page 8 of the Final Action the Examiner states: 

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 compositions. The numerous 1 .132 declarations, such as 
those of Mitzi, Shaw, Dinger and Duncombe, and the 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. 

The following claims recite that the high Tc element of the claims from which 
these claims depend "can be made according to known principles of ceramic science" 
or similar recitation: dependent claims 322 to 360, 414 to 427, 436, 453 to 465, 473 to 



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475, and 484 to 491 and independent claim 522. Of these claims the following are 
allowed: 330, 335, 336, 346 and 358. 

At page 6 of the Final Action the Examiner further states: 

What is not a "matter of routine experimentation" in this complex, 
unpredictable art is arriving at superconductive compositions outside the 
scope of the allowable claims (e.g., subsequently discovered BSCCO or Tl- 
systems as disclosed in Rao (see response filed 3/8/05, pages 141-143). 
The Examiner respectfully maintains that the instant disclosure has not 
provided sufficient guidance to produce such materials. 

This statement is clearly inconsistent with In re Angstadt 190 USPQ 219 (CCPA 

1976) and In re Wands 8 USPQ2d 1400 (CAFC 1988) which held that to satisfy the first 

paragraph of 35 USC 1 1 2 it is only necessary that a person of skill in the art not 

exercise undue experimentation to make samples that come within the scope of the 

Applicants' claims. The Examiner has provided no objective indication that undue 

experimentation was needed to make species to High T c materials that come within the 

scope of Applicants' claims, e.g., the subsequently fabricated systems disclosed in Rao 

(Brief Attachment AB). Applicants have clearly shown that only routine experimentation 

is needed to fabricate other samples to practice Applicants' claimed invention. See the 

DST AFFIDAVITS (Affidavits of Shaw of 04/14/2005, Affidavit of Dinger of 04/04/2005 

and Affidavit of Tsuei of 04/04/2005, Brief Attachment AM, AN and AO, respectively, 

collectively referred to herein as the DST AFFIDAVITS). Applicants respectfully 

disagree that the field of High Tc superconductivity is unpredictable within the meaning 

of the US patent law as suggested by the Examiner. See the affidavit of Newns 

submitted 04/12/2006 (Brief Attachment AP). The complex chemistry does not have to 

be understood to fabricate samples as stated in the book "Copper Oxide 

Superconductors" by Charles P. Poole, et al. (See If 48 of DST AFFIDAVITS 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. 



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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. 

Since skilled artisans can fabricate samples without knowing the chemistry and 
without a detailed theory, 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. 

In In re Wands 858 F.2d 731, 742 (Fed. Cir. 1988); 8 U.S.P.Q.2D 1400, 1408 
Judge Newman concurring in part, dissenting in part stated "[The inventor] must 
provide sufficient data or authority to show that his results are reasonably predictable 
within the scope of the claimed generic invention, based on experiment and/or scientific 
theory. " Thus experiment or theory is sufficient to establish predictability. And as stated 
above by the Examiner "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." 
There is no requirement to know in advance all examples enabled by their teaching. 
Thus the field of High Tc superconductivity is predictable within the meaning of In re 
Wands. Species within the scope of Applicants' claims are determinable without undue 
experimentation and by well known testing. 

The Examiner's reference to "subsequently discovered BSCCO or Tl-systems " 
suggests that it is the Examiner's view that for Applicants to be allowed a generic claim, 
Applicants must know in advance all materials that can be used to practice Applicant's 
claims. The CAFC has stated in Sri Int'l v. Matsushita Elec. Corp., 775 F.2d 1 107, 1 121 
(Fed. Cir. 1985); 227 USPQ 577, 586 that this is not necessary: 

The law does not require the impossible. Hence, it does not require that an 
applicant describe in his specification every conceivable and possible future 
embodiment of his invention. The law recognizes that patent specifications 
are written for those skilled in the art, and requires only that the inventor 



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describe the "best mode" known at the time to him of making and using the 
invention. 35 U.S.C. § 112. 



Applicants have shown that persons of ordinary skill in the art as of Applicants discovery 
can practice Applicants' claims to their full scope and it is Applicants' understanding of 
the Examiner's statements that the Examiner has agreed with this. 



The CAFC has further stated: 

An applicant for patent is required to disclose the best mode then known to 
him for practicing his invention. 35 U.S.C. § 112. He is not required to 
predict all future developments which enable the practice of his invention in 
substantially the same way. Hughes Aircraft Co. v. United States, 717 F.2d 
1351, 1362 (Fed. Cir. 1983);39 USPQ2d 1065. 

This is exactly what applicants have done. Thus Applicants' claims are enabled. 

The CAFC further states in regards to future developments: 

Enablement does not require the inventor to foresee every means of 
implementing an invention at pains of losing his patent franchise. Were it 
otherwise, claimed inventions would not include improved modes of 
practicing those inventions. Such narrow patent rights would rapidly 
become worthless as new modes of practicing the invention developed, 
and the inventor would lose the benefit of the patent bargain. Invitrogen 
Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1071 (Fed. Cir. 2005)" And, 
"Our case law is clear that an applicant is not required to describe in the 
specification every conceivable and possible future embodiment of his 
invention." Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344, 60 
U.S.P.Q.2D (BNA) 1851 (Fed. Cir. 2001). 

The Examiner's position in regards to the enablement of Applicants' claims is 
inconsistent with the CAFC's position that "[enablement does not require the inventor 
to foresee every means of implementing an invention." Thus Applicants' claims are 
enabled and the rejection should be reversed. The Examiner uses the term predictable 
with the meaning of "foresee." The correct meaning of the term "predictable" for 
enablement purposes is "determinable" without undue experimentation. 

In support of the lack of enablement rejection the Examiner in the Final Action at 
page 4 refers to a article by Schuller et al. which states "Of course, 'enlightened' 
empirical searches either guided by chemical and materials intuition or systematic 



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searches using well-defined strategies may prove to be fruitful. It is interesting to note 
that .... empirical searches in the oxides gave rise to many superconducting systems..." 
See the Affidavit of Newns submitted 04/1 2/2006 If 1 8 (Brief Attachment AB). The DST 
AFFIDAVITS (Brief Attachments AM, AN and AO) describe what a person of skill in the 
art knew prior to Applicants' discovery upon which the systematic empirical study was 
based in view of Applicants' teaching. The Affidavit of News (Brief Attachment AP) 
shows how this systematic empirical study is in principal the same as a systematic 
theoretical investigation when a well developed theoretical formalism exists. Thus 
Schuller, rather than supporting the lack of enablement as contended by the Examiner, 
supports Applicants' position that their claims are enabled. Thus the art of high Tc 
superconductivity is determinable without undue experimentation and Applicants' claims 
are enabled. In the response submitted 01/28/2005 at pages 148-150 Applicants 
applied the MPEP ^ 2164.01(a) Undue Experimentation Factors from In re Wands. The 
Examiner has provided no rebuttal to this. The Examiner has not made a prima facie 
showing for lack of enablement since the Examiner has provided no reasons for why 
undue experimentation is required of a person of skill in the art to practice applicants 
claims. The Examiners statement at page 6 of the Final Action "[w]hat is not a 'matter 
of routine experimentation' in this complex, unpredictable art is arriving at 
superconductive compositions outside the scope of the allowable claims" is an 
unsupported assertion. This is a conclusory statement that should be disregarded. The 
Examiner has attempted to use the asserted lack of a complete theoretical 
understanding of the physical mechanism of High Tc Superconductivity at the time of its 
discovery as a reason to justify referring to the art as unpredictable. The Examiner has 
cited no authority to support is view. The Examiner does not refer to the patent statute 
(35 U.S.C.), the patent regulations (37 C.F.R.), the MPEP or to the decisions of the 
Board or of the Courts to support this conclusion. It is simply not correct that a lack of 
scientific theoretical understanding necessarily means that an art is unpredictable within 
the meaning this legal term of art has in the U.S. patent law. As stated above 
enablement does not require "forseeability" or the Examiner's view of "predictability." 
The Examiner states in the sentence bridging pages 7-8 of the Final Rejection: 



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It is clear from these articles, published well after the filing 
date of the instant application, that the art is still considered 
complex and unpredictable, and that no single theory for the 
mechanism responsible for superconductivity has been 
generally accepted. 

The Examiner is confusing the legal terms "predictability" and "unpredictability" of the 
patent law with the theoretical scientific term "theory" of the mathematical (theoretical) 
sciences, such as theoretical physics, chemistry and solid state science. The legal 
terms "predictability" and "unpredictability" are directed to the language of 35 USC 1 12 ^ 
1 "[t]he specification shall contain a written description ... of the manner and process of 
making and using [the invention]." The theoretical scientific term "theory" is not directed 
to "the manner and process of making and using [the invention]." Theoretical science 
can create a mathematical theory that "predicts" in the scientific sense that a chemical 
composition is energetically stable and can exist even though there is no know method 
of making that chemical composition. A patent applicant who files a patent application 
based on a theory that scientifically predicts with 100% accuracy (100% theoretical 
predictability) that a particular chemical composition, that did not exist prior to the filing 
date of that application, can exists, but where that patent applicant does not disclose 
"the manner and process of making and using [the invention]," and where such 
knowledge is not know by persons of skill in the art as of the filing date, is not entitled to 
a patent because the patent application does not enable a person of ordinary skill in the 
art to practice the invention, notwithstanding that there is 100% theoretical predictability. 
Also, such work, if published, is not a prior art reference under 35 USC 102 because it 
does not "enable" practicing the described technology. On the other hand, a patent 
applicant who files a patent application on a chemical composition genus for which 
there is no know scientific theoretical theory, but for which the process of making the 
species, that come with in the scope of the claim, is known with precision has taught 
persons of skill in the art how to practice the claimed genus of the invention and thus 
the claimed genus invention is enabled. In a precedential decision the Board of Patent 
Appeals and Interferences in Ex parte Jackson 217 USPQ 804, 806 the Board states 
that a claim is enabled if Applicants teaching "would enable one of ordinary skill in the 
relevant art to independently discover additional" species within the scope of Applicants' 



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claims. The Examiner has acknowledged that Applicants have done this and thus their 
claims are enabled. 

At page 9 of the Final Action the Examiner further states: 

What is not a "matter of routine experimentation" ... is arriving 
at superconductive compositions outside the scope of the 
allowable claims ... The Examiner respectfully maintains that 
the instant disclosure has not provided sufficient guidance to 
produce such materials. 

Again as with the patent legal terms "predictability" and "unpredictability," the patent 

legal term "guidance" is directed to "the manner and process of making and using [the 

invention]." When the teaching of a patent application requires undue experimentation 

to practice the invention, guidance on how to carry out the experiment can result in 

enablement even though the experimentation is not recorded as a performed example 

in the specification. As noted in the summary of the invention section above Applicants' 

teaching identifies properties that Applicants' examples possess which later discovered 

species also possess. Thus Applicants' teaching has more than is minimally necessary 

to satisfy enablement. As stated above by the Examiner at page 9 of the Final Action: 

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 compositions. 

Thus the Examiner's own statement is that applicants have provided sufficient guidance 
to enable others to practice their claimed invention and therefore, applicants claims are 
enabled. The Board in Ex parte Jackson 217 USPQ 804 and 807 states "a 
considerable amount of experimentation is permissible if it is merely routine." As stated 
by the Examiner the experimentation to find other species is merely routine. The Board 
in Ex parte Jackson goes on to state if the experimentation is not merely routine there is 
enablement "if the specification in question provides excessable amount of guidance 
with respect to the direction in which the experimentation should proceed to enable the 
determination of how to produce a desired embodiment of the invention claimed." 217 
USPQ 804, 807. Thus guidance is needed when the experimentation is not merely 



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routine. Since there is no evidence in the present application that anything other that 
routine experimentation is needed to determine other species, than specifically 
described by Applicants', the guidance provided by Applicants' teaching is sufficient to 
satisfy enablement. 



In applicants' SECOND SUPPLEMENTAL AMENDMENT submitted March 8, 
2005 applicants state in the paragraph bridging pages 153 and 154: 



Charles Poole et al. published another book in 1995 entitled 
"Superconductivity" Academic Press which has a Chapter 7 on 
"Perovskite and Cuprate Crystallographic Structures". (See 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. 



Thus Poole 1988 states that the high T c 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. 



The Examiner has not rebutted this. 



The following claims recite that the high Tc element of the claims from which these 
claims depend "can be made according to known principles of ceramic science" or 
similar recitation: claims 322 to 360, 414 to 427, 436, 453 to 465, 473 to 475, 484 to 491 
and 522. Of these claims the following are allowed: 330, 335, 336, 346 and 358. Poole 
1988 states that the high T c superconducting materials "are not difficult to synthesize" 



Claim 517 recites 



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said superconductive current carrying element comprises a metallic, 
oxygen-deficient, perovskite-like, mixed valent copper compound. 

Claim 537 recites 

a metallic, oxygen-deficient, perovskite-like, mixed valent transition metal 
composition exhibiting a superconductive state at a temperature greater 
than or equal to 26°K, 

Poole 1995 states that "the new superconductors do indeed possess [the] 
characteristics" explicitly recited in claims 517 and 537 that Applicants' 
specification describes these new superconductors to have. 

Poole 1995 is Brief Attachment Z and Poole 1988 is Brief Attachment AW. Poole 1995 
and Poole 1998 corroborate the truth of Applicants' teaching. 
It is thus clear from the unrebutted objective evidence that Applicants' teaching has 
provided sufficient guidance for persons of skill in the art to practice Applicant's claimed 
invention outside the scope of the allowed claims. The Poole 1995 book confirms that 
the guidance given by Applicants in their publication (Brief Attachment AX) 
incorporated in the teaching of the present application was accurate, as subsequent 
work has shown. Thus applicants claims are fully enabled and the rejections for lack of 
enablement should be reversed. As noted above in the Schuller article cited by the 
Examiner, systematic searches using well-defined empirical strategies "in the oxides 
gave rise to many superconducting systems." Thus persons or ordinary skill in the art, 
guided by Applicants' teaching and with the knowledge of a person of ordinary skill in 
the art known prior to their discovery, using well-defined empirical strategies gave rise 
to other species within the scope of Applicants' claims thereby establishing that 
Applicants' teaching is fully enabling and the rejections for lack of enhancement should 
be reversed. As noted below the Schuller article states similar systematic studies, i.e. 
what a person of skill in the art does, following the discovery of superconductivity in 
M g B 2 has not uncovered new species. This is not evidence of lack of enablement since 
Schuller states these other species were made but when tested were not 



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superconductors. Just as enablement does not require an applicant to "foresee" all 
species that come within the scope of the applicant's claim, it does not require an 
applicant to "foresee" species that do not come within the scope of the claim. All that is 
necessary is that they can be made without undue experimentation and tested to 
determine if such species has the properties to come within the scope of the claim. 

Applicants noted that they explicitly teach high Tc compounds that contain Mg. Mg is 
an alkaline earth element. Applicants teach throughout the specification compositions 
containing alkaline earth elements, see for example, claim 428 and the support 
therefore at page 138-139 of Brief Volume 2. 



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Part VIII Section 2 
Main Argument 



CLAIM OF PRIORITY TO PRIORITY DOCUMENT 
Applicants' claim of priority is identified in Part VIII, Section 1, 
Subsection A 
Preliminary Comment 

The Final Action does not refer to Applicants' claim of priority. The Examiner states at 
page 3 of OA 07/28/2004 which is incorporated into the Final Action: 

Accordingly, the issue of the instant claims being supported by the priority 
document is believed moot in view of the withdrawal of the prior art 
rejections. 

Applicants disagree that the "issue of the instant claims being supported by the 
priority document is ... moot in view of the withdrawal of the prior art rejections." 
Whether the claims are supported by the priority document is not dependent of whether 
there are prior art rejections. For the reasons given below it is Applicants' view that all 
their claims are supported by the priority document and request that priority be granted 
to the priority document. Applicants disagree that the issue of the instant claims being 
supported by the priority document is moot. As stated in the Summary of this Argument 
it is not necessary to decide the issue of Applicants' claim of priority to the priority 
document to decide the issues of this appeal. Therefore, Applicants request the Board 
to either decide the issue of the claim of priority or to formally enter into the record a 
statement that the issue of the claim of priority is not decided. This will leave the record 
clear that Applicants have not conceded to the Examiner's objection to applicants claim 
of priority which will be available to Applicants' for decision, if needed, at a future date. 



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Detailed Argument to Support the Claim of Priority 

At page 2 of the Office Action dated July 30, 1998 (referred to herein as OA 
07/30/1998) the Examiner has acknowledged Applicants' claim for priority under 35 
USC §1 19 in the parent application, Serial No. 08/053,307 filed April 23, 1993. The 
certified copy of the priority document has been filed in parent application, Serial No. 
08/053,307, filed on April 23, 1993 as paper no. 28. (References to the priority 
document herein are to the corresponding European Patent Application 275 343 A1 
published on July 27, 1988. This is Brief Attachment AE which is Attachment 1 to 
Applicants' Response Dated 03/14/2004 submitted in Response to Office Action dated 
07/28/2004 entitled "Third Supplementary Amendment." 

The argument below was presented in Applicants' Response dated 08/02/1999 in 
Response to Office Action dated 07/30/1998, entitled "Supplementary Amendment". 
The Examiner has not responded to this argument in support of priority. 

Applicants respectfully disagree with the Examiner that support is not found in 
that the priority document. The Examiner has made no attempt to rebut this based on 
what is taught in the priority document as it would be understood by a person of 
ordinary skill in the art. A person of ordinary skill in the art would recognize, from the 
priority document, that Applicants' were in possession of the invention as claimed in all 
of Applicants' claims. (A person of ordinary skill in the art is defined in the DST 
AFFIDAVITS Brief Attachments AM, AN and AO H's 1 0 and 1 1 . Since the Examiner has 
not commented on this definition, it is Applicants' understanding that the Examiner 
agrees with this definition.) 

In this regard in OA 07/30/1998 at page 3 the Examiner states: 

Applicants' arguments filed May 14, 1998 (paper no. 19), May 1, 1998 
(paper no. 18.5) and December 2, 1 997 (paper no. 1 6) as well as the 
Affidavits and Attachments, have been fully considered but they are not 
deemed to be persuasive. The applicants quote some passages out of 
the priority document and argue that the present claims are fully based on 
that document. Nevertheless, that priority document is not deemed to 
provide basis for the limitations found in the present claims. 



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In this passage the Examiner states that "Applicants' arguments ... are not 
deemed to be persuasive" and "[nevertheless, that priority document is not deemed to 
provide basis for the limitations found in the present claims." Webster's Ninth New 
Collegiate Dictionary (Merriam-Webster Inc., Springfield, Mass. 1987) defines "deem" 
as a transitive verb meaning "to come to think or judge" and as an intransitive verb 
meaning "to have an opinion : believe." The Examiner has used the intransitive form of 
the verb "deemed." The Examiner has cited no statutory or case law authority which 
permits an Examiner to object to a claim of priority based on the Examiner's "opinion" or 
"belief that a priority document does not support Applicants' claims. The Examiner 
must support a denial of a claim of priority based on what is actually stated in the priority 
document. The Examiner has not done this. Thus the Examiner has not made a prima 
facia showing that the priority document does not support Applicants' claims. 

The Examiner further states in support of the Examiner's "opinion" or "belief at 
page 3, ofO.A. 07/30/1998. 

I. The recitation of a "composition including a rare earth or rare earth-like 
element, an alkaline earth element, a transition metal element capable of 
exhibiting multivalent states, and oxygen", as found in claim 1 (lines 2-4). 
The certified priority document may provide basis for the formula 
RE2TM.O4 at p. 2, para. 4, but the claimed composition is deemed to be 
much broader than that formula. 

Applicants respectfully disagree. In the priority document, (Brief Attachment AE) 
for example in the abstract, RE is a rare earth element, TM is a transition metal and O 
is oxygen. The priority document (Brief Attachment AE) further states at Col. 2, lines 
22-25 "the lanthanum which belongs to the MB group of elements is in part substituted 
by one member of the neighboring MA group of elements...". Group MA elements are 
the alkaline earth elements. The present specification teaches at page 11, lines 22-23, 
that RE stands for the rare earths (lanthanides) or rare earth-like elements. The "rare 
earth like element" act like a rare earth element in the superconductive composition. 
Thus a rare earth-like element is an equivalent of rare earth element. Similar language 



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appears in the present specification at page 12 lines 6-8, "the lanthanum which belongs 
to the MB group of elements is in part substituted by one member of the neighboring IIA 
group of elements...". Group MB elements are included in the rare-earth elements. 
Therefore, the priority document teaches a composition including a transition metal, a 
rare earth or rare earth-like element, and alkaline earth. Applicants note that in the 
passage quoted above, the Examiner incorrectly states that Applicants claim a 
composition. This is not correct. Applicants claim an apparatus or device for flowing a 
superconducting current in a material, such as a ceramic material such as an oxide, 
such as a transition metal oxide. (This characterization is exemplary only and not 
intended to limit the scope of any claim.) In the last sentence of the passage quoted 
above the Examiner incorrectly states "the claimed composition is deemed to be much 
broader than [the] formula" RE2TM.O4" (Emphasis added). The priority document is not 
limited to his formula. The compositions taught by the priority document have variable 
amounts of oxygen, rare earth, rare earth-like and alkaline earth elements as is clearly 
shown in the abstract of the priority document. 

The Examiner further states in OA 07/30/1998 at page 3: 

ii. The limitation "non-stoichiometfic amount of oxygen", as found in claims 
84 (lines 2 and 3) and 86 (line 6). Basis may be seen for an oxygen deficit 
at p. 2, para. 4, but no such basis is seen for the more general limitation of 
"a nonstoichiometric amount of oxygen". 

Applicants respectfully disagree. At Col. 3, lines 46-50 the priority document 
refers to applicants publication in Z. Phys. B - Condensed Matter 64 (1986) 189-193 
(Brief Attachment AX) which is incorporated by reference in the present specification at 
page 6, lines 7-10. (This article is referred to here in as Applicants' article.) This article 
states at page 190, left col., lines 13-14 "[t]his system exhibits a number of oxygen- 
deficient phases with mixed-valent copper constituents." The priority document has 
various general formulas such as at Col. 3, lines 40, "La 2 -xBaxCu0 4 .y x«1 and y>0." 
The abstract has a more generic formula. A stoichiometric compound has a fixed 
amount of each element that make up the compound. Since, the amount of oxygen is 



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variable, the formula has nonstoichiometric amounts of oxygen. Therefore, the priority 
document teaches nonstoichiometric amounts or oxygen. 

In Brief Attachment AS there are copies of pages 224 and 225 of "Inorganic 
Chemistry" by Moeler, John Wiley & Sons, Inc. 1952 and a copy of page 70 of 
"Fundamentals of Chemistry, A Modern Introduction" by Brescia et al., Academic Press, 
1 966. Brief Attachment AS provides an explanation of the terms stoichiometric and 
nonstoichiometric. The documents in Brief Attachment AS support applicants position 
that the priority document teaches nonstochiometric amounts or oxygen. Page 224 of 
the Moeler book states under the heading "Non-Stoichiometric Compounds" that "the 
law of definite proportions is one of the basic tenets of chemistry. . . .there are many 
instances, however, many instances of apparent departure of this rule among solid 
compounds." Page 70 of the Brecia et al., book defines the law of definite proportions 
in Section 4.2. "Such compounds do not possess the exact compositions which are 
predicted from electronic considerations alone and are commonly referred to as 
Berthollide or non-stoichimetric ." (Emphasis Added) Thus persons of skill in the art 
long before Applicants' discovery understood the term "non-stoichimetric" and thus 
there is support for this term in the priority document. 



The Examiner further states in Office Action 07/30/1998 at page 3: 

iii. The limitation "a transition metal oxide having a phase therein which 
exhibits a superconductive state" is found in present claim 24, (line 2). 
The certified priority document may provide basis for compositions of the 
formula RE2TM.O4 , as discussed above, but "transition metal oxide" and 
"superconductive state" are deemed to be much broader than the formula 
RE2TM.O4. 

Applicants respectfully disagree. The field of the invention of the priority 
document (Brief Attachment AF) is "a new class of superconductors in particular 
components ..." and the title is "New Superconductive Compounds Applicants' 
article (Brief Attachment AX) which is referred to in the priority document states at 



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page 190, left Col., lines 14-16 from the bottom "X-ray powder diffractograms ... 
revealed three individual crystallographic phases." In the conclusion at page 192 the 
article states "[t]he system consists of three phases, one of them having a metallic 
perovskite-type layer-like structure. The characterization of the new, apparently 
superconducting, phase is in progress." Thus the priority document supports the 
limitation "a composition exhibiting a superconductive state". The general formula RE 2 - 
x AE x TM.04-y x<0.3 0.1 < y < 0.5 and the more specific formula RE2TM.O4 of the priority 
document is a composition; is a metal oxide; and is a transition metal oxide as recited in 
claim 24. As noted above, the Examiner incorrectly implies that the priority document is 
limited to compounds having the formula RE2TM.O4. 

The Examiner further states at page 3 of OA 07/30/1 998: 

iv. The limitation "a copper-oxide compound" is recited in claim 96 (line 
4). The certified priority document may provide basis for compositions of 
the formula RE 2 TM.0 4 , as discussed above, but "a copper-oxide 
compound" is not deemed to be equivalent to a composition of the formula 
RE2TM.O4 . Basis is not seen in the certified priority document for "a 
copper oxide compound" with the breadth of the present claims. 

Applicants respectfully disagree. Initially the Examiner incorrectly implies claim 
96 is directed to a copper oxide compound. Claim 96 is directed to a an apparatus 
comprising "copper oxide composition consisting essentially of a copper oxide 
compound having a layer-type perovskite-like structure." Applicants respectfully 
disagree with the Examiner's statement above. The priority document (Brief 
Attachment AE) recites numerous copper oxide compositions. It is noted that the 
Abstract of the priority document refers to "[t]he superconductive compounds are oxides 
of the general formula RE 2 -xAExTM.04- y , wherein RE is a rare earth, AE is a member of 
the group of alkaline earths or a combination of at least two members of that group, and 
TM is a transition metal, and wherein x < 0.3 and 0.1 <y < 0.5." This formula permits no 
alkaline earth and a varying amount of alkaline earth, rare earths and a varying amount 
of oxygen. At column 3, lines 20 and 35, there is recited "the Ba-La-Cu-0 system" and 
at line 41 "La2- x Ba x Cu04- y x < 1 and y < 0 and at line 44 teaches Lai- x Ba x Cu03- y . Note 



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that this Lai-xBa x Cu03-y does not contain any alkaline earth. Thus the priority document 
provides support for a composition including a transition metal (Cu), a rare earth or rare 
earth-like elements (La), an alkaline earth element (Ba), an oxygen as found in 
Applicants' claims, specifically claim 86. It is noted that at column 2, lines 13-19 the 
priority document states that "it is a characteristic of the present invention that in the 
compounds in question that the RE portion is partially substituted by one member of the 
alkaline earth group of metals, or by a combination of the members of this alkaline earth 
group and that the oxygen content is at a deficit." It is further noted that at column 2, 
lines 20-23 it states that "for example, one such compound that meets the description 
given by this lanthanum copper oxide La2CuC>4 in which the lanthanum which belongs to 
the 1MB group of the elements is in part substituted by one member of the neighboring 
IMA group of elements." 

The priority document (Brief Attachment AE) at column 3, line 6 recites Ti as a 
transition metal. It is noted that in claim 1 of the priority document, claim 1 recites the 
structure RE 2 -xAExTM.04- y wherein TM is a transition metal. Claim 2 therein recites 
copper as the transition metal. Claim 3 therein recites nickel as the transition metal. 
Claim 8 therein recites chromium as the transition metal. Consequently, a broader 
class of transition metals other than copper is supported by the priority document. 

It is clear from the quoted sections of the priority document (Brief Attachment 
AE) that the priority document clearly supports a much broader composition than the 
Examiner is claiming that it does, and that the priority document, in fact, does support 
Applicants' claims and that a person of skill in the art would recognize that Applicants 
were in possession of the invention as claimed in all of Applicants' claims from the 
teaching of the priority document. 

As noted above, the general formula of the priority document is much broader 
than the formula RE2TM.O4 to which the Examiner incorrectly states the priority 
document is limited. The quantity of oxygen, the rare earth element and of an alkaline 
element is variable and the transition metal is not limited to copper. Consequently, the 



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term "a copper-oxide compound" is adequately supported by the priority document 
(Brief Attachment AE). 

The Examiner further states at page 3 of OA 07/30/1 998: 

v. The limitation to the effect that "the copper oxide compound includes 
(including) at least one rare-earth or rare-earth-like element and at least 
one alkaline-earth element", as recited in claim 103 (lines 5 and 6). The 
certified priority document may provide basis for compositions of the 
formula RE 2 TM.0 4 , as discussed above, but basis is not seen for the more 
general limitation of "a copper-oxide compound" with a rare-earth (like) 
element and an alkaline earth element. 

Applicants respectfully disagree. The second line of the abstract gives the 
general formula "RE2-xAE x TM.0 4 .y x«0.3 and 0.1 <y < 0.5." In claim 1 of the priority 
document y < 0.5. Claim 2 recites RE is lanthanum and TM is a copper. Claim 3 
recites RE is cerium and TM is nickel. Claim 4 recites RE is lanthanum and TM is 
nickel. Claim 8 recites RE is lanthanum and TM is chromium. Claim 9 recites RE is 
neodymium and TM is copper. Applicants' claim 103 recites " the copper-oxide 
compound including at least one rare-earth or rare-earth-like element and at least one 
alkaline-earth element". The priority document (Brief Attachment AE) clearly supports 
this recitation. Applicants, as stated above, respectfully submit the Examiner is 
misrepresenting the priority document (Brief Attachment AE) which refers throughout 
and, in particular, in the Abstract to "the general formula RE 2 -xAE x EM.0 4 .y as stated 
above which includes a copper-oxide as stated above. The Examiner further states in 
the passage quoted above "but basis is not seen for the more general limitation of 'a 
copper-oxide compound' with a rare-earth (like) element and in alkaline earth element." 
It is noted that in the priority document (Brief Attachment AE), claim 2 refers to 
lanthanum as the rare earth; claim 3 refers to cerium as the rare earth; claim 5 refers to 
barium (an alkaline earth element) as a partial substitute for the rare earth; claim 6 
refers to calcium (an alkaline earth element) as a partial substitute for the rare earth; 
claim 7 refers to strontium (an alkaline earth element) as a partial substitute for the 
rare earth and claim 9 refers to neodymium as the rare earth. Clearly, the priority 
document teaches barium, calcium and strontium (alkaline earth elements). 



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Consequently, the priority document supports the term rare earth-like since in includes 
elements (e.g. barium, calcium and strontium) other than those commonly referred to as 
the rare earth elements (which are elements 21, 39, 57-71 and 89, see DST 
AFFIDAVITS If 23 Brief Attachments AM, AN and AO) which satisfy the teaching of the 
priority document and of the present application. The Abstract of the priority document 
refers to "AE as a member of the alkaline earth or a combination of at least two 
members of that group." Consequently, the priority document clearly supports an 
alkaline earth element. 

The Examiner further states at page 4 of OA 07/30/1 998: 

vi. The limitation as to "the effectively-zero-bulk-resistivity intercept 
temperature T p=0 , as found in claim 103 (lines 13, 6 and 17). The critical 
temperature, T c , is discussed throughout that certified priority document, 
but not Tp=0. 

Applicants respectfully disagree. T p=0 is the temperature at which the bulk 
resistively is about zero. T c is the critical temperature or the temperature above which 
superconductivity does not exist. The priority document (Brief Attachment AE) refers 
to Applicants' article (Brief Attachment AX) of which Figures 1 ,2 and 3 are the same 
figures as Figures 2, 3 and 4 of the present application. At page 22, lines 19-24, the 
present specification refers to Figure 4 of the specification stating "[i]ts resistivety 
decreases by at least three orders of magnitude, giving evidence for the bulk being 
superconducting below 13 K with an onset around 35 K, as shown in FIG. 4 on an 
expanded scale." When a superconductor is totally superconductive the resistivety, p, 
is zero. The temperature at which this occurs is T p=0 . Applicants' article (Brief 
Attachment AX), (and thus the priority document (Brief Attachment AE)), at page 191 , 
right column, in referring to Fig. 1 thereof states "[u]pon cooling from room temperature, 
the latter exhibit a nearly linear metallic decrease of p(T) then a logarithmic type of 
increase, before undergoing the transition to superconductivity." And in the sentence 
bridging pages 191-192 of applicants' article (Brief Attachment AX) "[therefore, under 
the above premises, the peak in p(T) at 35 K, observed ... has to be identified as the 
start to superconductive cooperative phenomena." And applicants' article at page 192, 



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left column, states "[u]pon cooling below T c ... the bulk resistively gradually drops to 
zero by three orders of magnitude, for sample 2 (Fig. 1 )" From these statements in 
Applicants article (Brief Attachment AX) (which is referred to in the priority document) it 
is clear that the language objected to by the Examiner is supported in the priority 
document. 

For the reason given above the priority document clearly supports the term "T p=0 ". 
Although this particular symbol is not used in the priority document, the priority 
document clearly shows that as temperature is decreased the resistively of a 
superconductor begins to drop in the value at the critical temperature T c and goes to 
zero at another temperature, that is T p=0 . This symbol is just a short hand notation for 
that temperature. This property of superconducting materials is well known prior to 
applicants filing date, in fact that is what is meant by the term superconductor which is a 
material for which p=0 for temperatures less than a certain temperature, i.e., T p=0 . It is 
also well-known that: "[i]n the ideal case the resistance vanishes completely and 
discontinuously at a transition temperature. Ts ... Actually, the resistance temperature 
curve does fall more sharply the more the specimen is like a single crystal ... [T]he drop 
always occurs in a measurable temperature range ..." (Theory of Superconductivity, M. 
von Laue, Academic Press, Inc., 1952, first page of Chapter 1) (See Brief Attachment 
AD). Moreover, the priority document at column 1 , the first sentence of the Background 
of the Invention states "[sjuperconductivity is usually defined as the complete loss of 
electrical resistance of a material at a well defined temperature". That temperature is 
symbolically represented as T p=0 . 

Applicants respectfully disagree with the Examiner's position on Applicants' claim 
of priority. The field of the invention of the priority document (Brief Attachment AE) is "a 
new class of superconductors in particular components ..." and the title is "New 
Superconductive Compounds Applicants' article (Brief Attachment AX) which is 
referred to in the priority document states at page 190, left Col., lines 14-16 from the 
bottom "X-ray powder diffractograms ... revealed three individual crystallographic 
phases." In the conclusion at page 192 applicants' article (Brief Attachment AX) states 



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"[t]he system consists of three phases, one of them having a metallic perovskite-type 
layer-like structure. The characterization of the new, apparently superconducting, 
phase is in progress." Thus the priority document supports the limitation "a composition 
exhibiting a superconductive state". The general formula RE 2 -xAExTM.04- y x<0.3 0.1 < 
y < 0.5 and the more specific formula RE 2 TM.0 4 of the priority document (Brief 
Attachment AE) is a composition, a ceramic, an oxide, a metal oxide and a transition 
metal oxide as recited in Applicants' claims. As noted above, the Examiner incorrectly 
implies that the priority document is limited to compounds having the formula 
RE2TM.O4. 

The Examiner has provided no rebuttal to Applicants' reasons for why a person 
of ordinary skill in the art would not recognize that Applicants' were in possession of the 
inventions of Applicants' claims on appeal from the teaching of Applicants' priority 
document. For this reason the Board should reverse the Examiner's denial of 
Applicants' claim of priority to the priority document (Brief Attachment AE) or in the 
alternative Applicants request the Board to formally note in the record that Applicants' 
claim of priority will not be ruled on since Applicants' claim of priority does not have to 
be decided to resolve the issues of this appeal. 

In view of the above argument Applicants request that the claim of priority to the 
priority document be granted. 



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Detailed Argument to Support the Enablement of the Applicants' Claims. 



Claims 1-64, 66-72, 84, 85, 88-96, 100-102, 109-1 12, 1 15-122, 126-134, 139, 141-143, 

146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 198-212, 217-219, 222, 223, 

227-230, 232-234, 237-240, 244-246, 253-257, 268, 273-275, 278, 279, 283-286, 289- 

295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 337-345, 347-357, 359-374, 376, 

379, 380, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421-424, 426-501 , 508-510 

and 515-543 (As stated in the Advisory Action dated 1 1-28-2007) have been rejected 

under 35 U.S.C. 112, first paragraph. The Examiner states at page 4 of the Final Office 

Action that these claims have been rejected: 

"because the specification, while being enabling for compositions 
comprising a transition metal oxide containing at least a) an alkaline earth 
element or Group MA element and b) a rare-earth element or Group NIB 
element, does not reasonably provide enablement for the invention as 
claimed. The specification does not enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make the 
invention commensurate in scope with these claims." 

Applicants disagree with this statement. Applicants note, as explained below, the 
evidence submitted by the Examiner, the Schuller article, disagrees with this statement. 

The Examiner further states at page 4 of the Final Rejection "This rejection is 
maintained for the reasons set forth in the Rejection mailed 7/28/04 (pages 5-8)." The 
reasons for rejection in the Office Action dated 07/28/2004 (referred to herein as OA 
07/28/2004) will be addressed sequentially as they occur herein. 



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COMMENTS WITH RESPECT TO INCOPORATED 
OFFICE ACTION DATED 07/28/2004 



The Examiner states the same thing at page 5 of Office Action dated 07/28/2004: 

Claims 1-64, 66-72,84, 85, 88-96,100-102, 109-112, 115-122, 126-134, 
139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192-195, 
198-212, 217-219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253- 
257, 268, 273-275, 278, 279, 283-286, 289-295, 302, 303, 308-310, 313, 
314, 318-329, 331-334, 337-345, 347-357, 359-374, 376, 379, 380, 382, 
383, 389, 394, 395, 402, 407 and 408 are rejected under 35 U.S.C. 112, 
first paragraph, because the specification, while being enabling for 
compositions comprising a transition metal oxide containing at least a) an 
alkaline earth element or Group MA element and b) a rare-earth element or 
Group 1MB element, does not reasonably provide enablement for the 
invention as claimed. The specification does not enable any person skilled 
in the art to which it pertains, or with which it is most nearly connected, to 
make the invention commensurate in scope with these claims. 

Applicants respectfully disagree. The claims are directed to an apparatus or 
structure. The claims are not directed to a composition of matter as implied by the 
Examiner's statement. The Examiner provides no reasons for why the specification 
does not enable an apparatus or structure comprising an element having at T c ^ 26°K 
and conducting a superconductive current wherein the superconducting element is not 
limited to a transition metal oxide containing at least a) an alkaline earth element or 
Group MA element and b) a rare earth element or Group 1MB element. The Examiner 
has not given any reason to doubt that Applicants' claims are enabled. Thus the 
Examiner has not made a prima facie case of lack of enablement. 



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

The present specification is deemed to be enabled only for compositions 
comprising a transition metal oxide containing at least a) an alkaline earth 
element and b) a rare-earth element or Group 1MB element. The art of 
high temperature (above 30K) superconductors is an extremely 
unpredictable one. Small changes in composition can result in dramatic 
changes in or loss of superconducting properties. The amount and type of 
examples necessary to support broad claims increases as the 
predictability of the art decreases. 2 Claims broad enough to cover a large 
number of compositions that do not exhibit the desired properties fail to 



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satisfy the requirements of 35 U.S.C. 1 1 2. 3 Merely reciting a desired 
result does not overcome this failure. 4 In particular, the question arises: 
will any layered perovskite material exhibit superconductivity? 

The Examiner has repeated grounds for rejection that Applicants have rebutted 
in responses prior to OA 07/28/2004. The Examiner has not stated why Applicants' 
prior rebuttal does not overcome these grounds for rejection. Applicants previously 
state reasons for why Applicants' claims were enabled are restated herein. 

Initially, an art is unpredictable not because a skilled artisan does not know in 
advance what will have the desired properties, but is unpredictable when the method of 
making is not sufficiently understood so that it is unknown how to make species without 
undue experimentation - experimentation beyond that of the skilled artisan. This is 
independent of the presence or absence of a theory, i.e., theory which does not provide 
knowledge of how to make and how to practice such species. 

A large number of examples are needed to support a broad claim in an 
unpredictable art only if a person of skill in the art has to engage in undue 
experimentation to determine embodiments not specifically recited in Applicants' 
teachings that come within the scope of Applicants' claims. It is the Examiner's burden 
to show that undue experimentation is necessary. The Examiner has presented no 
extrinsic or intrinsic evidence that a person of skill in the art would have to engage in 
undue experimentation which is the Examiner's burden to show. The Examiner has 
stated without support that the art of high temperative superconductivity is an extremely 
unpredictable one. Thus the Examiner has not made a prima facie showing that the art 
of high Tc superconductivity is unpredictable. An art is unpredictable when species 
within the scope of the claim can not be determined without undue experimentation. 
Applicants disagree that the art of high T c superconducting is "unpredictable" within the 
meaning of U.S. Patent law as will be explained below. As stated by the Examiner 
"[tjhat small changes in the composition can result in dramatic changes in or loss of 
superconducting properties" is not evidence of unpredictability. To the contrary, that 
compositions can be made and tested is evidence of enablement. As stated by the 



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CAFC in Rexnord v. Laitram supra enablement does not require forseeability. 
Applicants have not merely stated a desired result as clearly shown by the five affidavits 
submitted by five experts in the field (Mitzi, Tsuei, Dinger, Duncombe and Shaw - Brief 
Attachments AH to AO), the Poole 1988 book (Brief Attachment AF and AW), the Poole 
1995 book (Brief Attachment W), the Poole 1996 book (Brief Attachment AG), and the 
Rao article (Brief Attachment AB) and the list of known high T c superconductors Brief 
Attachment AC. And it is not necessary for any layered perovskite to work to satisfy 35 
USC 112, first paragraph. It is only necessary that they can be determined without 
undue experimentation. Moreover, Applicants' claims include only those which work 
and exclude those which do not work. 

The Examiner restate in OA 07/25/2004 without support that "It should be noted 
that at the time the invention was made, the theoretical mechanism of superconductivity 
in these materials was not well understood. That mechanism still is not understood." 
Applicants note that the basic theory of superconductivity has been understood for 
some time. For example, the book by Von Laue entitled "Superconductivity", published 
in English in 1952, presents a comprehensive theory of superconductivity. The entire 
text of this book is included in Brief Attachment AT. Notwithstanding, for a claim to be 
enabled under section 112, it does not require an understanding of the theory. The 
Examiner then conclusory states "Accordingly, there appears to be little factual or 
theoretical basis for extending the scope of the claims much beyond the proportions and 
materials actually demonstrated to exhibit high temperature superconductivity". This 
statement is clearly inconsistent with In re Angstadt 190 USPQ 219 and In re Wands 8 
USPQ2d 1400 (both discussed below) which held that to satisfy the first paragraph of 
35 USC 1 12 it is only necessary that a person of skill in the art not exercise undue 
experimentation to make samples that come within the scope of the Applicants' claims. 
These decisions do not require that theory of the claimed invention be well understood 
for an applicant's claims to be enabled. The Examiner cites no authority to support the 
Examiner's position. Throughout the prosecution of the present Application and the 
Ancestral Applications Applicants have clearly shown that only routine experimentation 



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is needed to fabricate samples to practice Applicants' claimed invention. This will be 
reviewed below. The Examiner has not denied, nor rebutted this. 

The Examiner provides no factual evidence to support the statement "[t]he art of 
high temperature (above 30 K) superconductors is an extremely unpredictable one." 
This is an opinion of the Examiner. As shown herein the basic theory of 
Superconductivity has been known since at least 1952 as indicated in the book by von 
Laue "Theory of Superconductivity" (Brief Attachment AT). The Board should reverse 
the rejection. One aspect of Applicants' teaching is that controlling the amount of the 
constituents of the composition, such as, for example, the oxygen content, effect the 
superconductive properties of the composition. It is a matter of routine experimentation 
to find the optimum constituents, such as oxygen content, for a particular high T c 
superconducting composition. Applicants do not have to provide experimental results 
for every composition that fall within the scope of their claims when a person of skill in 
the art exercising routine experimentation has a reasonable expectation of success 
following Applicants' teaching to achieve a composition through which can be flowed a 
superconducting current according to the teaching of Applicants' specification. The 
Examiner cites no authority stating that empirical searching for species within the scope 
of Applicants' claims fails the enablement requirement. 

At page 6 of the Office Action dated 07/28/2004 the Examiner refers to In re 
Angstadt. According to In re Angstadt 190 USPQ 214, 218 (CCPA 1976) in an 
unpredictable art, §112 does not require disclosure of a test with every species covered 
by a claim. The CCPA states: 

To require such a complete disclosure would apparently necessitate a 
patent application or applications with "thousands" of examples or the 
disclosure of "thousands" of catalysts along with information as to whether 
each exhibits catalytic behavior resulting in the production of 
hydroperoxides. More importantly, such a requirement would force an 
inventor seeking adequate patent protection to carry out a prohibitive 
number of actual experiments. This would tend to discourage inventors 
from filing patent applications in an unpredictable area since the patent 
claims would have to be limited to those embodiments which are 



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expressly disclosed. A potential infringer could readily avoid "literal" 
infringement of such claims by merely finding another analogous catalyst 
complex which could be used in "forming hydroperoxides." (Emphasis 
Added) 

The Examiner provides no evidence or argument to support the application, to 
the present invention, of the Examiner's statement that "[t]he amount and type of 
examples necessary to support broad claims increases as the predictability of the art 
decreases to applicants' rejected claims." The Examiner has provided no argument or 
evidence that the predictability within the meaning of the U.S. patent law, of art of high 
T c superconductivity is low. The Examiner's statement that "[c]laims broad enough to 
cover a large number of compositions that do not exhibit the desired properties fail to 
satisfy the requirements of 35 USC 1 12." implies that Applicants' claims "cover a large 
number of compositions that do not exhibit the desired properties" of high T c 
superconductors. The Examiner has provided no argument or evidence to support the 
Examiner's implication. In fact, the claims do not cover any compositions that do not 
exhibit the desired properties of high T c superconductors. Applicants' claims only cover 
apparatus or structures comprising superconductors having T c ^ 26°K which carry a 
superconductive current. Applicants' claims are not composition of matter claims. 
Under In re. Angstadt supra, a patent application is not limited to claims covering 
embodiments expressly disclosed in their specification. 

The Board's attention is directed to the following comments from the specification 
at page 1, lines 5-10: 

"This invention relates to ... superconducting compositions including 
copper and/or transition metals." 

The specification further states at page 5, lines 2-9 that: 

It is another object of the present invention to provide novel 
superconductive materials that are multi-valent oxides including transition 
metals, the compositions having a perovskite-like structure. 

It is a further object of the present invention to provide novel 
superconductive compositions that are oxides including rare earth and/or 



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rare earth-like atoms, together with copper or other transition metals that 
can exhibit mixed valent behavior. 

The title of the application is directed to super-conductive compositions. 

The specification further states at page 8, lines 1-11, that "[A]n example of a 
superconductive composition having high T c is the composition represented by the 
formula RE-TM-O, where RE is a rare earth or rare earth-like element, TM is a 
nonmagnetic transition metal, and O is oxygen. Examples of transition metal elements 
include Cu, Ni, Cr etc. In particular, transition metals that can exhibit multi-valent states 
are very suitable. The rare earth elements are typically elements 58-71 of the periodic 
table, including Ce, Nd, etc. If an alkaline earth element (AE) were also present, the 
composition would be represented by the general formula RE-AE-TM-O." 

And at page 7, lines 14-15, the specification states that "the rare earths site can 
also include alkaline earth elements." 

The specification further states at page 1 1 , lines 19-24, that "An example of a 
superconductive compound having a layer-type structure in accordance with the present 
invention is an oxide of the general composition RE 2 TM0 4 , where RE stands for the 
rare earths (lanthanides) or rare earth-like elements and TM stands for a transition 
metal." 

The composition RE 2 TM0 4 :RE is referred to at page 24, lines 5-9; RE2-xTM x 0 4 .y 
is referred to at page 25, lines 19-21 . 

The following specific compounds are recited in the application: 

Ba 4 La5-xCu 5 05(3-y) at page 10, lines 4, 10, 14. 
La 2 -xBa x Cu0 4 -y at page 12, line 13 
La2- x Ba x Ni0 4 - y at page 12, line 13 
La2- x Sn x Ni0 4 -y at page 12, line 17 
Ce 2 -xCu x Ni0 4 .y at page 12, line 19 
La 2 Cu0 4 at page 12, line 21 



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La 2 Cu0 4 - y with Sr 2x , Ba 2x and Ca 2x substitution at page 13, line 17 

La 2 -xSn x Cu04-y at page 17, line 21 

La 2 -xCa x Cu04-y at page 17, line 21 

La2- x Ba x Cu04- y at page 18, line 6 

La 2 Cu0 4 :Ba at page 18, line 15 

La 2 Cu0 4 :Ba at page 24, line 6 

Nd 2 Ni0 4 :Sn at page 24, line 9 

La 2 Cu0 4 - y doped with Sn 2x , Ca 2x and Ba 2x at page 25, lines 6-18 

Other compounds are given in the articles to B. Raveau, in Mat. Res. Bull., Vol. 

20 (1985) pp. 667-671 (Brief Attachment G), and to C. Michel et al. in Rev. Claim. Min. 

21 (1984) 407 (Brief Attachment H), both of which are incorporated by reference at 
page 13, lines 4-5 of the specification. 



These descriptions cited in Applicant's specification are examples of the general 
and specific mature of Applicant's teaching to support the enablement of their claims. 

In the footnote at page 6 of the Office Action dated 07/28/2004 the Examiner 
cites In re Fisher, 166 USPQ 18, In re Angstadt and Griffin, 150 USPO 214, and In re 
Colianni, 195 USPQ 150, in support of the statement "[t]he amount and type of 
examples necessary to support broad claims increases as the predictability of the art 
decreases". Applicant restates that the Examiner has not made a prima facie showing 
that the high Tc art is unpredictable. 



The claims under appeal In re Fisher are directed to increasing the potency of 
substances containing ACTH hormones for injection into human beings. In regards to 
the rejection for insufficient disclosure under 35 USC 1 12 the CCPA states that: 



"the issue thus presented is whether an inventor with the first to achieve 
potency of greater that 1 .0 for certain types of compositions, which 
potency was long desired because of its beneficial effects on humans, 
should be allowed to dominate all compositions having potencies greater 
1 .0, thus including future compositions having potencies in excess of 
those obtainable from his teachings plus ordinary skill." 166 USPQ 18, 
23-24 (emphasis in the original). 



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The Examiner has not shown that Applicants' claims include compositions "in 
excess of those obtainable from his teaching plus ordinary skill." Applicants 
documentary, declaration and affidavit evidence show that Applicants' claims do not 
include compositions "in excess of those obtainable from [Applicants'] teaching plus 
ordinary skill". Applicants' documentary, declaration and affidavit evidence has shown 
that example of high T c materials not specifically identified in Applicants' specification 
can be determined or made with routine experimentation and thus those examples are 
predictable from Applicants' teaching. Theoretical predictability orforseeability is not 
required or a mental recognition of a specific example is not required. The Examiner 
has cited no authority to the contrary. If an example is determined by routine 
experimentation it is within the scope of a claim under 35 USC 1 12. 



The CCPA goes on to say in In re Fisher that: 



" It is apparent that such an inventor should be allowed to dominate the 
future patentable inventions of others where those inventions were based 
in some way on his teachings. Such improvements, while unobvious from 
his teachings, are still within his contribution, since the improvement was 
made possible by his work . It is equally apparent, however, that he must 
not be committed to achieve this dominance by claims which are 
insufficiently supported and hence, not in compliance with the first 
paragraph of 35 USC 1 12. That paragraph requires that the scope of the 
claims must bear a reasonable correlation to the scope of enablement 
provided by the specification to persons of ordinary skills in the art... In 
cases involving unpredictable factors, such as most chemical reactions... 
the scope of enablement obviously varies inversely with the degree of 
unpredictability of the factors involved." (166 USPQ 18, 24) (Emphasis 
added) 

Applicants of the present invention have provided the first teaching that 
compositions, for example such as ceramics and more particularly metal oxides and 
transition metal oxides, can form a superconductor having a critical temperature greater 
than or equal to 26°K, therefore, it "is apparent that such an [applicant] should be 
allowed to dominate the future patentable inventions of others when those inventions 
[are] based in some way on [Applicants] teaching" as stated by the CCPA In re Fisher 
supra. All known high Tc superconductors are based on Applicants' teachings. The 



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Examiner has acknowledged this by rejection of all claims over the Asahi Shinbum 
article under 35 USC 103 as described in detail below. As stated by In re Fisher later 
discovered species that come within the scope of Applicants' claims can be not obvious 
in view of Applicants teaching and still be enabled by Applicants' teaching. Thus later 
discussed species do not have to be foreseeable from Applicants' teaching to be 
enabled by Applicants' teaching since they were enabled by Applicants' teaching. The 
Examiner has provided no rebuttal to this. 

In the present invention, Applicants are acknowledged to be the pioneers of high 
T c superconducting compositions, such as for example ceramic materials. The 
Examiner has produced no argument or evidence that inventions which come within the 
scope of Applicants' claim cannot be made by persons of skill in the art based on 
Applicants' teaching. The affidavits of Mitzi (Brief Attachment AH), Dinger (Brief 
Attachment AG), Tsuei (Brief Attachment AJ), Shaw (Brief Attachment AK), Duncombe 
(Brief Attachment AL) The DST AFFIDAVITS If 23 (Brief Attachments AM, AN and AO) 
and the book of Poole 1988 book (Brief Attachment AF and AW) it is straight forward 
to use the general principles of ceramic science to make high T c superconductors 
following Applicants' teaching. 



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APPLICABILITY OF IN RE FISHER 



In In re Fisher 166 USPQ 18 two claims (4 and 5) were under appeal. Claim 4 
was directed to "A method ... for producing ACTH [adrenocorticotrophic hormones] 
preparations having potencies ranging from 1 1 1 % to 230% of standard and containing 
no more than 0.08 units of vasopressin and no more than 0.05 units of oxytocin per 
International Unit of ACTH, which limits are said to be tolerable to humans." 166 USPQ 
18, 20. "The claim recites that the product must contain 'at least' 24 amino acids in a 
specified sequence." 166 USPQ 18, 21 . To avoid a reference to Li, having a 
publication date prior to the filing date, the appellant relied on its parent application of 
which the application under appeal was a continuation-in-part. The CCPA states: 

Appellant's parent application, therefore, discloses no products, 
inherently or expressly, containing other than 39 amino acids, yet the 
claim includes all polypeptides, of the recited potency and purity, having 
at least 24 amino acids in the chain in the recited sequence. The parent 
specification does not enable one skilled in the art to make or obtain 
ACTH's with other than 39 amino acids in the chain, and there has 
been no showing that one of ordinary skill would have known how to 
make or obtain such other ACTH's without undue experimentation. As 
for appellant's conclusion that the 25th to 39th acids in the chain are 
unnecessary, it is one thing to make such a statement when persons 
skilled in the art are able to make or obtain ACTH having other than 39 
amino acids; it is quite another thing when they are not able to do so. 
In the latter situation, the statement is in no way "enabling" and hence 
lends no further support for the broad claim. We conclude that 
appellant's parent application is insufficient to support a claim as broad 
as claim 4. For this reason we affirm the board's rejection of claim 4 as 
unpatentable over the Li references. 

From this statement, it is clear that the reason for why the CCPA did not find the claims 
under appeal patentable was that the applicant did not teach how to make ACTH with 
anything but 39 amino acids and there was no evidence in the record that a person of 
skill in the art knew how to make ACTH with anything but 39 amino acids. It is also 
clear that if persons of skill in the art knew how to make ACTH with more or less than 39 
amino acids, the claims would not have been found not enabled. 

In regard to the rejection of Fisher claims 4 and 5 for lack of enablement the 
CCPA states: 



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We have already discussed, with respect to the parent application, the 
lack of teaching of how to obtain other-than-39 amino acid ACTHs. 
That discussion is fully applicable to the instant application, and we 
think the board was correct in finding insufficient disclosure due to this 
broad aspect of the claims. 166 USPQ 18, 23. 

Thus the claims in Fisher were found not enabled because the Fisher application did not 
teach how to make "other-than-39 amino acid ACTHs" and there was no evidence in the 
record that persons of skill in the art knew how to make "other-than 39 amino acid 
ACTHs." 

In regards to the rejection for enablement, the CCPA further states: 

The issue thus presented is whether an inventor who is the first to 
achieve a potency of greater than 1 .0 for certain types of compositions, 
which potency was long desired because of its beneficial effect on 
humans, should be allowed to dominate all such compositions having 
potencies greater than 1.0, including future compositions having 
potencies far in excess of those obtainable from his teachings plus 
ordinary skill. 166 USPQ 18, 23. 

Thus the CCPA rhetorically asks the question whether the first person to discover a 
composition having a potency greater than 1 where such potency is of significant value 
should be allowed a claim "including future compositions having potencies far in excess 
of those obtainable from his teachings plus ordinary skill." 

The CCPA answers this rhetorical question stating: 

It is apparent that such an inventor should be allowed to dominate the 
future patentable inventions of others where those inventions were 
based in some way on his teachings. 166 USPQ 18,24 

From this statement is clear that applicants such as the Applicants of the present 
invention "should be allowed to dominate the future patentable inventions of others 
where those inventions were based in some way on his teachings." In the present 
application it is undisputed that the high Tc materials discovered by others after 
Applicants' discovery "were based in some way on [Applicants'] teachings." 



The CCPA further states in In re Fisher in regards to later inventions of other: 



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Such improvements, while unobvious from his teachings, are still within 
his contribution, since the improvement was made possible by his work. 
166 USPQ 12, 24 

Thus in the present application "while [the high Tc materials discovered by others after 
Applicants' discovery may be] unobvious form [Applicants'] teachings, [they] are still 
within [Applicants'] contribution, since the improvement was made possible by 
[Applicants'] work." Applicants respectfully submit that the Examiner agrees with this 
when the Examiner states at page 8 of the Final Action: 

Such is the basis of applicant's invention. 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 compositions. (Emphasis in the original.) 

The Examiner states here the that "The examiner does not deny ... 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, ... can make the known superconductive compositions." 
(Emphasis in the original.) Thus Applicants respectfully submit that it is the Examiner's 
finding of fact that the "known superconductive compositions" are " based in some way 
on [Applicants'] teachings" and thus under In re Fisher Applicants "should be allowed to 
dominate the future patentable inventions of others." 



At page 8 of the Final Action the Examiner further states: 

The numerous 1 .132 declarations, such as those of Mitzi, Shaw, 
Dinger and Duncombe, and the Rao article, are directed to production 
of know superconductive materials. 

The Affidavits of Mitzi, Shaw, Dinger and Duncombe (Brief Attachments AH, Al, AJ, AK 
and the Affidavit of Shaw dated April 14, 2005, the Affidavit of Dinger dated April 4, 



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2005 and the Affidavit of Tsuei dated April 4, 2005 (the last three affidavits are referred 

to herein as the DST AFFIDAVITS Brief Attachments AM, AN and AO)) state: 

Once a person of skill in the art knows of a specific type of composition 
described in the Bednorz-Mueller application which is superconducting at 
greater than or equal to 26°K, such a person of skill in the art, using the 
techniques described in the Bednorz-Mueller application, which includes 
all principles of ceramic fabrication known at the time the application was 
initially filed, can make the compositions encompassed by the claims of 
the Bednorz-Mueller application, without undue experimentation or without 
requiring ingenuity beyond that expected of a person of skill in the art of 
the fabrication of ceramic materials. This is why the work of Bednorz and 
Mueller was reproduced so quickly after their discovery and why so much 
additional work was done in this field within a short period after their 
discovery. 

See paragraph 8 of the DST Affidavits. 

Thus the Examiner agrees with Applicants' affiants. 

The Examiner further states at page 9 of the Final Action: 

What is not a "matter of routine experimentation" in this complex, 
unpredictable art is arriving at superconductive compositions outside 
the scope of the allowable claims (e.g., subsequently discovered 
BSCCO or Tl-systems as disclosed in Rao (see response filed 3/8/05, 
pages 141-143). 

Applicants respectfully disagree. Applicants believe that this statement is inconsistent 
with the Examiner's earlier statement above "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, 
... can make the known superconductive compositions." (Emphasis in the original.) 
Applicants respectfully submit that this statement of the Examiner is stating that within 
the meaning of the US patent law the art of high Tc material is predictable. Additional 
support for this view is below. Applicants believe what the Examiner is really saying, by 
replacing "matter of routine experimentation" with "obvious" and "unpredictable" with 
"predictable" is: 

What is not ..."[obvious]" in this complex, [predictable] art is arriving at 
superconductive compositions outside the scope of the allowable 



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claims (e.g., subsequently discovered BSCCO or Tl-systems as 
disclosed in Rao .... 

However, In re Fisher permits "[s]uch improvements, [which] while unobvious from 
[Applicants'] teachings, are still within [Applicants'] contribution, since the improvement 
was made possible by [Applicants'] work." Thus under In re Fisher Applicants are 
entitled to their generic claims even though later workers may have discovered 
unobvious species within the scope of Applicants' generic claims for which such later 
workers may be entitled to patent claims to such later discovered potentially unobvious 
species. That there may be potentially patentable unobvious species, not specifically 
identified by Applicants' teaching, does not mean, under In re Fisher, that Applicants 
have not fully enabled the genus that their claims cover. In re Fisher clearly permits an 
applicant to be allowed a generic claim covering species not explicitly taught that are 
not obvious patentable species within the scope of Applicants' claims. 

Stated in another way, In re Fisher permits a first discoverer of an invention to be 
allowed a generic claim if the first discoverer teaches how to "make and use" species 
that come within the scope of the generic claim. To be allowed the generic claim In re 
Fisher does not require the first discoverer to specifically teach or to suggest every 
species that comes within the scope of the generic claim or to provide a theory which 
can be used to "theoretically predict" species that come within the scope of the generic 
claim. If In re Fisher required such specific teaching, suggestion or "theoretical 
predictability," then it would not be possible, as In re Fisher states, "that such an 
inventor should be allowed to dominate the future patentable inventions of others where 
those inventions were based in some way on his teaching," because the future 
inventions of others would not be patentable since the earlier discoverer to be allowed 
the generic claim would have taught or suggested those future inventions or would have 
provided a theory to predict their existence and thus such future inventions would be 
anticipated or obvious in view of the earlier disclosure with the allowed genius claim. 
This is clearly not what In re Fisher stands for. 



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The Examiner further states at page 9 of the Final Action in regards to later 
discovered materials "[t]he examiner respectfully maintains that the instant disclosure 
has not provided sufficient guidance to produce such materials." Applicants respectfully 
submit that this statement is inconsistent with the Examiner's earlier statement above 
"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, ... can make the known superconductive 
compositions" (emphasis in the original.) In this statement the Examiner states that 
later discovered species are fabricated according to Applicants' teaching which means 
that Applicants' teaching has guidance on "how to make" the high Tc materials that 
come within the scope of Applicants' claims. Moreover, as described in detail in the 
prosecution of this application, the later discovered high Tc materials are consistent with 
the specific teaching of Applicants' original disclosure (see the DST AFFIDAVITS Brief 
Attachments AM, AN and AO). Thus Applicants' teaching has sufficient guidance to 
practice Applicants' claimed invention. Guidance is not predicting in advance what 
species will work, but is guidance on how to "make and use" the claimed invention as 
explicitly stated in 35 USC 112, paragraph one. As stated above, it is Applicants' 
understanding that the Examiner agrees that Applicants have taught how "to make and 
use" the claimed invention. 

That a patent applicant can be allowed a claim that dominates the latter discovered 
patentable invention of others means that the allowed claim includes within its scope the 
patentable invention of the later discover. For the later discovered invention to be 
patentable over the teaching of the earlier disclosure means that the earlier disclosure 
cannot teach or suggest the later discovered invention. Thus, In re Fisher clearly 
acknowledges that the earlier applicant is entitled to a generic claim that includes within 
its scope that which it does not specifically teach nor suggest, but which it teaches how 
"to make and use" which is the only requirement of 35 USC 112, first paragraph. The 
earlier Applicant is entitled to the generic claim since that applicant is not required by 35 
USC 112, first paragraph, to foresee all species that come within the scope of the 
generic claim. It is also a result of this rational that the lack of a theory, which can be 



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used to foresee such species is not fatal to enablement so long as the earlier applicant 
has taught "how to make and use." 



The Examiner further states at page 9 of the Final Action 

At page 125 of the response filed 1/31/05, applicant argues In re Fisher 
(166 USPQ 18] emphasizing "It is apparent that such an inventor 
should be allowed to dominate the future patentable inventions of 
others where those inventions were based in some way on his 
teachings". The examiner respectfully submits the remaining 
statements of Fisher are equally important: 

It is equally apparent, however, that he must not be permitted to achieve 
this dominance by claims which are insufficiently supported and hence, 
not in compliance with the first paragraph of 35 USC 112. That paragraph 
requires the scope of the claims must bear a reasonable correlation to the 
scope of enablement provided by the specification to persons of ordinary 
skill in the art... In cases involving unpredictable factors such as most chemical 
reactions... the scope of enablement obviously varies inversely with the 
degree of unpredictability of the factors involved. 



The Examiner's redacted quotation form In re Fisher excludes the underlined text 
below: 

It is equally apparent, however, that he must not be permitted to 
achieve this dominance by claims which are insufficiently supported 
and hence not in compliance with the first paragraph of 35 USC 
112. That paragraph requires that the scope of the claims must 
bear a reasonable correlation to the scope of enablement provided 
by the specification to persons of ordinary skill in the art. 
In cases involving predictable factors, such as mechanical or 
electrical elements, a single embodiment provides broad 
enablement in the sense that, once imagined, other embodiments 
can be made without difficulty and their performance characteristics 
predicted by resort to known scientific laws. In cases involving 
unpredictable factors, such as most chemical reactions and 
physiological activity, the scope of enablement obviously varies 
inversely with the degree of unpredictability of the factors involved. 
166 USPQ 18, 24 (CCPA 1970) (Emphasis added.) 

This passage does not state that mechanical and electrical elements are per se 
predictable and that chemical reactions are per se unpredictable. As stated by Poole 
1988 (Brief Attachments AF and AW) to make high Tc superconductors the chemical 



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reactions do not have to be understood. Thus that part of the passage above "In cases 

involving unpredictable factors, such as most chemical reactions ... the scope of 

enablement obviously varies inversely with the degree of unpredictability of the factors 

involved" is not applicable to the claims of the present application. The first part of the 

underlined text states "In cases involving predictable factors, such as mechanical or 

electrical elements, a single embodiment provides broad enablement in the sense that, 

once imagined, other embodiments can be made without difficulty." In view of the 

Examiners statement at page 8 of the Final Action:: 

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 
compositions. (Emphasis in the original.) 

the art of high Tc materials is not unpredictable since as stated by In re Fisher in a 
predictable art "a single embodiment provides broad enablement in the sense that, once 
imagined, other embodiments can be made without difficulty." In the passage quoted 
from the Examiner above the Examiner states "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... can make the known superconductive compositions" without difficulty. 
The underlined passage from In re Fisher quoted above further states "In cases 
involving predictable factors, ... other embodiments can be made without difficulty and 
their performance characteristics predicted by resort to known scientific laws." What is 
the meaning of "their performance characteristics predicted by resort to known scientific 
laws?" Does this language require a theory by the use of which "their performance 
characteristics [can be] predicted" or does "resort to known scientific laws" include 
within its meaning experimental testing? In In re Wands 858 F.2d 731, 742 (Fed. Cir. 
1988); 8 U.S.P.Q.2D 1400, 1408 Judge Newman concurring in part, dissenting in part 
provides an answer by stating that "[The inventor] must provide sufficient data or 
authority to show that his results are reasonably predictable within the scope of the 
claimed generic invention, based on experiment and/or scientific theory. " Thus 



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experiment or theory is sufficient to establish the "performance characteristics" referred 
to in In re Fisher and thereby predictability. The "performance characteristics" of the 
embodiments that can be made without difficulty according to the present application is 
whether that embodiment has a Tc greater than or equal to 26 K. A contrary result 
would not be logical. It would not be logical to state that a theory using theoretical 
calculations is permissible to establish predictability, but testing of an embodiment that 
can be made without difficulty is not sufficient to establish predictability. The Affidavit of 
Newns (Brief Attachment AP), discussed in detail below, compares the use of a theory 
in solid state science with experiment in solid state science. Dr. Newns refers to a 
theoretical computation in paragraphs 7 to 9 thereof as a "theoretical experiment." Dr. 
Newns states at paragraph 9 "Moreover, that a theoretical computation is a "theoretical 
experiment" is in the conceptual sense not different than a physical experiment." 
Applicants believe that Judge Newman's comment above acknowledges the effective 
equivalence of theory and experimental testing in regards to the statement form In re 
Fisher that "their performance characteristics [can be ] predicted by resort to known 
scientific laws." In regards to "embodiments [that] can be made without difficulty." 
Applicants believe that Judge Newman's comments means that experimental testing 
comes within the meaning of "resort to known scientific laws." Thus since the Examiner 
agrees that in view of Applicants' teaching other embodiments can be made without 
difficulty and since testing such embodiments for the presence of superconductivity is 
well know and routine, the art of high Tc superconductivity is predictable or 
determinable and thus enabled by Applicants' teaching. 

As described in detail above it is clear that the reason for why the CCPA in In re Fisher 
did not find the claims under appeal patentable was that the applicant did not teach how 
to make ACTH with anything but 39 amino acids and there was no evidence in the 
record that a person of skill in the art knew haw to make ACTH with anything but 39 
amino acids. The situation is different here. As stated above, it is Applicants' 
understanding that the Examiner's own finding of fact is that the "known 
superconductive compositions" are "based in some way on [applicants'] teachings." 
Moreover, the complex chemistry does not have to be understood to fabricate samples 



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as stated in the book "Copper Oxide Superconductors" by Charles P. Poole, et al. 

(Poole 1 988) (Brief Attachment AF and AW) (See If 48 of DST AFFIDAVITS Brief 

Attachments AM, AN and AO) 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 1988 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. 

Since skilled artisans can fabricate samples without knowing the "subtle physiochemical 
process involved" and without a detailed theory, this art is predictable. The statement 
from In re Fisher as quoted above that "[i] in cases involving unpredictable factors such 
as most chemical reactions" explicitly does not state that all chemical reactions are 
unpredictable. In fact, in the present invention, as stated by Poole 1988 (Brief 
Attachment AF and AW) quoted above, to make superconductors "requires little 
familiarity with the subtle physiochemical processes involved in the transformation of a 
mixture of compounds into a superconductor." This is one of the reasons for why Poole 
1988 also states, as quoted above, that the superconductors "are not difficult to 
synthesis" and for why Poole 1988 (Brief Attachment AF and AW) also states as 
quoted above "that this is at least partially responsible for the explosive worldwide 
growth in these materials" shortly after Applicants' discovery. Thus the facts of the 
instant application are different from the fact of In re Fisher where the claims were found 
not enabled because, as stated above, the CCPA found that the applicant there did not 
teach how to make "other-than-39 amino acid ACTHs" and there was no evidence in the 
record that persons of skill in the art knew how to make "other-than 39 amino acid 
ACTHs." Consequently, the invention of In re Fisher may have been one of those "most 
chemical reactions" that involve unpredictable factors, but in contradistinction, the 



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present invention is one of those chemically related applications that fall outside what 
the CCPA means by "most chemical reactions" since the present invention does not 
involve "unpredictable factors" since as stated by Poole 1988 the chemistry does not 
have to be understood to make the superconductors since the methods to make these 
superconductors are so well know. All that is needed is routine experimentation to 
fabricate samples. (See DST AFFIDAVITS Brief Attachments AM, AN and AO) There is 
no evidence to the contrary. Applicants respectfully submit that the Examiner has cited 
no evidence to the contrary and has presented no argument to the contrary. As stated 
above Applicants respectfully submit that the Examiner is viewing later discovered 
species that may be nonobvious in view of Applicants' teaching as a reason to find 
Applicants generic claims as being not enabled. As described above, Applicants 
respectfully submit that such a view is inconsistent with In re Fisher which clearly 
permits a finding that a generic claim is enabled even though there may be later 
discovered nonobvious species within its scope. When an Examiner allows a species 
claim to a later applicant as a nonobvious species, with unexpectedly better results, in 
view of a prior art patent that claims a genus which includes the latter discovered 
species, the Examiner is not, by allowing the claim to the latter discovered species, 
rendering the earlier claimed genus invalid for the lack of the earlier disclosure enabling 
the latter discovered patentable species. It is routine practice for an Examiner to allow a 
later discovered species with unexpected results in view of an earlier prior art patent 
that claims a genus that include such species where the newly discovered species is 
made in the same way as taught in the earlier disclosure. See MPEP sections 16.02, 
2144.08. 

On the same day that the CCPA decided In re Fisher, the CCPA decided In re 

Irani 166 USPQ 24. The issue in In re Irani was whether claims directed to a crystalline 

anhydrous form of a compound, ATMP, was obvious in view of prior art to a glassy 

form a ATMP. The CCPA stated at 166 USPQ 24, 26 

we are not convinced that the references of record would lead one of 
ordinary skill in the art to expect that ATMP would exist in a crystalline, 
anhydrous form or, assuming such an expectation, that the references 



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would render obvious a method by which such ATMP could be 
produced. 

The CCPA further stated at 1 66 USPQ 24, 27 

As stated above, even assuming that one skilled in the art could have 
predicted with reasonable certainty that crystalline anhydrous ATMP 
could be produced, we are not convinced by this record that it would 
also have been obvious how this could be achieved. We note that 
neither the examiner nor the board has contended that a suitable 
process would have been obvious. 

Thus it is clear from this quoted passage from In re Irani that 

[E]ven assuming that one skilled in the art could have [theoretically] 
predicted with reasonable certainty that [a compound] could be 
produced, we are not convinced by this record that it would also have 
been obvious how this could be achieved [that is, that there is how to 
"make and use" predictability of the compound.] 

Consequently, it is clear that "theoretical predictability" is not synonymous with "how to 
make and use" predictability. 35 USC 112, first paragraph requires "how-to-make-and- 
use predictability," but not "theoretical predictability." (See the Affidavit of News 
submitted 04/12/2006 which discusses in detail theoretical predictability). Thus even if 
at the time of Applicants' discovery species of high Tc superconductors could not be 
"theoretically predicted," this does not mean that Applicants have not taught how to 
"make and use" their claimed invention. As noted above the Examiner's statement that 
"The examiner does not deny ... 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, ... can make 
the known superconductive compositions" (Emphasis in the original.) acknowledges 
that Applicants have taught how to "make and use" their claimed invention. Thus the 
field of high Tc superconductivity is a predictable art subsequent to Applicants' 
discovery and based on Applicants' teaching. 

The CAFC in In re Wright 27 USPQ2d 1510(1 993) supports Applicants' view that 
a predictable art is one in which species within the scope of a claim under examination 
are determinable whether or not a theory of the invention is known as of the filing date 
of the application under examination. The claims under examination in In re Wright are 



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directed to a recombinant vaccine which confers immunity to chickens against a certain 

type of RNA tumor virus. These claims include in their scope vaccines against the AIDS 

virus. The CAFC states: 

Wright seeks allowance, however, of claims which would provide, in 
varying degrees, a much broader scope of protection than the 
allowed claims. 27 USPQ2d 150, 151 1 . 

The CAFC further states: 

The Examiner made reference to the difficulty that the scientific 
community is having in developing generally successful AIDS virus 
vaccines merely to illustrate that the art was not even today as 
predictable as Wright suggested it was back in 1983! 

No mention is made of the presence or absence of a theory. Thus In re Wright 
shows that an art is unpredictable when persons of skill in the art do not "know how to 
make" species that come within the scope of the claims and is predictable when people 
of skill in the art know how to make species within the scope of the claims based on the 
teaching of the application under examination. In contradistinction, as stated by Poole 
1988 (Brief Attachment AF and AW) species within the scope of Applicants' claims are 
easy to make based on the knowledge of a person of skill in the art with Applicants' 
teaching as of Applicants' filing date and thus the high Tc art is predictable or 
determinable. 

That some of the evidence that Applicants cite in support of their position that 
there claims are enabled, e.g., Poole 1988 (Brief Attachment AF and AW), Poole 1995 
(Brief Attachment W), Poole 1996 (Brief Attachment AG), the Rao Article (Brief 
Attachment AB), and the Schuller Article Brief Attachment AZ), were published after 
Applicants filing dated does not exclude them from being used to support enablement 
as of Applicants' earliest filing date. In In re Hogan 559 F.2d 595, 605 194 USPQ 527. 
(1977) the CCPA states "[t]his court has approved use of later publications [e.g., after 
the filing date] as evidence of the state of the art existing on the filing date of the 
application." 



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The CCPA in In re Hogan 194 U.S.P.Q. (BNA) 527 states that the later state of 

the art is useable neither to establish enablement nor to establish lack or 

enablement, but is usable to establish what the state of the state of the art was at 

the time of filing of a patent application. 

A later state of the art is that state coming into existence 
after the filing date of an application. This court has 
approved use of later publications as evidence of the state of 
art existing on the filing date of an application. That approval 
does not extend, however, to the use of a later ... publication 
disclosing a later ... existing state of the art in testing an 
earlier . . . application ... for compliance with § 1 1 2, first 
paragraph. The difference may be described as that 
between the permissible application of later knowledge 
about art-related facts existing on the filing date and the 
impermissible application of later knowledge about later art- 
related facts (here, amorphous polymers) which did not exist 
on the filing date. Thus, if appellants' 1953 application 
provided sufficient enablement, considering all available 
evidence (whenever that evidence became available) of the 
1953 state of the art, i.e., of the condition of knowledge 
about all art-related facts existing in 1953, then the fact of 
that enablement was established for all time and a later 
change in the state of the art cannot change it. 
In re Hogan, 559 F.2d 595, 605 (C.C.P.A. 1977) 194 
U.S.P.Q. (BNA) 527 



That a claim presented for examination is found after filing to read on work that was 

developed after the filing date is not usable to establish non-enablement as of the filing 

date. The CCPA states that there is a remedy for a claim that once issued may literally 

include an embodiment that is not enabled by the teaching of the disclosure of the 

application containing the claim, that is the reverse doctrine of equivalents. In this 

regard the CCPA states: 

The PTO position, that claim 13 is of sufficient breadth to 
cover the later state of the art (amorphous polymers) shown in 
the "references," reflects a concern that allowance of claim 13 
might lead to enforcement efforts against the later developers. 
Any such conjecture, if it exists, is both irrelevant and 
unwarranted. The business of the PTO is patentability, not 
infringement. Like the judicially-developed doctrine of 
equivalents, designed to protect the patentee with respect to 



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later-developed variations of the claimed invention, the 
judicially-developed "reverse doctrine of equivalents," 
requiring interpretation of claims in light of the specification, 
may be safely relied upon to preclude improper enforcement 
against later developers. The courts have consistently 
considered subsequently existing states of the art as raising 
questions of infringement, but never of validity. It is, of course, 
a major and infinitely important function of the PTO to insure 
that those skilled in the art are enabled, as of the filing date, to 
practice the invention claimed. If, in the light of all proper 
evidence, the invention claimed be clearly enabled as of that 
date, the inquiry under § 1 12, first paragraph, is at an end. 
In re Hogan, 559 F.2d 595, 607 (C.C.P.A. 1977) 194 U.S.P.Q. 
(BNA) 527 

It is clear from In re Hogan that "If, in the light of all proper evidence, the invention 
claimed be clearly enabled as of [the Applicants' earliest filing] date, the inquiry under § 
112, first paragraph, is at an end." There is no evidence in this record that as of 
Applicants' discovery, Applicants' invention is not enabled. 



The CAFC in In re Wright citing In re Hogan states: 

We note, however, that the issue is not what the state of the art is 
today or what a skilled artisan today would believe, but rather what 
the state of the art was [as of applicants' filing date] and what a 
skilled artisan would have believed at that time. Hybritech Inc. v. 
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 
94 (Fed. Cir.), cert denied, 480 U.S. 947 (1987); In re Hogan, 559 
F.2d 595, 604, 194 USPQ 527, 535 (CCPA 1977). Wright's 
tendency to employ the present tense often makes it difficult to 
determine whether Wright is asserting that certain information was 
known prior to February of 1983 or simply that that information is 
now known in the art. 

In re Wright, 999 F.2d 1557, 1563 (Fed. Cir. 1993), 27 USPQ1511, 
1414 footnote 8. 

There is no evidence in the record that a skilled artisan, once they became aware of 
Applicants' discovery, could not make other species that came within the scope of 
Applicants' claims with what was know to such artisans prior to Applicants' discovery. 
The DST AFFIDAVITS (Brief Attachments AM to AO) and affidavits of Brief Attachments 
AH to AL identify what was known to such artisans many years before Applicants' 
discovery that such artisans would use as of Applicants' discovery with Applicants' 



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teaching to make such other species. Applicants believe that the Examiner concurs in 

this when the Examiner states at page 8 of the Final Action: 

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 compositions. The numerous 1 .132 
declarations, such as those of Mitzi, Shaw, Dinger and 
Duncombe, and the Rao article, are directed to production of 
know superconductive materials. (Emphasis in the original) 

In In re Wands 858 F.2d 731, 742 (Fed. Cir. 1988); 8 U.S.P.Q.2D 1400 the 
CAFC stated in a concurring opinion "[The inventor] must provide sufficient data or 
authority to show that his results are reasonably predictable within the scope of the 
claimed generic invention, based on experiment and/or scientific theory. " Thus 
experiment or theory is sufficient to establish predictability. And as stated above by the 
Examiner "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." There is no 
requirement to know in advance all examples enabled by their teaching. Thus the field 
of High Tc superconductivity is predictable within the meaning of In re Wands. 



The Examiner's reference to "subsequently discovered BSCCO or Tl-systems" 

suggests that it is the Examiner's view that for Applicants to be allowed a generic claim, 

Applicants must know in advance (foresee) all materials that can be used to practice 

Applicant's claims. The CAFC has stated in Sri Int'l v. Matsushita Elec. Corp., 775 F.2d 

1107, 1121 (Fed. Cir. 1985); 227 USPQ 577, 586 that this is not necessary: 

The law does not require the impossible. Hence, it does not require 
that an applicant describe in his specification every conceivable and 
possible future embodiment of his invention. The law recognizes that 
patent specifications are written for those skilled in the art, and 
requires only that the inventor describe the "best mode" known at the 
time to him of making and using the invention. 35 U.S.C. § 1 12. 



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Applicants have shown that persons of ordinary skill in the art as of Applicants' 
discovery can practice applicant's claims to their full scope and the Examiner has, in 
Applicants' view as stated above, agreed with this. The DST AFFIDAVITS, as 
described in detail below, (Brief Attachments AM, AN and AO) describe in detail what 
persons of skill in the art knew prior to Applicants' discovery and how that knowledge 
together with Applicants' teaching lead others to discover other species within the scope 
of Applicants' claims. 

The CAFC has further stated: 

An applicant for patent is required to disclose the best mode then 
known to him for practicing his invention. 35 U.S.C. § 112. He is not 
required to predict all future developments which enable the practice of 
his invention in substantially the same way. " Hughes Aircraft Co. v. 
United States, 717 F.2d 1351, 1362 (Fed. Cir. 1983);39 USPQ2d 1065. 

This is exactly what applicants have done. Thus Applicant's claims are enabled. The 

CAFC further states in regards to future developments: 

Enablement does not require the inventor to foresee every means of 
implementing an invention at pains of losing his patent franchise. 
Were it otherwise, claimed inventions would not include improved 
modes of practicing those inventions. Such narrow patent rights would 
rapidly become worthless as new modes of practicing the invention 
developed, and the inventor would lose the benefit of the patent 
bargain. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1071 
(Fed. Cir. 2005). 

The Examiner's position in regards to the enablement of Applicants' claims is 
inconsistent with the CAFC's position that "Enablement does not require the inventor to 
foresee every means of implementing an invention." Thus Applicant's claims are 
enabled and Applicants respectfully request that the rejection for lack of enablement be 
withdrawn. 

The Examiner in the Final Action dated 10/20/ 2005 at page 4 refers to a article 
by Schuller et al. which states in the passage from Schuller et al. quoted by the 
Examiner "[o]f 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 empirical searches in the oxides gave rise to many 



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superconducting systems." See the Affidavit of Newns submitted 04/12/2006 H 18. The 
DST AFFIDAVITS (Brief Attachments AM, AN and AO) describe what a person of skill 
in the art knew prior to Applicants' discovery upon which the systematic empirical study 
was based in view of Applicant's teaching. The Affidavit of News shows how this 
systematic empirical study is in principal the same as a systematic theoretical 
investigation when a well developed theoretical formalism exists. Thus Applicant's 
claims are predictable within the meaning of 35 U.S.C. 1 1 2, first paragraph, and thus 
enabled. In the response submitted 01/28/2005 at pages 148-150 applicants applied 
the MPEP U 2164.01(a) Undue Experimentation Factors from In re Wands. Applicants 
respectfully request the Examiner to review and reconsider this analysis in the Answer 
Brief. 

The CCPA has stated in In re Marzzocchi 169 USPQ 367,369 (1971): 

the Patent and Trade-mark Office (PTO) bears the initial 
burden of providing reasons for doubting the objective truth of 
the statements made by appellants as to the scope of 
enablement. Only when the PTO meets this burden, does the 
burden shift to appellants to provide suitable evidence 
indicating that the specification is enabling in a manner 
commensurate in scope with the protection sought by the 
claims. 

The only reasons given by the Examiner to "[doubt] the objective truth of the statements 
made by [Applicants] as to the scope of enablement" is that there is no theory for high 
Tc superconductivity and that Applicants describe examples that do not show high Tc 
properties. Since this does not make out a prima facie case of lack of enablement, the 
burden has not shifted to Applicants. As stated above, in Applicants' view, the CCPA 
and the CAFC, have stated that "theoretical predictability" and knowledge in advance of 
all species that come within the scope of genus claims is not required under 35 USC 
112, first paragraph. All that 35 USC 112, first paragraph requires is "how-to-make-and- 
use predictability" which, as stated above, Applicants understand, from the Examiner's 
comments, that the Examiner agrees Applicants teaching provides. 



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In a presidential decision of the USPTO Board of Patent Appeals and Interferences, the 
Board states: 

The examiner notes that only a small group of species of the 
claimed genus have been prepared. However, the Examiner offers 
no reason why one skilled in the art could not "make" the claimed 
compounds. Ex parte Bhide 42 USPQ 1441, 1447. 



Consequently, the Board agrees with the statement of the CCPA in In re Marzocchi 
quoted above. As stated above, it is Applicants' understanding of the Examiner's 
comments that all know high Tc superconductors can be made following Applicants' 
teaching. Thus the Examiner "offers no reason why one skilled in the are could not 
"make the" species that come within the scope of Applicants' genus claims. 



In Ex parte Chen, an unpublished decision reported at 61 USPQ 1025, 1028, the Board 
of Patent Appeals and Interferences held claims to transgenic carp not unpatentable for 
lack of enablement stating: 

In responding to appellants' arguments, the examiner urges that 
the level of experimentation is undue and points to the success rate 
1 % or 20 out of 1 746 attempts for the integration of the gene into 
the embryos described in the specification, (Answer, pages 6 and 
14). However, the examiner offers no evidence which would 
reasonably support a conclusion that one skilled in this art would 
regard this rate of success for the integration of the rtGH gene as 
evidencing undue experimentation. We remind the examiner that 
some experimentation may be required as long as it is not undue. 
In re Vaeck 941 F.2d 488, 496, 20 USPQ2d 1438, 1445 (Fed. Cir. 
1991). Appellants' disclosure explicitly describes the methodology 
to be used to arrive at the claimed transgenic carp. As the record 
now stands, the numbers emphasized by the examiner would 
reasonably appear to reflect the need for a repetitive procedure, 
rather than un-due experimentation by those wishing to practice the 
invention. 



Notwithstanding that the specification in Ex parte Chen disclosed only a 1% success 
rate in the examples described in the specification, the Board found the claims enabled 



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since some experimentation may be needed to determine which examples work and 
which do not. The claims were found enabled since the experimentation was not 
undue. The need for a repetitive procedure to determine which examples have the 
desired result does not render the claims not enabled. That is, there was "how-to- 
make-and-use predictability" in the Ex parte Chen invention even though there 
appeared to have been no "theoretical predictability" and even though the Ex parte 
Chen applicant could not foresee in advance, predict in advance or specifically teach in 
advance of experimentation which species had the desired result. Thus, that 
Applicants' specification describes examples that either do not show a Tc greater than 
or equal to 7.26 K or examples that have phases with and without a Tc greater than or 
equal to 26 K does not mean that they have not enabled their genus claims. 
Consequently, when the Examiner states as quoted above that "[t]he examiner does not 
deny . . . 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, ... can make the known 
superconductive compositions" (Emphasis in the original.), the Examiner is 
acknowledging that persons of skill in the art knew how to make species that come 
within the scope of Applicants' genus claims. That the species within this genus which 
have the desired high Tc property may be determined experimentally and not by a 
theoretical means according to the Board's decision in Ex parte Chen, does not mean 
that Applicants genus claims are not enabled. The CCPA agrees with this when it 
states: 

What the dissent seem to be obsessed with is the thought of catalysts 
which won't work to produce the intended result. Applicants have enabled 
those in the art to see that this is a real possibility, which is commendable 
frankness in a disclosure. Without undue experimentation or effort or 
expense the combinations which do not work will readily be discovered 
and, of course, nobody will use them and the claims do not cover them. 
The dissent wants appellants to make everything predictable in advance, 
which is impracticable and unreasonable. In re Angstadt. 190 USPQ 214, 
219. 

From this it is clear that 35 U.S.C. 112, first paragraph, does not require everything to 
be predictable in advance and permits the determination of the combinations that will 
and will not work by experimentation that is not undue. 



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The USPTO Board of Patent Appeals and Interferences in Ex parte Jackson 217 
USPQ 804 (Bd. App. 1982) states at 217 USPQ 804, 806-807: 

The first paragraph of 35 U.S.C. 112 requires that the disclosure of an 
invention be "in such a full, clear, concise and exact terms as to enable 
any person skilled in the art to which it pertains or with which it is most 
nearly connected, to make and use the same ... Decisional law has 
interpreted the statutory requirement as dictating that sufficient information 
be given in the application so that one of ordinary skill in the art can 
practice the invention without undue experimentation. ... 

The determination of what constitutes undue experimentation in a give 
case requires the application of a standard or reasonableness, having due 
regard for the nature of the invention and the state of the art. ... 
The test is not merely quantitative, since a considerable amount of 
experimentation is permissible if it is merely routine, or if the specification 
in question provides a reasonable amount of guidance with respect to the 
direction in which the experimentation should proceed to enable the 
determination of how to practice a desired embodiment of the invention 
claimed. 



The Board states at 217 USPQ 806 "The issue squarely raised by [the] rejection 
[of claims] is whether or not a description of several newly discovered strains of bacteria 
having a particularly desirable metabolic property in terms of the conventionally 
measured culture characteristic and a number of metabolic and physiological properties 
would enable one of ordinary skill in the relevant art to independently discover additional 
strains having the same specific desirable metabolic property, i.e., the production of a 
particular antibiotic." Thus Applicants' respectfully submit that the Board in Ex parte 
Jackson would find a disclosure enabling that permits "one of ordinary skill in the 
relevant art to independently discover additional" high Tc materials that come within the 
scope of Applicants' generic claims, in particular in view of the Examiners' finding that 
"The examiner does not deny ... 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, ... can make 
the known superconductive compositions." (Emphasis in the original.) 



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The Board in Ex parte Jackson further states at 217 USPQ 808 "The problem of 
enablement of processes carried out by microorganisms were uniquely different from 
the field of chemistry generally. Thus, we are convinced that such recent cases as In re 
Angstadt 537 F.2d 498, 190 USPQ 214 (CCPA 1976) and In re Geerdes 491 F.2d 1260, 
180 USPQ 789 (CCPA 1974) are in apposite to this case." Therefore, since the present 
application is not directed to biotechnology or microorganism invention, the decision of 
Ex parte Jackson does not apply, but In re Angstadt and In re Geerdes do apply. 

Applicants note that the Board's decision, in Ex parte Jackson is that in 
determining whether there is enablement "a considerable amount of experimentation is 
permissible if it is merely routine, or if the specification in question provides a 
reasonable amount of guidance with respect to the direction in which the 
experimentation should proceed to enable the determination of how to practice a 
desired embodiment of the invention claimed." As stated above the Examiner agrees 
that the known high Tc superconductors can be made as described by Applicants. 
Thus Applicants have "provided guidance with respect to the direction in which the 
experimentation should proceed to enable the determination of how to practice a 
desired embodiment of the invention claimed." Moreover, as stated above in the 
section of this brief directed to the summary of the claimed invention Applicants provide 
direction in the properties that they found the High Tc superconductors possess. 
Persons of skill in the art would look for other species having these properties. 
Subsequent work has corroborated Applicants' teaching as reported in Poole 1988, 
Poole 1995, Poole 1996, the Rao Article and the Schuller Article as noted above and 
below (Brief Attachments AF, AW, W, AG, AB and AZ.) 

The Board in Ex parte Jackson further states at 217 USPQ 808 "The 
experimentation involved in the ordinary chemical case, including [In re Angstadt and In 
re Geerdes], usually arise in testing to establish whether a particular species within the 
generic claim language will be operable in the claimed process." As stated herein the 
method of "testing" to establish whether a particular species within the generic claim 
language will be superconductive with aT c > 26°K is well known prior to Applicants' 



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discovery. Also, the process for making the compositions is well known prior to the 

Applicants' discovery. 

Applicants have extensively discussed In re Angstadt 190 USPQ 214 in their 

response dated 01/28/2005 in response to office action dated 07/28/2004 titled 

"Amendment." According to In re Angstadt 190 USPQ 214, 218 in an unpredictable art, 

§112 does not require disclosure of a test with every species covered by a claim. As 

stated herein it is Applicants' position that the present application is not directed to an 

unpredictable art. The CCPA states: 

To require such a complete disclosure would apparently necessitate a 
patent application or applications with "thousands" of examples ... More 
importantly, such a requirement would force an inventor seeking adequate 
patent protection to carry out a prohibitive number of actual experiments. 
This would tend to discourage inventors from filing patent applications in 
an unpredictable area since the patent claims would have to be limited to 
those embodiments which are expressly disclosed. A potential infringer 
could readily avoid "literal" infringement of such claims by merely finding 
another analogous catalyst complex which could be used in "forming 
hydroperoxides." (Emphasis Added) 

Under In re. Angstadt, a patent application is not limited to claims covering 

embodiments expressly disclosed in their specification even in an unpredictable art. 

The CCPA In re Angstadt further states "[applicants] are not required to disclose every 

species encompassed by the claims even in an unpredictable art" 190 USPQ 214, 218. 

(Emphasis in the original). The CCPA further states that: 

"what is a maximum concern in the analysis of whether a particular claim 
is supported by the disclosure in an application, is whether the disclosure 
contains sufficient teaching regarding the subject matter of the claims as 
to enabled one of skill in the art to make and to use the claimed invention. 
These two requirements 'how to make' and 'how to use' have some times 
been referred to in combination as the 'enablement requirement'... The 
relevancy may be summed up as being whether the scope of enablement 
provided to one of ordinary skill in the art by the disclosure as such as to 
be commensurate with the scope or protection sought by the claims. (190 
USPQ 214,47 citing In re Moore 169 USPQ). 

The enablement requirement is "how to make" and "how to use" the claimed invention 
and does not include knowledge in advance of all species that come within the scope of 
the claim. "[C]ommensurate with the scope of protection sought by the claims" is "how 



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to make" and "how to use" the claimed invention which, as stated above, in Applicants' 
view the Examiner has acknowledged Applicants have satisfied the enablement 
requirement by the Examiner stating that "the examiner does not deny ... 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, ... can make the known superconductive 
compositions." (Emphasis in the original.) 

The Board in Ex parte Jackson cited In re Geerdes 180 USPQ 789. The Court in 
In re Geerdes at 180 USPQ 793 states in reversing a rejection of claims under 35 
U.S.C. 1 1 2, first paragraph, for lack of enablement "the area of technology involved 
here in not particularly complex and there is no evidence in the record to indicate that 
one of skill in the art would not be able to make and use the claimed invention." The 
area of technology involved in the present application in regard to making high T c 
materials was well known prior to Applicants' discovery and the Examiner agrees that 
known high Tc materials can be made according to Applicants' teaching. As noted in 
the DST AFFIDAVITS (Brief Attachments AM to AO) described in detail below the level 
of skill in the ceramic fabrication art is high. 

The Court in In re Geerdes further states at 180 USPQ 993 "The Board 
expressed concern that 'experimentation' is involved in the selection of proportions and 
particle sizes, but this is not determinative of the question of scope of enablement. It is 
only undue experimentation that is fatal." There is no evidence that undue 
experimentation is needed "to make" materials to practice Applicants' claims. The 
Examiner refers to none. 

The Court in In re Geerdes further states at 180 USPQ 793 "we cannot agree 
with the Board's determination that the claims are inclusive of materials which would not 
apparently be operative in the claimed process ... of course it is possible to argue that 
process claims encompass inoperative embodiments on the premise of unrealistic or 
vague assumptions, but that is not a valid basis for rejection." In the present application 



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the Examiner's basis for rejection of Applicants' claims is impermissibly premised on 
unrealistic or vague assumptions, such as examples cited by Applicant having a T c < 
26°K and statements such as the theory of high Tc Superconductivity is not understood. 
As noted above, whether or not there is a theory of high Tc superconductivity is not 
determinative of whether the art of high Tc superconductivity is "unpredictable." An art 
is unpredictable if "how to make and use" is not well understood. If the existence of a 
theory enhances an understanding of "how to make and use," the theory increases the 
level of "predictability" of the art. If persons of ordinary skill in the art know "how to 
make and use" the claims of the invention, the absence of a theory does not result in 
the art being unpredictable. 

That there may be later discovered species not specifically identified or 
suggested by Applicants' teaching may result in patents issued to the discovers of the 
later discovered species, but this does not mean that Applicants have not taught "how to 
make and use" such later discovered species even if there is no "theoretical 
predictability" so long as Applicants have taught how "to make and use," which 
Applicants assert they have done and for which it is Applicants' understanding of the 
Examiner's comments that this is also the Examiner's understanding. As stated above 
the Board, CCPA and the CAFC have held that experimental determination using 
known procedures even where such known procedures produce species that do not 
have the desired result satisfies the enablement requirement. For the reasons given 
herein, it is Applicants' position that under In re Fisher and the other decisions referred 
to herein Applicants' claims are enabled and Applicants respectfully request the 
Examiner to withdraw the rejection of Applicants' claims under 35 USC 112, first 
paragraph, for lack of enablement. 



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APPLICABILITY OF IN RE ANGSTADT 



The DST AFFIDAVITS (Brief Attachments AM, AN and AO) state: 

Once a person of skill in the art knows of a specific type of composition 
described in the Bednorz-Mueller application which is superconducting at 
greater than or equal to 26°K, such a person of skill in the art, using the 
techniques described in the Bednorz-Mueller application, which includes 
all principles of ceramic fabrication known at the time the application was 
initially filed, can make the compositions encompassed by the claims of 
the Bednorz-Mueller application, without undue experimentation or without 
requiring ingenuity beyond that expected of a person of skill in the art of 
the fabrication of ceramic materials. This is why the work of Bednorz and 
Mueller was reproduced so quickly after their discovery and why so much 
additional work was done in this field within a short period after their 
discovery. (See paragraph 8 of the DST Affidavits.) 

The affidavits of Shaw, Dinger, Tsuei, Mitzi and Duncombe of Brief Attachments 
AH, Al, AJ, AK and AL have a similar statement. 



In the paragraph at the bottom of page 15 of the specification, it is stated: in 
regard to compositions according to the present invention that "their manufacture 
generally follows the known principles of ceramic fabrication." Thereafter, an example 
of a typical manufacturing process is given. 



The CCPA In re Angstadt and Griffin further states that: 



we cannot agree with the Board that Appellants' disclosure is not sufficient 
to enable one of ordinary skill in the art to practice the invention without 
undue experimentation. We note that many chemical processes and 
catalytic processes particularly, are unpredictable, ... , and the scope of 
enablement varies inversely with the degree of unpredictability involved... 
The question, then, whether in an unpredictable art, section 112 requires 
the disclosure of a test with every species covered by a claim. To require 
such a complete disclosure will apparently necessitate a patent application 
or applications with 'thousands ' of examples... . More importantly, such a 
requirement would force an inventor to seek adequate patent protection to 
carry out a prohibited number of natural experiments. This would tend to 
discourage inventors in filing patent applications in an unpredictable area 
since the patent claim would have to be limited those embodiments which 



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are expressly disclosed. A potential infringer could readily avoid 
'infringement of such claims' by merely finding another analogous 
(example) which could be used 190 USPQ 124, 218. 

Thus Applicants do not have to specifically identify in the specification all species 
that come within the scope of their claims. 



The CCPA In re Angstadt further goes on to say 



having decided that appellants are not required to disclose every species 
encompassed by the claims even in an unpredictable art such as the 
present record presents, each case must be determined on its own facts. 
190 USPQ 214, 218. (emphasis in the original). 

In regards to the catalyst In re Angstadt and Griffin the CCPA further states: 



[s]ince appellants have supplied the list of catalysts and have taught how 
to make or how to use them, we believe that the experimentation required 
to determine which catalyst will produce hydroperoxide would not be undo 
and certainly would not 'require ingenuity beyond that to be expected of 
one of ordinary skill in the art'. 1 90 USPQ, 21 4, 21 8 in re Field v. 
Connover 170 USPQ, 276, 279 (1971). 

As stated in the affidavits of Dr. Dinger (Brief Attachment Al), Dr. Tsuei (Brief 
Attachment AJ), Dr. Shaw (Brief Attachment AK), Mr. Duncombe (Brief Attachment AL), 
Dr. Mitzi (Brief Attachment AH) and in the DST AFFIDAVITS (Brief Attachments AM, 
AN and AO) to make the high temperature superconductors encompassed by 
Applicants' claims, using the teaching of the present invention would not require 
ingenuity beyond that expected of one of ordinary skill in the art. This is unrebutted by 
the Examiner. 



The CCPA in In re Angstadt further states that: 



[T]he basic policy of the Patent Act, ... is to encourage disclosure of 
inventions and thereby to promote progress in the useful arts. To require 
disclosures in patent applications to transcend the level of knowledge of 



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those skilled in the art would stifle the disclosure of inventions in fields 
man understands imperfectly. 190 USPQ 214, 219. 

The CCPA further states that: 



[T]he certainty which the law requires in patents is not greater than is 
reasonable. 242 USPQ, 270-271 , cited in In re Angstadt. 190 USPQ 214, 
219. 



In re Angstadt further states at 190 USPQ 219: 



We note that the PTO has the burden of giving reasons, supported by the 
record as a whole, why the specification is not enabling. In re Armbruster, 
512 F.2d 676, 185 USPQ 152 (CCPA 1975). Showing that the disclosure 
entails undue experimentation is part of the PTO's initial burden under 
Armbruster; this court has never held that evidence of the necessity for 
any experimentation, however slight, is sufficient to require the applicant 
to prove that the type and amount of experimentation needed is not 
undue. 

By calling the claimed "invention" the "scope of protection sought" the 
dissent obscures the problem and frustrates the intended operation of the 
patent system. Depriving inventors of claims which adequately protect 
them and limiting them to claims which practically invite appropriation of 
the invention while avoiding infringement inevitably has the effect of 
suppressing disclosure. What the dissent seem to be obsessed with is the 
thought of catalysts which won't work to produce the intended result. 
Applicants have enabled those in the art to see that this is a real 
possibility, which is commendable frankness in a disclosure. Without 
undue experimentation or effort or expense the combinations which do not 
work will readily be discovered and, of course, nobody will use them and 
the claims do not cover them. The dissent wants appellants to make 
everything predictable in advance, which is impracticable and 
unreasonable. 

We hold that the evidence as a whole, including the inoperative as well as 
the operative examples, negates the PTO position that persons of ordinary 
skill in this art, given its unpredictability, must engage in undue 
experimentation to determine which complexes work. The key word is 
"undue," not "experimentation." 



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The passages quoted from the CCPA decision in In re Angstadt above provide 
the following eight factors: 

1 . The PTO has the burden of giving reasons why the specification is 
not enabling. 

2. Showing that a disclosure requires undue experimentation is the 
PTO's initial burden. 

3. That experimentation is needed to practice the claimed invention 
does not require the applicant to prove the experimentation needed is not 
undue. 

4. Depriving inventors of claims that adequately protect them invites 
others to practice their invention while avoiding infringement will suppress 
disclosure. 

5. When an applicant discloses compositions that are within the 
scope of the claims that will not work to practice the invention, this does 
not result in the claim being not enabled, but is commendable honesty on 
the part of the inventor. 

6. Examples that come within the scope of the claim that can be 
determined not to work without undue experimentation do not result in the 
claims not being enabled. 

7. Everything does not have to be made predictable in advance. 

8. To require everything to be made predictable in advance is 
impracticable and unreasonable. 

These factors will be referred to herein as In re Angstadt Factors 1 to 8. 

The only facts which the Examiner offers as evidence of unpredictability are 
examples provided in Applicants' specification. The CCPA in In re Angstadt says that 
this is "commendable frankness" which is not to be held against Applicants. The 
Examiner has provided no evidence that a person of skill in the art has to engage in 
undue experimentation to practice Applicants' non-allowed claims. The affidavits of 
Mitzi (Brief Attachment AH), Dinger (Brief Attachment Al), Tsuei (Brief Attachment AJ), 



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Shaw (Brief Attachment AK) and Duncombe (Brief Attachment AL), The DST 
AFFIDAVITS (Brief Attachments AM, AN and AO), Poole 1988 (Brief Attachment AF 
and AW) Poole 1995 (Brief Attachment W) and Pool 1996 (Brief Attachment AG) 
explicitly indicate that persons of skill in the art do not have to engage in undue 
experimentation to practice Applicants' invention. The Examiner has provided no 
rebuttal to this evidence. Moreover, that Applicants' specification describe making 
samples which when tested, did not show high T c superconductivity is not evidence of 
lack of enablement. If it were shown that these samples were in fact high T c 
superconductors and could not be made following Applicants' teaching plus what is 
known to persons of skill in the art without undue experimentation, this may be evidence 
of lack of enablement, but there is no such evidence in the record here. 

The Examiner cited In re Colianni 195 USPQ 150 which Applicants believe is not 
on point since in In re Colianni "[t]here is not a single specific example or embodiment 
by way of an illustration of how the claimed method is to be practiced." (195 USPQ 150, 
152). In contradistinction as noted above, there are numerous examples cited in 
Applicants' specification and incorporated references. Thus this decision is not on point. 

"Showing that the disclosure entails undue experimentation is part of the PTO's 
initial burden." In re Armbruster 185 USPQ 152, 504. The Examiner has not shown 
that undue experimentation is required to practice Applicants' claims to their full scope. 
Thus the Examiner has not made a prima facie showing of lack of enablement. 

"The practical approach followed consistently by [the CCPA] ... places the initial 
burden on the PTO to show that the enabling disclosure is not commensurate in scope 
with the claim. Upon such a showing, the burden of rebuttal shifts to Applicants". In re 
Coliani 195 USPQ 150. Notwithstanding that the Examiner has not satisfied this initial 
burden, Applicants have provided evidence to show that their claims are fully enabled 
even though the burden for such a showing has not shifted to them. 



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"However, [the CCPA] has made it clear that the Patent and Trademark Office 
must substantiate its rejections for lack of enablement with reasons" In re Armbruster 
185 USPQ 152, 153. The Examiner has merely asserted without support that "the art of 
high temperature superconductivity is unpredictable..." and noted that Applicants 
identify examples of compounds that do not have T c ^ 26°K. But examples that do not 
work that come within the scope of a claim does not result in the claim not being 
enabled. Moreover, there are no examples of superconductors that do not work that 
come within the scope of Applicants' claims. Applicants' claims by there construction 
only include within their scope superconductors that work. 



The CCPA in In re Marzocchi, 58 CCPA 1069, 439 F. 2d 220, 169 USPQ 367, 
369-370 (1971) states: 



The only relevant concern of the Patent Office under these circumstances 
should be over the truth of any such assertion. The first paragraph of 
§112 requires nothing more than objective enablement. How such a 
teaching is set forth, either by the use of illustrative examples or by broad 
terminology, is of no importance. 

As a matter of Patent Office practice, then, a specification disclosure 
which contains a teaching of the manner and process of making and using 
the invention in terms which correspond in scope to those used in 
describing and defining the subject matter sought to be patented must be 
taken as in compliance with the enabling requirement of the first 
paragraph of §1 12 unless there is reason to doubt the objective truth of 
the statements contained therein which must be relied on for enabling 
support. Assuming that sufficient reason for such doubt does exist, a 
rejection for failure to teach how to make and/or use will be proper on that 
basis; such a rejection can be overcome by suitable proofs indicating that 
the teaching contained in the specification is truly enabling... 

[I]t is incumbent upon the Patent Office, whenever a rejection on this basis 
is made, to explain why it doubts the truth or accuracy of any statement in 
a supporting disclosure and to back up assertions of its own with 
acceptable evidence or reasoning which is inconsistent with the contested 
statement. Otherwise, there would be no need for the applicant to go to 
the trouble and expense of supporting his presumptively accurate 
disclosure. [Emphasis in original footnote deleted]. 



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Applicants have submitted affidavits of Dr. Mitzi, Dr. Tsuei, Dr. Shaw, Mr. 
Duncombe and Dr. Dinger (Brief Attachment AH, Al, AJ, AK) and the DST AFFIDAVITS 
(Brief Attachments AM, AN and AO) under 37 CFR 132 which state, as quoted above, 
that once a person of skill in the art knows of Applicants' work, the compositions 
encompassed by the claims under experimentation, can be made using the teaching of 
Applicants without undue experimentation thereby rebutting the Examiner's statement 
that: 

"[the specification ... [fails] to provide an enabling disclosure 
commensurate with the scope of the claims." 

The Examiner has provided no example of a composition that comes within the 
scope of Applicants' claims that will work and that cannot be make following Applicants' 
teaching as of Applicants earliest filing date as required by In re Wright supra 27 
USPQ2d 1510, footnote 8 at page 1514, cites In re Hogan supra 194 USPQ 527, 533 
(CCCPA 1977). 

At page 6 of the Office Action of 07/28/2004 in footnote 3 the Examiner cites In re 
Cook 169 USPQ 298, 302 and Cosden Oil v. American Hoechst 214 USPQ 244, 262 to 
support the statement "[c]laims broad enough to cover a large number of compositions 
that do not exhibit the desired properties fail to satisfy the requirement of 35 USC 112." 
The quoted language is from Cosden Oil v. American Hoechst which is directed to 
claims to compositions of matter. The present claims are not directed to compositions 
of matter. Applicants' claims do not read on any inoperative species since Applicants' 
claims are apparatus of use claims. A composition which does not have a T c ^ 26 K is 
not within the scope of the claims. Applicants note that Cosden Oil v. American 
Hoechst is a distinct court decision decided in 1982 and has not been cited to or 
followed by the CAFC in the more than 26 years since this decision. The USPTO Board 
of Patent Appeals and Interferences refers to Cosden Oil v. American Hoechst in Ex 
parte Westphal 26 USPQ 1 858, 1 860 and Nashef v. Pollack USPQ 1 631 , 1 634 but for 
reasons different from the reason that the Examiner has cited in this case. Thus these 



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decisions are not on point. Moreover, such examples are not evidence of lack of 
enablement according to In re Angstadt. (Factors 5 and 6 above) 

At page 7 of the Office Action of 07/28/2004 in footnote 4 the Examiner cites In re 
Corkill 226 USPQ 1005, 1009 as support for this statement "[m]erely reciting a desired 
result does not overcome this failure". In sustaining a rejection for indefiniteness the 
CAFC held "[c]laims which include a substantial measure of inoperatives ... are fairly 
rejected under 35 USC 112 second paragraph." Thus In re Corkill holds claims 
indefinite under 35 USC 112, second paragraph, when the "claims do not correspond in 
scope to what they regard as their invention." The Examiner has cited In re Corkill for a 
rejection under 35 USC 112, first paragraph, to which it does not apply. Applicants' 
claims include no inoperatives and thus are not indefinite under In re Corkill. Since 
Applicants' claims are apparatus for use claims they are functional and thus exclude 
inoperatives. "[T]he use of functional language is sanctioned specifically by ... section 
1 1 2." In re Angstadt 1 90 USPQ 214,217. 

At page 7 of the Office Action of 07/28/2004 in footnote 5 the Examiner cited 
Brenner v. Manson 148 USPQ 689 for the statement "a patent is not a hunting license. 
It is not a reward for the search, but a reward for its successful conclusion." The claim 
in question was in Brenner v. Manson a method of making a composition. The 
composition had no known use. To issue a patent for such a process would be granting 
a hunting license for a utility that may occur in the future. The method was found to lack 
utility under 35 USC 101 and thus was found not be patentable subject matter. This is 
not relevant to §112, first paragraph, rejection for enablement and thus this quote from 
Brenner v. Manson is incorrectly applied by the Examiner. Thus this decision is not on 
point. Moreover, Applicants have had a successful conclusion, they won a Nobel Prize 
and initiated and enabled the high T c superconductivity. This is undisputed. 

Even if it were appropriate to apply this quote from the Brenner decision, it would 
only apply if undue experimentation were necessary to fabricate samples, not 
specifically fabricated by Applicants, that come within the scope of Applicants' claim. As 



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clearly shown by Applicants, undue experimentation is not needed to practice the 
inventions of Applicants' rejected claims. All further developments were based on 
Applicants' teaching. Applicant's have taught "how to make and use" species within the 
scope of their claims. This is all that is necessary for enablement. The Brenner v. 
Manson statement may be applicable in the situation of enablement when an applicant 
seeks a claim for which it is not known "how to make and use" the invention. Under 
such a circumstance the applicant would be waiting with an issued patent as a "hunting 
license" for someone to discover "how to make and use" the invention. This is not the 
situation in the present application since Applicants have taught "how to make and use" 
their claimed invention. 

The Examiner queries "[w]ill any layered perovskite material containing copper 
exhibit superconductivity?" and "does any stoichiometric combination of rare earth, an 
alkaline earth, and copper elements result in an oxide superconductor?" Since 
Applicants' claims are directed to apparatus of using compositions, Applicants' claims 
read on only those layered perovskite materials which exhibit superconductivity with a 
T c ^ 26K and do not read on an apparatus use of compositions which are not 
superconductive. Thus the Examiner's queries is not relevant to Applicants' claims. 
Applicants are not claiming a composition which is a high T c superconductor. Thus 
Applicants' claims do not read on any layer perovskite, or any other stoichiometric 
combination, but only on those apparatus carrying a high T c superconducting current. 
Apparatus of use claims are inherently narrower in scope than composition claims. A 
claim to a composition having a high T c covers any use of that composition. Applicants' 
claims are limited to an apparatus, device, structure, etc where the composition is 
carrying a superconductive current. Moreover, it is undisputed that persons of skill in 
the art know "how to make and use" species that come within the scope of Applicants' 
claims. This is all that is necessary to satisfy 35 USC 112, first paragraph. There is no 
requirement that Applicants specifically identify, foresee, every specie that comes within 
the scope of Applicants' claims. Thus the Examiner's question is not relevant to the 
issue of whether Applicants' claims are enabled. 



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At page 6 of the Office Action of 07/28/2004 in footnote 3 the Examiner cites In re 
Cook. The invention in In re Cook was directed to four-member zoom lenses involving 
a complex set of design parameters. The CCPA in In re Cook 169 USPQ 298, 300 



It seems to have been agreed by all concerned that the design of 
commercially satisfactory zoom lenses of the kind involved here (i.e., 
four-member zoom lenses) is an extremely complex and time- 
consuming operation, even with the aid of modern computer 
techniques. Thus, quite apart from appellants' teachings, it would take a 
lens designer setting out to design a new zoom lens of this type many 
months, or even years, to come up with a marketable lens assembly 
possessing all the desired characteristics. 

The CCPA held that the In re Cook claims could not be found not enabled merely 
because following applicants teaching it would take a person of skill in the art a long 
time to design other embodiments within the scope of the claims (than were specifically 
described in the specification). 



The CCPA in In re Cook 169 USPQ 298, 302 states: 

We agree that appellants' claims are not too broad "to the point of 
invalidity" just because they read on even a very large number of 
inoperative embodiments, since it seems to be conceded that a person 
skilled in the relevant art could determine which conceived but not-yet- 
fabricated embodiments would be inoperative with expenditure of no 
more effort than is normally required of a lens designer checking out a 
proposed set of parameters. 

In In re Cook the CCPA held that even though the claims included inoperative 
species this did not render the claims unenabled since persons of skill in the art could 
determine "which conceived but not-yet-fabricated embodiments would be inoperative." 
That is a person of skill in the art could go through the time consuming and complex 
computation to determine whether a particular selected design within the scope of the 
claims functioned as a zoom lens. In In re Cook the CCPA found that the necessity of 
doing a complex time consuming calculation to determine whether a particular design 
was operable was not undue experimentation. This corresponds to the "theoretical 
experiment" referred to in the Affidavit of Newns (Brief Attachment AP). In the present 



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application by analogy once a particular composition having a high T c is known following 
the CCPA rational in In re Cook "a person skilled in the relevant art could determine 
which conceived but not-yet-fabricated embodiments would be inoperative with 
expenditure of no more effort than is normally required of a [person of ordinary skill in 
the ceramic fabrication art] checking out a proposed [composition by fabricating and 
testing it.]" by the well known methods of fabrication that do not require an 
understanding of the underlying complex chemistry as stated by Poole 1988 (Brief 
Attachment AF and AW) quoted above. See the DST AFFIDAVITS (Brief Attachments 
AM, AN and AO.) Thus under In re Cook Applicants' claims are enabled. 

The Examiner further states at page 7 of Office Action dated 07/28/2004: 

It should be noted that at the time the invention was made, the theoretical 
mechanism of superconductivity in these materials was not well 
understood. That mechanism still is not understood. Accordingly, there 
appears to be little factual or theoretical basis for extending the scope of 
the claims much beyond the proportions and materials actually 
demonstrated to exhibit high temperature superconductivity. A "patent is 
not a hunting license. It is not a reward for the search, but a reward for its 
successful conclusion". 5 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these grounds 
for rejection. The Examiner has provided no authority for the statement, "there appears 
to be little factual or theoretical basis for extending the scope of the claims much 
beyond the proportions and materials actually demonstrated to exhibit high temperature 
superconductivity." This is not one of the eight In re Wands factors. As described 
below Applicants have provided substantial factual basis for extending much beyond the 
proportions and materials actually demonstrated to exhibit high temperature 
superconductivity. (In particular see the DST AFFIDAVITS Brief Attachments AM, AN 
and AO.) A theoretical basis is not needed. The absence of a theoretical basis even if 
this were true is not adverse to Applicants' position that they have fully enabled their 
claims. There is no requirement to foresee all species that come within the scope of 
Applicants' rejected claims. As stated in In re Angstadt above the enablement 
requirement is "how to make" and "how to practice" the claimed invention. Whether a 



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particular subject matter is "predictable" or "unpredictable" does not depend on whether 
there is a theoretical understanding. The Examiner has cited no authority to support the 
Examiner's view that a theoretical understanding of high T c superconductivity is 
necessary for Applicants to be entitled to a generic claim where, as in the present 
application, persons of skill in the art know how to make compositions and test that 
come within the scope of Applicants' claims. 

The Examiner has provided no authority to show why the Examiner's statement 
"that at the time the invention was made, the theoretical mechanism of 
superconductivity in these materials was not well understood. That mechanism is still 
not understood," is relevant to whether Applicants' claims are enabled. Applicants' 
request the Examiner to identify authority to support this statement from the Patents 
Statute, Title 35 of the United States Code, from Title 37 of the Code of Federal 
Regulations, from decisions of the Board of Patent Appeals and Interferences or from 
the Courts. The Examiner further states "there appears to be little factual or theoretical 
basis for extending the scope of the claims much beyond the proportions and materials 
actually demonstrated to exhibit high temperature superconductivity." This is the 
Examiner's unsupported opinion. The five affidavits of Mitzi, Dinger, Tsuei, Shaw and 
Duncombe (Brief Attachments AH, Al, AJ, AK and AL) under 37 CFR 1.132, and the 
Poole book 1 988 (Brief Attachment AK and AW), Poole 1 995 (Brief Attachment Z), 
Poole 1996 (Brief Attachment AG), the Rao Article (Brief Attachment AB) described 
below provide factual evidence supporting Applicants' position that once a person of 
skill in the art knew from Applicant's article that ceramic compositions, such as oxides, 
in particular transition metal oxides, were high T c superconductors, it was a matter of 
routine application of the general principles of ceramic science to fabricate such 
compositions, other than those actually made by Applicants. As stated above the 
Examiner agrees with this. Quoting Brenner v. Manson, 283 US 518, 148 USPQ 689, 
the Examiner further states that a "patent is not a hunting license. It is not a reward for 
the search, but a reward for its successful conclusion." Brenner v. Mason case has 
nothing to do with §112 enablement. 



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The Examiner further states at page 7 of Office Action dated 07/28/2004: 



Upon careful consideration of the evidence as a whole, including the 
specification teachings and examples, and applicant's affidavits and 
remarks, the Examiner has determined that the instant specification is 
enabled for compositions comprising a transition metal oxide containing 
an alkaline earth element and a rare-earth or Group 1MB element (as 
opposed to only compositions comprising BaxLas-xCusOy as stated in the 
Final Office action). Applicant has provided guidance throughout the 
instant specification that various transition metal oxides (such as copper 
oxide) containing an alkaline earth element and a rare-earth or Group 1MB 
element result in superconductive compounds which may in turn be 
utilized in the instantly claimed apparatus. 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these grounds 
for rejection. As stated above in Ex parte Jackson, guidance is needed when 
experimentation is undue without the guidance. Since specific species do not have to 
be foreseen at the time of filing, guidance as used in regards to enablement does not 
mean identifying in advance all species that come within the scope of Applicants' claims 
when they can be determined without undue experimentation. 



Applicants disagree that they have only enabled compositions containing an 
alkaline earth element and a rare earth or Group III B element to result in 
superconductive compounds which may in turn be utilized in the instantly claimed 
methods. There are numerous examples of high T c superconductors made using the 
general principals of ceramic science as taught by Applicants. These principals existed 
prior to Applicants' discovery. 

The CCPA in In re Robins 166 USPQ552, 555 has stated 

Both the Examiner and the board seem to have taken the position that 
in order to "justify," as the Examiner said, or to "support," as the board 
said, broad generic language in a claim, the specification must be 
equally broad in its meaning, and use in examples, of representative 
compounds encompassed by the claim language. This position, 
however, misapprehends the proper function of such disclosure. 
Mention of representative compounds encompassed by generic claim 



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language clearly is not required by §1 1 2 or any other provision of the 
statute. But, where no explicit description of a generic invention is to be 
found in the specification (which is not the case here) mention of 
representative compounds may provide an implicit description upon 
which to base generic claim language. ... Similarly, representative 
examples are not required by the statute and are not an end in 
themselves. Rather, they are a means by which certain requirements of 
the statute may be satisfied. Thus, inclusion of a number of 
representative examples in a specification is one way of demonstrating 
the operability of a broad chemical invention and hence, establishing 
that the utility requirement of § 101 has been met. It also is one way of 
teaching how to make and/or how to use the claimed invention, thus 
satisfying that aspect of § 1 1 2. 

Thus Applicants are not limited, as the Examiner has done, to claims only covering the 
specific examples that they have described in the specification. 



The Examiner further states at page 8 of Office Action dated 07/28/2004: 

Applicant's remarks have been carefully considered. The following 
remarks are believed to address each of the issues raised by applicant, 
applicants' arguments, as well as the Affidavits filed 5/1/98, 5/14/98, 
12/16/98 and 3/3/04 (1.132 Declarations of Mitzi, Tsuei, Dinger and Shaw) 
(Advisory mailed 2/25/99 (Paper 77E)) have been fully considered but 
they are not deemed to be persuasive. 

The Examiner has provided no reason for why the 1 .1 32 Declarations of Mitzi, 
Tsuei, Dinger and Shaw (Brief Attachments AH, Al, AJ, AK and AL) are not persuasive 
and the Examiner has made no comment on the DST Affidavits (Brief Attachments AM 
to AO) or the declaration of Bednorz (Brief Attachment AQ) or the Affidavit of Newns 
(Brief Attachment AQ). 



The Examiner further states at page 8 of Office Action dated 07/28/2004: 



The additional case law and arguments by the applicants have been duly 
noted. For the reasons that follow, however, the record as a whole is 
deemed to support the initial determination that the originally filed 
disclosure would not have enabled one skilled in the art to make and use 
the invention to the scope that it is presently claimed. 



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The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these grounds 
for rejection. As stated above the CCPA In re Marzocci 169 USPQ 367, 369-370 states 
"[t]he only relevant concern of the Patent Office under these circumstances should be 
over the truth of any such assertion. The first paragraph of § 112 require nothing more 
than objective enablement." The Examiner has made no attempt to question the truth of 
Applicants assertions. 

The Examiner again uses the word "deemed", that is, it is the Examiner's 
conclusory opinion unsupported by any factual evidence to question the truth of 
Applicants' assertions. The Examiner's reasons for why Applicants' claims are not 
enabled in the quoted passage are completely contrary to the Examiner's rejection 
under 35 USC 102(a) and 103(a) over the Ashai Shinbum article (which were earlier 
asserted against Applicants claims, but overcome by Applicants swearing behind the 
date of the Ashai Shinbum article which is described in detail below). Under these 
rejections the Examiner found the Asahi Shinbum article (Brief Attachment AV) would 
have enabled one skilled in the art to make and use the invention to the scope that it is 
presently claimed. As noted above, the Asahi Shinbum article relies upon Applicants' 
article (Brief Attachment AX). Applicants' view is further supported by the five affidavits 
of Mitzi, Tsuei, Dinger, Shaw and Duncombe (Brief Attachments AH to AL) under 37 
CFR 1.132 the DST AFFIDAVITS (Brief Attachments AM, AN and AO) and Poole 1988 
(Brief Attachment AF and AW) which will be described below and which states that 
once it was known from Applicants' article that materials, were superconductive at 
temperatures greater than or equal to 26>K, other high T c materials, such as oxides, 
could be made by a person of skill in the art using the teaching of Applicants and the 
general teachings of ceramic science. 

The Examiner further states on pages 8-9: 

Applicants argue that their disclosure refers to "the composition 
represented by the formula RE-TM-O, where RE is a rare earth or rare 
earth-like element, TM is a nonmagnetic transition metal, and O is 



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oxygen", and list several species such as "La2-xBaxCU04-y" which they 
indicate are found In the present disclosure. 

Notwithstanding that argument, it still does not follow that the invention is 
fully enabled for the scope presently claimed. The claims include formulas 
which are much broader than the RE-TM-0 formula cited in the disclosure. 
Claim 24 recites "a transition metal oxide", claim 88 "a composition", and 
claim 96 "a copper-oxide compound". 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these grounds 
for rejection, and the Examiner has given no reason to doubt the truth of Applicants 
assertions. The Examiner cites no example of a species that comes within the scope of 
Applicants' claims that cannot be made following Applicants' teaching. 

Applicants respectfully disagree. In the priority document, (Brief Attachment AE) 
for example in the abstract, RE is a rare earth element, TM is a transition metal and O is 
oxygen. The priority document (Brief Attachment AE) further states at Col. 2, lines 22- 
25 "the lanthanum which belongs to the MB group of elements is in part substituted by 
one member of the neighboring MA group of elements..." Group MA elements are the 
alkaline earth elements. The present specification teaches at page 1 1 , lines 22-23, that 
RE stands for the rare earths (lanthanides) or rare earth-like elements. The "rare earth 
like element" acts like a rare earth element in the superconductive composition. Thus a 
rare earth-like element is an equivalent of rare earth element. Similar language appears 
in the present specification at page 12 lines 6-8, "the lanthanum which belongs to the 
MB group of elements is in part substituted by one member of the neighboring MA group 
of elements...". Therefore, the priority document (Brief Attachment AE) teaches a 
"composition including a transition metal, a rare earth or rare earth-like element, and 
alkaline earth. Applicants note that in the passage quoted above, the Examiner 
incorrectly states that Applicants claim a composition. This is not correct. Applicants' 
claim an apparatus for flowing a superconducting current in a composition, such as a 
ceramic. (This characterization is exemplary only and not intended to limit the scope of 
any claims.) In the last sentence of the passage quoted above the Examiner incorrectly 
states "the claimed composition is deemed to be much broader than [the] formula" 



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RE 2 TM.0 4 ". The present specification and priority document (Brief Attachment AE) 
are not limited to this formula. The composition taught by the present specification and 
priority documents have variable amounts of oxygen, rare earth, rare earth-like and 
alkaline earth elements as is clearly shown in the abstract of the priority document. 

The Examiner further states at page 9 of Office Action dated 07/28/2004: 

The present specification actually shows that known forms of "a transition 
metal oxide", "a composition" and "a copper-oxide compound" do not 
show the onset of superconductivity at above 26°K. At p. 3, line 20, 
through p. 4, line 9, of their disclosure, the applicants state that the prior 
art includes a "Li- Ti-0 system with superconducting onsets as high as 
13.7°K." Official Notice is taken of the well-known fact that Ti is a 
transition metal. That disclosure also refers to "a second, non-conducting 
CuO phase" at p. 14, line 18. 

The Examiner has repeated grounds for rejection that Applicants have rebutted. 
The Examiner has not stated why Applicants' rebuttal does not overcome these grounds 
for rejection and the Examiner has given no reason to doubt the truth of Applicants 
assertions. The species of ceramic materials exist which do not have aT c > 26K is not 
evidence of lack of enablement. Every composition does not have to have T c ^ 26K for 
there to be enablement. There may be lack of enablement if a species that is a high T c 
superconductor cannot be make following Applicants' teaching as of Applicants' filing 
date. The Examiner has shown no evidence of this. Thus the Examiner has not made 
out a prima facie case of lack of enablement. 

Applicants' claims are directed to an apparatus comprising, e.g., "compositions", 
"transition metal oxides", "a composition" and "a copper-oxide compound" having aT c > 
26°K which is carrying a superconducting current. Applicants' claims do not include in 
the claimed apparatus compositions having T c < 26°K. Thus the examples on page 3, 
line 20 - page 4, line 9, are not included in Applicants' claims. That there are transition 
metal oxides having T c < 26°K does not mean that Applicants' claims directed to 
transition metal oxides, compositions and copper oxides having T c ^ 26°K are not 
enabled. Applicants provide the teaching on how to fabricate such compositions having 
T c ^ 26°K and that such compositions exist. The "second non-conducting CuO phase" 



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referred to at page 14, line 18, again does not mean that Applicants' claims are not 
enabled. (A superconducting element can comprise superconducting and non- 
superconducting components.) Applicants' statements at page 14 is part of Applicants' 
teaching on how to achieve an oxide having aT c > 26°K. The Examiner is attempting to 
use Applicants' complete description of their teaching to show lack of enablement when, 
in fact, this complete teaching provides full enablement by showing how samples are 
and are not to be prepared. Applicants have claimed their invention functionally, that is, 
as an apparatus of use so the Applicants' claims do not read on inoperable species. 
What the Examiner "seems to be obsessed with is the thought of [compositions] which 
won't work to produce the intended result. Applicants have enabled those of skill in the 
art to see that this is a real possibility which is commendable frankness in a disclosure." 
In re Angstadt, supra 190 USPQ 219. Thus, the CCPA has found that the existence of 
compositions that do not work does not mean that the claimed inventions are not 
enabled. 

THE PECEDEDTIAL BOARD DECISION EX PARTE JACKSON SUPPORTS 
APPLICANTS' POSITION THAT THEIR CLAIMS ARE ENABLED 

The Examiner further states at page 9 of Office Action dated 07/28/2004: 

Accordingly, the present disclosure is not deemed to have been fully 
enabling with respect to the "transition metal oxide" of claim 24, the 
"composition" of claim 88, or the "copper-oxide compound" of claim 96. 

Again without facts or reasons to doubt Applicants' assertions the Examiner 
"deems" (that is, the Examiner conclusorily asserts) Applicants' claims are not enabled 
and for the reasons given above Applicants disagree. The only attempt at a factual 
support for the Examiner's statement are the examples provided by Applicants which 
show T c < 26°K. Applicants provide this teaching so that a person of skill in the art will 
be fully informed on how to practice Applicants' invention. 

The Examiner further states at page 10 of Office Action dated 07/28/2004: 



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The availability requirement of enablement must also be considered in 
light of the scope or breadth of the claim limitations. The Board of Appeals 
considered this issue in an application which claimed a fermentative 
method using microorganisms belonging to a species. Applicants had 
identified three novel individual strains of microorganisms that were 
related in such a way as to establish a new species of microorganism, a 
species being a broader classification than a strain. The three specific 
strains had been appropriately deposited. The issue focused on whether 
the specification enabled one skilled in the art to make any member of the 
species other than the three strains which had been deposited. The Board 
concluded that the verbal description of the species was inadequate to 
allow a skilled artisan to make any and all members of the claimed 
species. Ex parte Jackson 217 USPQ 804, 806 (Bd. App. 1982). 

Ex parte Jackson is not applicable to the present application. The Board in Ex 
parte Jackson states at 217 USPQ 804, 806-807: 



The first paragraph of 35 U.S.C. 112 requires that the disclosure of an 
invention be "in such a full, clear, concise and exact terms as to enable 
any person skilled in the art to which it pertains or with which it is most 
nearly connected, to make and use the same ... Decisional law has 
interpreted the statutory requirement as dictating that sufficient information 
be given in the application so that one of ordinary skill in the art can 
practice the invention without undue experimentation. ... 

The determination of what constitutes undue experimentation in a give 
case requires the application of a standard or reasonableness, having due 
regard for the nature of the invention and the state of the art. ... 
The test is not merely quantitative, since a considerable amount of 
experimentation is permissible if it is merely routine, or if the specification 
in question provides a reasonable amount of guidance with respect to the 
direction in which the experimentation should proceed to enable the 
determination of how to practice a desired embodiment of the invention 
claimed. 



The Board states at 217 USPQ 806 "The issue squarely raised by [the] rejection 
[of claims] is whether or not a description of several newly discovered strains of bacteria 
having a particularly desirable metabolic property in terms of the conventionally 
measured culture characteristic and a number of metabolic and physiological properties 
would enable one of ordinary skill in the relevant art to independently discover additional 



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strains having the same specific desirable metabolic property, i.e., the production of a 
particular antibiotic." Thus the Board in Ex parte Jackson would find a disclosure 
enabling that permits "one of ordinary skill in the art to independently discover 
additional" high T c materials that come within the scope of Applicants' generic claims, in 
particular in view of the Examiner's factual finding at page 8 of the Final Action that "the 
Examiner does not deny . . . that once a person of skill in the art knows 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, ... can make the known 
superconductive compositions." (Emphasis in the original) Thus following the Boards 
decision in Ex parte Jackson and this finding of fact by the Examiner, Applicants' claims 
are enabled. As stated by the Examiner, the experimentation to find other species is 
merely routine. The Board in Ex parte Jackson goes on to state if the experimentation 
is not merely routine there is enablement "if the specification in question provides a 
reasonable amount of guidance with respect to the direction in which the 
experimentation should proceed to enable the determination of how to produce a 
desired embodiment of the invention claimed." 217 USPQ 804, 807. This guidance is 
needed when the experimentation is not merely routine. (Moreover, the extensive un- 
rebutted evidence presented by Applicants clearly shows other species were found 
without undue experimentation) Since there is no evidence in the present application 
that anything other that routine experimentation is needed to determine other species, 
than specifically described by Applicants', the guidance provided by Applicants' 
teaching is sufficient to satisfy enablement. 

The Board in Ex parte Jackson further states at 217 USPQ 808 "[t]he problem of 
enablement of processes carried out by microorganisms were uniquely different from 
the field of chemistry generally. Thus, we are convinced that such recent cases as In re 
Angstadt 537 F.2d 498, 190 USPQ 214 (CCPA 1976) and In re Geerdes 491 F.2d 1260, 
180 USPQ 789 (CCPA 1974) are in apposite to this case." Therefore, since the present 
application is not directed to biotechnology or a microorganism invention, the holding of 
Ex parte Jackson does not apply to the present application. 



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Applicants note that the Board states in Ex parte Jackson that in determining 
whether there is enablement, "a considerable amount of experimentation is permissible 
if it is merely routine, or in the specification in question provides a reasonable amount of 
guidance with respect to the direction in which the experimentation should proceed to 
enable the determination of how to practice a desired embodiment of the invention 
claimed." The Examiner agrees that the known high T c superconductors can be made 
as described by Applicants. Thus Applicants have "provided guidance with respect to 
the direction in which the experimentation should proceed to enable determination of 
how to practice a desired embodiment of the claimed invention." 

The Board in Ex parte Jackson further states at 217 USPQ 808 "[t]he 
experimentation involved in the ordinary chemical case, including [In re Angstadt and In 
re Geerdes], usually arise in testing to establish whether a particular species within the 
generic claim language will be operable in the claimed process." As stated herein the 
method of "testing" to establish whether a particular species within the generic claim 
language will be "superconductive with aT c > 26K is well known prior to Applicants' 
discovery. See the DST AFFIDAVITS (Brief Attachments AM, AN and AO) in 
particular paragraphs 10 and 1 1 thereof. The Examiner has not rebutted this. Also, the 
process for making the compositions is well known prior to the Applicants' discovery and 
the Examiner agrees that the known high T c superconductors can be made following the 
Applicants' teaching. The Examiner has not rebutted this. (See Poole 1988 quoted 
above Brief Attachments AF and AW) 

The Board in Ex parte Jackson cited In re Geerdes 180 USPQ 789. The Court in 
In re Geerdes at 180 USPQ 793 states in reversing a rejection of claims under 35 
U.S.C. 1 1 2, first paragraph, for lack of enablement "the area of technology involved 
here in not particularly complex and there is no evidence in the record to indicate that 
one of skill in the art would not be able to make and use the claimed invention." The 
area of technology involved in the present application in regard to making high T c 
materials was well known prior to Applicants' discovery. As indicated in the DST 
AFFIDAVITS (paragraphs 1 0 and 11) the level of skill in the art of making ceramic 



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materials is high. This is unrebutted by the Examiner. Moreover, the Examiner has 
provided no reason "to indicate that one skilled in the art would not be able to make and 
use the claimed invention." 

The Court in In re Geerdes further states at 180 USPQ 993 "[t]he Board 
expressed concern that 'experimentation' is involved in the selection of proportions and 
particle sizes, but this is not determinative of the question of scope of enablement. It is 
only undue experimentation that is fatal." There is no evidence that undue 
experimentation is needed "to make" materials that come within the scope Applicants' 
claims. 

The Court in In re Geerdes further states at 180 USPQ 793 "we cannot agree 
with the Board's determination that the claims are inclusive of materials which would not 
apparently be operative in the claimed process ... of course it is possible to argue that 
process claims encompass inoperative embodiments on the premise of unrealistic or 
vague assumptions, but that is not a valid basis for rejection." In the present application 
the Examiner's basis for rejection of Applicants' claims is impermissibly premised on 
unrealistic or vague assumptions, such as examples cited by Applicant having a T c < 
26°K and statements such as the theory of high Tc Superconductivity is not understood. 
As noted above whether there is a theory of high Tc superconductivity or not is not 
determinative of whether the art of high Tc superconductivity is "unpredictable." An art 
is unpredictable if "how to make and use" is not well understood. If the existence of a 
theory enhances an understanding of "how to make" and "use", the theory increases the 
level of "predictability" of the art. If persons of ordinary skill in the art know "how to 
make and use" the claims of the invention, the absence of a theory does not result in 
the art being unpredictable. The Examiner's reasons for asserting lack of enablement 
are premised on "unrealsitc or vague assumptions" without showing that undue 
experimentation is needed to practice Applicants' claimed invention. 

Chapter 5 of Poole 1988 (Brief Attachment AF and AW) book entitled 
"Preparation and Characterization of Samples" states at page 59 "[cjopper oxide 



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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 1988 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." Poole 1988 further states at pages 61-62 "[i]n the solid state reaction 
technique one starts with oxygen-rich compounds of the desired components such as 
oxides, nitrates or carbonates of Ba, Bi, La, Sr, Ti, Y or other elements. ... These 
compounds are mixed in the desired atomic ratios and ground to a fine powder to 
facilitate the calcination process. Then these room-temperature-stabile salts are 
reacted by calcination for an extended period (~20hr) at elevated temperatures 
(~900°C). This process may be repeated several times, with pulverizing and mixing of 
the partially calcined material at each step." This is generally the same as the specific 
examples provided by Applicants and as generally described at pages 8, line 19, to 
page 9, line 5, of Applicants' specification which states "[t]he methods by which these 
superconductive compositions can be made can use known principals of ceramic 
fabrication, including the mixing of powders containing the rare earth or rare earth-like, 
alkaline earth, and transition metal elements, coprecipitation of these materials, and 
heating steps in oxygen or air. A particularly suitable superconducting material in 
accordance with this invention is one containing copper as the transition metal." (See 
Brief Attachments AF and AW.) Consequently, Applicants have fully enabled high T c 
compositions, in particular for example ceramics, oxides transition metal oxides, etc of 
their claims. In particular, Applicants' claims that specifically recite that the 
superconducting element can be made by known principles of ceramic science are 
specifically and conclusively shown to be enabled by this statement from Poole 1988. 
See, for example claims 322 to 360, 414 to 427, 436, 455 to 465, 473 to 475, 484 to 
441 and 552. 



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It is, therefore, clear that undue experimentation is not required to practice 
Applicants' claimed invention and that Applicants' teaching has sufficient guidance to 
satisfy enablement. 



THE CAFC DECISION, ENZO BIO CHEM v. CALGENE 
SUPPORTS APPLICANTS' POSIDN THAT CLAIMS ARE ENABLED 



The Examiner further states at page 10-1 1 of Office Action dated 07/28/2004: 



In Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 
(Fed. Cir. 1999), the court held that claims in two patents directed to 
genetic antisense technology, (which aims to control gene expression in a 
particular organism), were invalid because the breadth of enablement was 
not commensurate in scope with the claims. Both specifications disclosed 
applying antisense technology in regulating three genes in E. coli. Despite 
the limited disclosures, the specifications asserted that the "[t]he practices 
of this invention are generally applicable with respect to any organism 
containing genetic material which is capable of being expressed." such as 
bacteria, yeast, and other cellular organisms." The claims of the patents 
encompassed application of antisense methodology in a broad range of 
organisms. Ultimately, the court relied on the fact that (1) the amount of 
direction presented and the number of working examples provided in the 
specification were very narrow compared to the wide breadth of the claims 
at issue, (2) antisense gene technology was highly unpredictable, and (3) 
the amount of experimentation required to adapt the practice of creating 
antisense DNA from E. coli to other types of cells was quite high, 
especially in light of the record, which included notable examples of the 
inventor's own failures to control the expression of other genes in E. coli 
and other types of cells. 

The Examiner cites Enzo v Calgene 52 USPQ2d 1 129 which is a biotechnology 
decision. This decision is not applicable to the present invention as stated by the Board 
in Ex parte Jackson as stated above. The Court in Enzo v. Calgene at 52 USPQ2d 
1 1 29, 1 1 35 applies the facts of In re Wands 8 USPQ2d 1 400. 



The CAFC in Enzo at 52 USPQ2d 1 129, 1 138 cites In re Vaeck 20 USPQ2d 
1438 stating: 



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It is well settled that patent Applicants are not required to disclose every 
species encompassed by their claims, even in an unpredictable art. 
However, there must be sufficient disclosure, either through illustrative 
examples or terminology, to teach those of ordinary skill how to make and 
use the invention as broadly as it is claimed. 

Applicants have satisfied the standard of In re Vaeck which is "to teach those of 
ordinary skill in the art how to make and how to use the invention as broadly as it is 
claimed." In re Vaeck does not require "theoretical predictability" to satisfy enablement. 
Moreover, Applicants' High Tc properties identified in the summary of the claims section 
are "illustrative... terminology" that teaches "those of ordinary skill in the art how to make 
and use the invention as broadly as it is claimed." 

In Enzo Biochem plaintiff Enzo sued defendant Colgene Inc. for infringement of a 
patent with broad claims based on antisene strategies. There was evidence in the 
record that these strategies were not "universally applicable" and not "universally 
straight forward" which lead the district court to find the Enzo patents not enabled for 
lack of "how-to-make-and-use" predictability which resulted in undue experimentation to 
apply the claimed invention to asserted infringing use. The CAFC agreed. This is 
similar to the outcome of In re Fisher supra. In contradistinction in the present 
application on appeal the evidence in the record shows that prior to Applicants' 
discovery it was well known how to make the materials that come within the scope of 
Applicants' claims. 

THE CAFC DECISION IN RE WANDS SUPPORTS APPLICANTS 
POSITION THAT THEIR CLAIMS ARE ENABLED 

The MPEP SECTION— 2164.01(a) entitled "Undue Experimentation Factors" 
citing In re Wands 8 USPQ2d 1400 states: 

There are many factors to be considered when determining whether there 
is sufficient evidence to support a determination that a disclosure does not 
satisfy the enablement requirement and whether any necessary 
experimentation is "undue." These factors include, but are not limited to: 



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(A) The breadth of the claims; 

(B) The nature of the invention; 

(C) The state of the prior art; 

(D) The level of one of ordinary skill; 

(E) The level of predictability in the art; 

(F) The amount of direction provided by the inventor; 

(G) The existence of working examples; and 

(H) The quantity of experimentation needed to make or use the invention 
based on the content of the disclosure. 

The Examiner has not applied these factors. And in the final rejection the 
Examiner has not commented on nor rebutted Applicants' analysis of the application of 
the In re Wands factors to the present application in Applicants' Response dated 
01/28/2005 in response to Office Action dated 07/28/2004. Applicants have shown that: 

(A) Their claims are as broad as their discovery which is that compounds, 
such as ceramics, more particularly, oxides, metal oxides, transition metal, 
etc. can carry a superconductive current for a T c ^ 26 K; 

(B) The invention is easily practiced by a person of skill in the art; 

(C) The state of the prior art clearly shows how to fabricate materials 
which can be used to practice Applicants' invention; 

(D) The level of one of ordinary skill in the art to practice setting up a 
superconductor current in a particular material is not high since as stated 
in Poole 1988 (Brief Attachments AF and AW) materials to practice 
Applicants' invention are easily made and all that is needed to practice 
Applicants' claimed invention is to cool the material below, the T c and to 
provide a current which will be a superconductive current. It has been well 
known how to do this since the discovery of superconductivity in 191 1 . 
(See page 1 of "Superconductivity" by M. Von Laue) (Brief Attachment AT 
and paragraph 9 of the DST AFFIDAVITS Brief Attachments AM, AN and 
AO). Moreover as stated above, "how to make" ceramic materials is well 



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known prior to applicants discovery. As described below the skill of the art 
in "how to make" ceramic materials is high, but well known to those of skill 
in the art and moreover, the chemistry involved does not have to be 
understood "to make" the materials and the theory of why there materials 
are high Tc superconductors does not have to be known to know "how to 
make" these materials. 

(E) There is no unpredictability in how to make materials to practice 
Applicants' invention and there is no unknown in how to practice 
Applicants' invention. The only unknown is which particular composition 
will have aT c > 26°K. As extensively shown by Applicants determining this 
is a matter of routine experimentation. The Examiner has not denied nor 
rebutted this. 

(F) Applicants have provided extensive direction to make materials to 
practice their claimed invention. They have included all known principles 
of ceramic science. Also, as stated in Poole 1988 (Brief Attachments AF 
and AW) book these materials are easily made. The Examiner has not 
denied nor rebutted this. The Examiner has made no comment on the 
amount of direction provided by the Applicants. As stated by the Board in 
Ex parte Jackson supra, guidance is needed when the experimentation 
needed is not merely routine. There is no evidence that anything other 
than routine experimentation is needed to identify species within the scope 
of Applicants' as of Applicants' earlier filing or priority date. As noted 
above Applicants' High Tc properties provide direction to skilled artisans 
on how to make and use other species. 

(G) Applicants have provided sufficient working examples and examples 
of compositions that have T c ^ 26°K for a person of skill in the art to 
fabricate materials that can be used to practice Applicants' claimed 
invention; and 



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(H) Applicants have shown that the quantity of experimentation needed to 
make samples to use the invention based on the content of the disclosure 
in the specification is routine experimentation. The Examiner has not 
commented on this nor rebutted this. 



The MPEP SECTION— 21 64.01 (a) further states: 



The fact that experimentation may be complex does not necessarily make 
it undue, if the art typically engages in such experimentation. In re Certain 
Limited-Charge Cell Culture Microcarriers, 221 USPQ 1165, 1174 (Int'l 
Trade Comm'n 1983), affd. sub nom., Massachusetts Institute of 
Technology v. A.B. Fortia, 774 F.2d 1 1 04, 227 USPQ 428 (Fed. Cir. 
1985). 

See also In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The test of 
enablement is not whether any experimentation is necessary, but whether, 
if experimentation is necessary, it is undue. In re Angstadt, 537 F.2d 498, 
504, 190 USPQ 214, 219 (CCPA 1976). MPEP 2164 

There is no statement by the Examiner nor any evidence in the record that the 
experimentation to make materials to practice Applicants' claimed invention is complex 
or undue. But it is clear that even if the experimentation was complex to make samples 
to practice Applicants' claimed invention, it would not render Applicants' claims not 
enabled since the art typically engages in the type of experimentation taught by 
Applicants to make samples to practice their claimed invention. The Examiner has not 
rebutted this. 

The facts of In re Wands have similarity to the facts of the present application 
under examination. The Court at 8 USPQ2d 1406 held that: 

The nature of monoclonal antibody technology is that it involves screening 
hybridomas to determine which ones secrete antibody with desired 
characteristics. Practitioners of this art are prepared to screen negative 
hybridomas in order to find one that makes the desired antibody. 



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Correspondingly Applicants have shown that the nature of high T c technology is 
that it involves preparing samples to determine which ones have T c ^ 26°K - the 
desired characteristic. Practitioners of this art are prepared to prepare samples in order 
to find ones that have the desired T c . Nothing more is required under In re Wands. 

Applicants have shown that their specification is enabling with respect to the 
claims at issue and that there is considerable direction and guidance in the 
specification; with respect to Applicants' claimed invention there was a high level of skill 
in the art to fabricate samples at the time of Applicants' discovery; and all of the 
methods needed to practice the invention were well known at the time of Applicants' 
discovery. Thus Applicants have shown that after considering all the factors related to 
the enablement issue, it would not require undue experimentation to obtain the 
materials needed to practice the claimed invention. The Examiner has not denied nor 
rebutted this. 

A conclusion of lack of enablement means that, based on the evidence regarding 
each of the above factors, the specification, at the time the application was filed, would 
not have taught one skilled in the art how to make and/or use the full scope of the 
claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 
USPQ2d 1 51 0, 1 51 3 (Fed. Cir. 1 993). It is the Examiner's burden to show this and the 
Examiner has clearly not done so. 

THE CAFC DECISION AMGEN V. CHUGAI SUPPORTS APPLICANTS POSITION 
THAT THEIR CLAIM ARE ENABLED 

The breadth of the claims was a factor considered in Amgen v. Chugai 
Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir.), cert, denied, 502 
U.S. 856 (1991). In the Amgen case, the patent claims were directed to a purified DNA 
sequence encoding polypeptides which are analogs of erythropoietin (EPO). The Court 
stated that: 



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Amgen has not enabled preparation of DNA sequences sufficient to 
support its all-encompassing claims. . . . [D]espite extensive statements in 
the specification concerning all the analogs of the EPO gene that can be 
made, there is little enabling disclosure of particular analogs and how to 
make them. Details for preparing only a few EPO analog genes are 
disclosed. . . . This disclosure might well justify a generic claim 
encompassing these and similar analogs, but it represents inadequate 
support for Amgen's desire to claim all EPO gene analogs. There may be 
many other genetic sequences that code for EPO-type products. Amgen 
has told how to make and use only a few of them and is therefore not 
entitled to claim all of them. 927 F.2d at 1213-14, 18 USPQ2d at 1027. 

The Amgen court found that "Amgen has told how to make and how to use only a 
few of [the species that comes within the scope of the genus claims] and is therefore not 
entitled to claim all of them." In contradiction, in the present application Applicants have 
provided a teaching (and proof thereof) of how to make all known high T c materials 
useful to practice their claimed invention. As the Amgen court states this type of 
disclosure justifies a generic claim. As the In re Angstadt court states the disclosure 
does not have to provide examples of all species within Applicants' claims where it is 
within the skill of the art to make them. There is no evidence to the contrary. 

In the prosecution of this application, Applicants have noted that the Examiner 
has taken a contrary view to Applicants' five affiants (Brief Attachments AH, Al, AJ, AK, 
AL, AM, AN and AO) each of whom has qualified himself as an expert in the field of 
ceramic technology and in superconductivity. Also, the Examiners' argument for 
nonenablement is primarily based on the Examiner "deeming" the rejected claims 
nonenabled based on the unsupported assertion that the art of high T c is unpredictable 
and not theoretically understood, that is, the Examiner's conclusory opinion or belief that 
the claims are not enabled. As stated above even if the art of high Tc superconductivity 
is not theoretically understood this does not mean that this art is unpredictable. In the 
prosecution of this application Applicants requested the Examiner to submit an affidavit 
to qualify himself as an expert to conclusorly "deem" the rejected claims nonenabled 
and to substantiate the unsupported assertions. The Examiner has not submitted an 
affidavit. 37 CFR 104(d)(2) states "[wjhen a rejection in an application is based on facts 



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within the personal knowledge of an employee of the office ... the reference must be 
supported when called for by the Applicants, by an affidavit of such employee." 
(Emphasis Added) In the Final Action the Examiner cites two references in response to 
this statement which are responded to below. 



The Examiner further states at page 1 1 -1 2 of Office Action dated 07/28/2004: 



The examples at p. 18, lines 1-20, of the present specification further 
substantiates the finding that the invention is not fully enabled for the 
scope presently claimed. 

With a 1 :1 ratio of (Ba, La) to Cu and an x value of 0.02, the La-,Ba-Cu-0 
form (i.e., "RE-AE-TM-O" per p. 8/ line 11) shows "no superconductivity", 
With a 2:1 ratio of (Ba/ La) to Cu and an x value of 0.15, the La-Ba-Cu-0 
form shows an onset of superconductivity at "T c = 26°K". It should be 
noted, however, that all of the claims in this application require the critical 
temperature (T c ) to be "in excess of 26°K" or "greater than 26°K". 

Applicant respectfully disagrees with the Examiner. All of the claims (except 543) 
require T c to be greater that of equal to 26°K. 



The Examiner further states at page 12 of Office Action dated 07/28/2004: 



The state of the prior art provides evidence for the degree of predictability 
in the art and is related to the amount of direction or guidance needed in 
the specification as filed to meet the enablement requirement. The state of 
the prior art is also related to the need for working examples in the 
specification. The state of the art for a given technology is not static in 
time. It is entirely possible that a disclosure filed on January 2, 1990, 
would not have been enabled. However, if the same disclosure had been 
filed on January 2, 1996, it might I have enabled the claims. Therefore, the 
state of the prior art must be evaluated for each application based on its 
filing date. 35 U.S.C. 112 requires the specification to be enabling only to 
a person skilled in the art to which it pertains, or with which it is most 
nearly connected." 

Notwithstanding the Examiner's comments the Examiner has the burden of 
showing that the claims are not enabled by a reasonable argument which the Examiner 



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has not done. The Examiner has presented no evidence or argument that undue 
experimentation is required to make composition that can be used to practice the full 
scope of Applicants' claims based on Applicants' teaching. The three Affidavits of 
Tsuei, Dinger and Shaw (Brief Attachments AM, AN, AO) describe in detail what a 
person of ordinary skill in the art knew prior to Applicants discovery and how this 
knowledge was used in view of Applicants' teaching to make other species within the 
scope of Applicants' claims without undue experimentation. This is described in detail 
below. The Examiner has not commented on nor rebutted there affidavits. 



The Examiner further states at page 1 2-1 3 of the Office Action dated 07/28/2004: 



The Applicants also have submitted three affidavits attesting to the 
applicants' status as the discoverers of materials that superconduct > 
26°K. Each of the affidavits further states that "all the high temperature 
superconductors which have been developed based on the work of 
Bednorz and Muller behave in a similar manner (way)". Each of the 
affidavits add" (t)hat once a person of skill in the art knows of a specific 
transition metal oxide composition which is superconducting above 26°K, 
such a person of skill in the art, using the techniques described in the 
(present) application, which includes all known principles of ceramic 
fabrication, can make the transition metal oxide compositions 
encompassed by (the present) claims ... without undue experimentation or 
without requiring ingenuity beyond that expected of a person of skill in the 
art." All three affiants apparently are the employees of the assignee of the 
present application. 

Those affidavits do not set forth particular facts to support the conclusions 
that all superconductors based on the applicants' work behave in the 
same way and that one skilled in the art can make those superconductors 
without undue experimentation. Conclusory statements in an affidavit or 
specification do not provide the factual evidence needed for patentability. 

In this passage the Examiner incorrectly states Applicants submitted three 
affidavits. Prior to the Office Action of 07/28/2004 Applicants' submitted the five 
affidavits of Brief Attachments AH, Al, AJ, AK, AL of Mitzi, Dinger, Tsuei, Shaw and 
Duncombe, respectively. Subsequent to the Office Action of 07/28/2004 Applicants 
submitted the expanded affidavits of Shaw, Tsuei and Dinger of Brief Attachments AM, 
AN and AO respectively. The expanded affidavits set forth particular facts to support 



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the conclusions that all superconductors based on Applicants' work behave in the same 
way and that one skilled in the art can make those superconductors without undue 
experimentation. 

The Examiner cited In re Lindner, 173 USPQ 356, 358 (CCPA 1972) in support 
of this statement. In In re Lindner the patent applicant submitted Rule 132 affidavit 
based on one example to show unexpected results for a claim of broader scope. The 
CCPA held that "[i]t is well established that objective evidence of non-obviousness must 
be commensurate in scope with the claims." In re Lindner is not on point since it does 
not deal with the issue of enablement. In re Linder the applicant sought to avoid a prior 
art reference. The CCPA in this quoted passage is stating that the 132 affidavit must 
show that the applicant was in possession of the full scope of the claimed invention prior 
to the date of the reference. In re Linder stands for the position that a single example 
may not be sufficient to establish this. A single example can enable a broader scope 
claim where nothing more is needed than what is taught by Applicants or what is taught 
by Applicants together with what is know by a person of skill in the art. 

The five affidavits of Mitzi, Tsuei, Dinger, Shaw and Duncombe (Brief 
Attachments AH, Al, AJ, AK and AL) are statements of experts in the ceramic arts. The 
Examiner disagrees with these experts. But the Examiner has not submitted an 
Examiner's affidavit qualifying himself as an expert to rebut the statements of 
Applicants' affiants. To address the Examiner's comment, "those affidavits do not set 
forth particular facts to support the conclusions that all superconductors based on the 
Applicants' work behave in the same way and that one skilled in the art can make those 
superconductors without undue experimentation", Applicants have submitted in 
response to the OA 07/28/2004 the additional affidavits of Dinger, Shaw and Tsuei 
(Brief Attachments AM, AN and AO) each of which extensively describes what persons 
of skill in the art knew prior to Applicants' discovery. In the Final Action the Examiner 
has not commented on these expanded affidavits. These will be described in detail 
below. 



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The Examiner further states at page 14 of the Office Action of 07/28/2004: 



Those affidavits do not overcome the non-enablement rejection. The 
present specification discloses on its face that only certain oxide 
compositions of rare earth, alkaline earth, and transition metals made 
according to certain steps will superconduct at > 26°K. 

Applicants disagree. The affidavits of Shaw, Dinger, Tsuei, Mitzi and Duncombe 
(Brief Attachments AH, Al, AJ, AK and AL) cites numerous books and articles which 
provide the general teaching of ceramic science at the prior to Applicants' discovery. 
The affidavit of Duncombe (Brief Attachment AL) also provides several hundred pages 
copied from Mr. Duncombe's notebooks starting from before Applicants' filing date. In 
regards to these pages, Mr. Duncombe states "I have recorded research notes relating 
to superconductor oxide (perovskite) compounds in technical notebook IV with entries 
from November 12, 1987 to June 14, 1989 and in technical notebook V with entries 
continuing from June 7, 1988 to May 1989." Mr. Duncombe's affidavit list some of the 
compounds prepared using the general principles of ceramic science: Yi Ba2 CU3 O x ; Yi 
Ba 2 Cu 3 0 3 ; Bi 2 .i5 Sri. 98 Cai. 7 Cu 2 0 8+ 8; Ca (2 - X ) Sr x Cu O x and Bi 2 Sr 2 Cu O x . 

The Examiner further states at page 14 of Office Action dated 07/28/2004: 

Those affidavits are not deemed to shed light on the state of the art and 
enablement at the time the invention was made. One may know now of a 
material that superconducts at more than 26°K, but the affidavits do not 
establish the existence of that knowledge on the filing date for the present 
application. Even if the present application "includes all known principles 
of ceramic fabrication", those affidavits do not establish the level of skill in 
the ceramic art as of the filing date of that application. 

It is not relevant that Applicants disclosed specific compositions. There is no 
evidence in the record to indicate that anything more is needed to fabricate 
compositions which can be used to practice Applicants' invention to the full scope to 
which it is claimed in the present application. To the contrary, Applicants have shown 
numerous examples in the affidavits and cited references of samples fabricated 
according to Applicants' teaching useful to practice their claimed invention. 
Notwithstanding, since the claims are apparatus and device claims, Applicants do not 



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believe that they are required to provide a specific teaching of how to fabricate all 
compositions which may be used within the full scope of Applicants' claimed invention. 
This is not required even with respect to claims directed to a chemical composition as 
clearly stated by In re Angstadt Factor 8 supra - "The dissent wants appellants to make 
everything predictable in advance, which is impracticable and unreasonable." 185 
USPQ 152. Moreover, applicants in response to the OA 07/28/2005 have submitted 
additional affidavits of Shaw, Dinger and Tsuei, (Appeal Brief Attachments AM, AN and 
AO) described in detail below, that show the state of the art prior to applicants discovery 
and how that knowledge in combination with Applicants' discovery lead without undue 
experimentation to other species that come within the scope of Applicants' claims. 

The Examiner states referring to the five affidavits in Attachments AH, Al, AJ, AK 
and AL that "these affidavits are not deemed to shed light on the state of the art and 
enablement at the time the invention was made," that is, it is the Examiner's conclusory 
opinion. Applicants disagree. The affidavits clearly state that all that is needed is 
Applicants' teaching and the ordinary skill of the art to practice Applicants' claimed 
invention. This view is corroborated by Poole 1988 (Brief Attachments AF and AW) 
which as noted above clearly states that the chemistry involved in making high T c 
superconductors does not have to be understood which is a significant factor in why 
Applicants' discovery was duplicated and other species within the scope of their claims 
were found in a short time after Applicants' discovery. Under 35 USC 1 1 2, first 
paragraph, all that is necessary is "[t]he specification shall contain a written description 
... to enable any person skilled in the art ... to make and use the same." Applicants 
initiated the filed of high T c superconductors. If a person of skill in the art from the 
description in Applicants' specification can practice Applicants' claimed invention, it is 
enabled. Applicants are not required to show that a person of skill in the art had the 
knowledge prior to Applicants' invention. If this were the case, Applicants would not be 
the first, sole and only inventors, since the invention would be known by others. 
Applicants teach ceramic processing methods to fabricate high T c superconductors. 
This uses general principles of ceramic science known prior to Applicants' discovery. 
Thus Applicants' claims are fully enabled. The Examiner has provided no evidence to 
the contrary. The Examiner has produced no evidence or argument to demonstrate that 



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a person of skill in the art, at the time of Applicants' discovery, could not practice the 
claimed invention from Applicants' teaching. The utilization of such teaching to practice 
Applicants' claimed invention was not known prior to Applicants' discovery. That is 
Applicants' discovery and thus why they are entitled to their claimed invention. 

The Examiner further states at page 14 of Office Action dated 07/28/2004: 

It is fully understood that the applicants are the pioneers in high 
temperature metal oxide superconductivity. The finding remains, 
nonetheless, that the disclosure is not fully enabling for the scope of the 
present claims. 

If Applicants pioneered the field of high T c superconductivity, that is, they initiated 
the substantial worldwide effort to validate their discovery and to synthesize others 
specific embodiment of their generic and specific teaching, then Applicants should be 
entitled to generic claims since others based their work on Applicants' teaching. The 
Examiner's conclusion "that disclosure is not full enabling for the scope of the present 
claims" has not been supported. There is no argument or evidence that undue 
experimentation is necessary to practice Applicants' claims and thus the Examiner has 
not made a prima facie showing of no enablement. 

The Examiner further states at page 15-16 of Office Action dated 07/28/2004: 

The applicants quote a statement from "part of the previous Office Action 
and asserts that the "Examiner does not support this statement with any 
case law citations." That assertion is incorrect. Seven decisions have 
been cited as providing the legal basis for this determination of non- 
enablement. 7 

The Examiner has cited the following seven decisions, which have been 
discussed in detail above, in support for the determination of non-enablement: In re 
Fisher , 166 USPQ 18, 24; and In re Anqstadt and Griffin , 190 USPQ 214, 218. In re 
Colianni , 195 USPQ 150, 153, 154 (CCPA 1977). In re Cook , 169 USPQ 298, 302; and 
Cosden Oil v. American Hoechst , 214 USPQ 244, 262. In re Corkill , 226 USPQ 105, 
1009. Brenner v. Manson . 383 US 519, 148 USPQ 689. 



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The Examiner has not applied the rational of these decisions. In fact, in the 
prosecution Applicant pointed out that the Examiner seems to have specifically avoided 
applying this case law and, consequently, Applicants take the Examiner's silence as 
concurrence in the manner that Applicants have applied this case law. As described 
above, it is Applicants view that the Examiner is misapplying this case law. 

The Examiner further states at page 15 of Office Action dated 07/28/2004: 

The applicants argue that their own examples do not support the 
determination of non-enabling scope of the invention. Nevertheless, the 
record is viewed as a whole. If the applicants could not show 
superconductivity with a T c > 26°K for certain compositions falling within 
the scope of the present claims, it is unclear how someone else skilled in 
the art would have been enabled to do so at the time the invention was 
made. 

The Examiner incorrectly states "Applicants could not show superconductivity 
with T c > 26°Kfor certain compositions falling within the scope of the present claims." 
The claims of the parent application were directed to a method of flowing a 
superconducting current in a composition having aT c > 26°K. The corresponding 
claims herein are directed to an apparatus flowing a superconducting current in a 
composition having aT c > 26°K. If a composition has a T c < 26°K, a method or 
apparatus for flowing a superconducting current in such a compound cannot fall within 
the scope of Applicants' claims. Applicants are not claiming a composition of matter. 
They are claiming their discovery, an apparatus passing a superconductive current 
through a composition, such as a oxide having aT c > 26°K. No one prior to Applicants 
knew this. That is why they received the Nobel Prize in Physics in 1987. Moreover, it 
appears that the Examiner is stating that if following Applicants' teaching a sample is 
made that does not have a high Tc, this automatically renders Applicants' genus claims 
not enabled. The Examiner cites no authority for this position. Applicants respectfully 
submit that this position is inconsistent with the law of enablement which is directed to 
"how to make and use" the claimed invention. Samples made following Applicants 
teaching which do not have high Tc is not evidence that undue experimentation is 



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necessary to make a sample having the desired Tc property. The Examiner has not 
shown that samples described by Applicant not having the desired high Tc are in fact 
high Tc materials which cannot be made according to Applicants teaching as of 
Applicants' earliest filing or priority date. Samples actually made is evidence of the 
enablement of how to make those samples. Testing such samples is evidence of how 
to use these samples. That after such testing it is determined that such a composition 
does not come within the scope of the claim is not evidence of lack of enablement but is 
evidence of routine screening permitted by decisions such as Ex parte Jackson supra. 
Applicants do not have to foresee all species that come within the scope of their claims. 

The Examiner avoids the essential issues. Even though Applicants' claims do 
not cover inoperable species, In re Angstadt clearly permits a claim to include 
inoperable species where to determine which species works does not require undue 
experimentation. The Examiner has not met the Examiner's burden of showing that 
undue experimentation is needed to determine which compositions have T c ^ 26°K and 
which have T c < 26° K as required by In re Angstadt, supra. The Examiner has not 
presented any substantial evidence that undue experimentation is required to practice 
Applicants' claim. This is the Examiner's burden. On the other hand, Applicants have 
presented the five affidavits of Dinger, Mitzi, Tsuei, Shaw and Duncombe (Brief 
Attachments AH, Al, AJ, AK, AL, AM, AN and AO) of experts, the three additional 
affidavits of Dinger, Tsuei and Shaw (Brief Attachments AM, AN and AO) Poole 1988 
(Brief Attachments AF and AW), Poole 1995 (Brief Attachment W), Poole 1996 (Brief 
Attachment AG), and the article of Rao (Brief Attachments AB), the list in the Handbook 
of Chemistry and Physics and the books and articles cited in the list (Brief Attachment 
AC and the Artifacts of this application referred to in Advisory Action dated 8/14/2006) 
and the article by Schuller et al. (Brief Attachments AZ), The article of Schuller (cited 
by the Examiner in the Final Action) states at page 4 "of course enlightened" empirical 
searches guided by chemical and materials intuition or schematic searches using well- 
defined strategies ... with the oxides gave rise to many super conducting systems". All 
of Applicants' evidence support Applicants' statement that once a person of skill in the 
art knows of Applicants' invention, it is straight forward to fabricate other sample. Also, 



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in response to the Examiner's inquiry, "if the Applicants could not show 
superconductivity with a T c > 26°K for certain compositions falling within the scope of 
the present claims, it is unclear how someone else skilled in the art would have been 
enabled to do so at the time the invention was made," it is clear that a person of skill in 
the art would have been enabled by routine experimentation following Applicants' 
teaching to determine other samples with T c ^ 26°K and other samples that do not have 
such a T c . As stated by In re Cook supra this is all that is required, and there is no 
evidence in the record to the contrary. Applicants again note that the Examiner 
incorrectly states samples with T c < 26 K come within the scope of Applicants' claims. 
That there are samples made according to the principals of ceramic science that do not 
have T c ^ 26 K is not evidence of lack of enablement. Moreover, none of these come 
within the scope of Applicants' claims. 

The Examiner further states at page 15 of Office Action dated 07/28/2004: 

The applicants assert that "(b)y the Examiner's statement that these 
(statements in the affidavits) are conclusionary (sic) the Examiner appears 
to be placing himself up as an expert in the field of superconductivity" and 
"respectfully request that the Examiner submit an affidavit in the present 
application rebutting the position taken by applicants' 3 affiants." 
Notwithstanding those assertions, this Examiner has determined that 
those affidavits were insufficient because they were conclusory only, i.e., 
they lacked particular facts to support the conclusions reached. 

The Examiner further states that Applicants' affidavits (Brief Attachments AH, Al, 
AJ, AK and AL) are conclusory. The Examiner appears to be placing himself up as an 
expert in the field of superconductivity. Applicants requested that the Examiner submit 
an affidavit in the present application rebutting the position taken by Applicants' five 
affiants, but the Examiner has not submitted an affidavit. The facts are that the five 
affiants are experts in the art, the Examiner is not. The Examiner states that those 
"affidavits were insufficient because they were conclusory only, i.e., they lacked 
particular facts to support the conclusions reached". Applicants submitted the affidavit 
of Peter Duncombe (Brief Attachments AL) which has provided hundreds of pages of 
notebook entries showing that he fabricated superconductive compositions according to 



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the teaching of Applicants' specification. Moreover, Applicants have submitted the 
additional affidavits of Dinger, Tsuei and Shaw (Appeal Brief Attachments AM, AN and 
AO) described in detail below. Subsequent to submitting the Affidavits of Appeal Brief 
Attachments AM, AN and AO the Examiner has stated at page 8 of the Final Office 
Action, "The Examiner does not deny ... 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, ... 
can make the known superconductive compositions." (Emphasis in the original.) Thus it 
is the Examiner's finding of fact that the "known superconductive compositions" are " 
based in some way on [applicants'] teachings" and thus under In re Fisher supra, 
Applicants "should be allowed to dominate the future patentable inventions of others." 

The Examiner has provided no substantial evidence to support this assertion of 
non-enabling scope of the invention. It is requested that the Examiner support his 
assertion with factual evidence or an Examiner's affidavit and not unsupported 
statements. 

The Examiner further states at page 16 of Office Action dated 07/28/2004: 

The applicants argue that the "Examiner has provided no substantial 
evidence to support this assertion (of non-enabling scope of the 
invention). It is respectfully requested that the Examiner support (his) 
assertion with factual evidence and not unsupported statements." 
Nevertheless, the determination of non-enabling scope is maintained for 
the reasons of record. 

The Examiner has the burden of showing that the claims are not enabled. The 
Examiner has merely asserted that the theory of high T c superconductivity was not 
understood at the Applicants' priority date. Applicants do not have to have a theory of 
high T c superconductivity in order for their teaching to enable their claims. It is only 
necessary that a person of ordinary skill in the art be able to practice the claimed 
invention from Applicants' teaching without undue experimentation. The Examiner has 
not shown that undue experimentation is necessary to practice the claims of Applicants' 



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invention. The Examiner has merely stated that since Applicants' teaching shows that 
there are materials which are not superconducting with T c ^ 26°K, this is evidence as 
lack of enablement. Such materials do not come within the scope of Applicants' claims 
since Applicants' claims only include those materials that are superconducting. 
Applicants' affidavits have shown that the method of making the materials was well 
known in the art prior to Applicants' discovery. Thus persons of ordinary skill in the art 
knew how to make these materials. Which particular compositions have T c ^ 26°K is 
determined by routine experimentation which is within the skill of the art as stated by 
Applicants' affidavits. The CCPA in In re Cook supra says nothing more is required. 
The Board in Ex parte Jackson supra states nothing more is required. The Examiner's 
statement "[nevertheless, the determination of nonenabling scope is maintained for the 
reasons of record" is conclusory and not responsive to the evidence presented by 
Applicants. There is no rebuttal or showing of its inadequacy to establish enablement. 

The Examiner further states at page 16 of Office Action dated 07/28/2004: 

The applicants argue that the "standard of enablement for an apparatus is 
not the same as the standard of enablement for a composition of matter" 
and that their claimed invention is enabling because it is directed to a 
method of use rather than a composition. Basis is not seen for that 
argument, to the extent that it is understood. It is noted that 35 U.S.C. 112, 
first paragraph, reads as follows:... 

The Examiner is applying an incorrect standard of enablement. The Examiner is 
applying a standard applicable to composition of matter. Applicants are not claiming a 
composition of matter. As shown by Applicants' prior comments Applicants have in fact 
fully enabled the composition of matter. Therefore, Applicants have provided excess 
enablement for the claimed invention. The enablement for a claim directed to use of a 
material (e.g., a method of or an apparatus for use of the material), directed to the 
apparatus or method of use is more limited than the enablement for a composition of a 
matter. Applicants note that the Board in Ex parte Jackson supra recognizes that 
enablement is applied differently in different contexts when it says at 217 USPQ 808 
"The problem of enablement of processes carried out by microorganisms were uniquely 



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different from the field of chemistry generally." Notwithstanding, it is well settled law that 
claims to a composition of matter can encompass a number of inoperable species. 
However, Applicants' claims do not cover any inoperable species. The claims only 
encompass apparatus for flowing a superconducting current in compositions that are 
superconductors with aT c > 26°K. Those compositions that are not superconducting 
with aT c > 26°K are not encompassed by Applicants' claims reciting these limitations. 
Applicants note that a claim to a composition of matter is dominant to any use of that 
composition of matter and claims directed to an apparatus for use of a composition of 
matter are necessarily of narrower scope than claims to the composition of matter. 
Applicants' claims do not encompass uses other than those which the claims are limited 
to by the use limitations recited in the claims. Applicants' claims are directed to what 
they have discovered. Therefore, Applicants' claims fully satisfy the requirements of 35 
USC 112. 

The claimed invention is enabled because it is directed to an apparatus of use 
rather than a composition. Applicants are claiming their discovery, comprising an 
apparatus comprising a superconducting current in a composition with aT c > 26°K. If a 
patent applicant claims an apparatus for flowing current through a circuit having a 
resistive element, the applicant does not have to describe every method of making 
every type of resistive element for the claim to dominate all resistive elements. Such a 
claim reads on resistive elements made of materials not known at the time of filing since 
the discovery is not the material but the apparatus for use. Applicants discovered that a 
superconducting current can be flowed in a composition having aT c > 26°K. That is 
what Applicants are claiming. This is analogous to a claim to a composition of matter 
based on a single disclosed use. The composition of matter claim covers all uses even 
those not disclosed. 

Process of use or apparatus for use claims are subject to the statutory provisions 
of 35 USC 112, first paragraph. All that is necessary to satisfy §1 12 is the statement 
that a superconducting current can be passed through a composition, such as ceramic 
material, more particularly metal oxides having aT c > 26°K. How to make there 



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materials was well understood prior to Applicants' discovery. The Examiner has not 
disagreed with this. The Examiner has essentially said this by rejecting Applicants' non- 
allowed claims as obvious under §1 03(a) in view of the Asahi Shinbum article (Brief 
Attachment AV) described below. Since Applicants' generic teaching does not prevent 
others from obtaining patents to specific formulas, Applicants are entitled to generic 
claims to their discovery. Applicants filed this application soon after their discovery. 
Applicants published their results soon after their discovery. This was the quickest way 
to promote the progress of the field of high T c superconductivity which can have 
substantial societal benefits such as less expensive electric power and more effective 
medical diagnostic tools. It is a policy of the United States Constitution, which 
establishes the United States Patent System, to encourage early disclosure of 
inventions to promote the progress of the useful arts. The Examiner's position that 
Applicants' generic claims are not fully enabled frustrates this policy. Applicants could 
have decided not to publish Applicants' article and not to file the present application 
while engaging in years of further experimentation to find all specific examples which 
had the optimal T c . If Applicants acted this way, there would not have been the 
explosive worldwide effort to fully explore and implement high T c technology. The 
rationale used by the Examiner is contrary to the Constitutional policy to promote the 
progress of the useful arts by early disclosure of an invention and contrary to the CCPA 
decision in In re Angstadt. Early disclosure should not be a penalty to Applicants. 
Applicants are pioneers in discovering that compositions, such as, ceramics, more 
particularly oxides, have T c ^ 26°K. A first discoverer of a wheel whose specific 
embodiment is a solid disc rotateable about an axle can claim a cylindrical member 
adapted for rotation about the axle and for rolling on a surface, that is, their discovery. 
This claim is dominant to a latter inventor's improved wheel comprising spokes which 
has the advantage of much lighter weight than a disc. The latter inventor is entitled to a 
species claim within the scope of the dominant claim to a wheel. Applicants are entitled 
to a dominant claim to their discovery. The Examiner's rational would preclude this. 
The dissent in In re Knowlton states: 

The protection granted, if appellant's claims are allowed, gives him the 
right to exclude others from making, using, or selling the invention. 35 
USC 154. No right is granted which includes the right to use. Thus, a 



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subsequent inventor of a new and unobvious method of scrambling may 
obtain a patent which, by the terms of its grant, is subservient to 
appellant's patent. However, the subsequent inventor would have the right 
to exclude appellant from making, using, or selling the later invention. For 
that reason, broad protection may be granted here without requiring 
disclosure of every embodiment within the scope of the claims . 
(Emphasis added) In re Knowlton, 500 F.2d 566, 573 (C.C.P.A. 1974) 

Thus a genus claims is enabled when there are undisclosed species that are 
later discovered and separately patentable. 

The Examiner further states at page 16 : 



The specification shall contain a written description of the invention, and of 
the manner and process of making and using it, in such full, clear, 
concise, and exact terms as to enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make and 
use the same, and shall set forth the best mode contemplated by the 
inventor of carrying out his invention. Apparatus claims also would be 
subject to the statutory provisions of 35 U.S.C. 112, first paragraph. 

Applicants' invention is a device, apparatus, structure, etc having aT c > 26°K 
element through which a superconducting current is flowing. Applicants discovered that 
materials had aT c > 26°K. Applicants did not discover how to make these materials, 
which was well known prior to Applicants' discovery. Also, it was well known prior to 
Applicant's discovery how to cause superconducting currents in materials having a T c at 
lower temperatures. Applicants do not have to specifically describe every composition 
that come within the scope of their claims. Applicants only have to provide a teaching 
based on which those compositions can be made by a person of ordinary skill in the art 
with out undue experimentation. Applicants' have done this and the Examiner has not 
rebutted this by showing any data or argument that persons of skill in the art do not 
know "how to make" or "how to practice" the full scope of Applicants' claims. 

The Examiner further states at page 17 of Office Action dated 07/28/2004: 



The applicants assert that the "Examiner has not shown by evidence not 
contained within applicants' teaching that the art of high T c 
superconductors is unpredictable in view of applicants' teaching" (spelling 



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and punctuation errors corrected). To the extent that the same assertion is 
understood, the rejection is maintained for the reasons of record. 

Applicants' statement is very clear. The Examiner is trying to avoid the issue 
since the Examiner has not shown by evidence not contained within Applicants' 
teaching that the art of high T c superconductors is unpredictable within the meaning of 
the U.S. Patent law. The Examiner has merely "deemed" it to be so for which there is 
no cited authority for an Examiner to be permitted to do this. This is merely conclusory. 

The Examiner further states at page 17 of Office Action dated 07/28/2004: 

The applicants point to "Copper Oxide Superconductors" by Charles P. 
Pooler Jr., et al., (hereinafter, "the Poole article") as supporting their 
position that higher temperature superconductors were not that difficult to 
make after their original discovery. 

Initially however, it should be noted that the Poole article was published 
after the priority date presently claimed. As such, it does not provide 
evidence of the state of the art at the time the presently claimed invention 
was made. 

Applicants have extensively referred to "Copper Oxide Superconductors" by 
Charles P. Poole, Jr., et al., (hereinafter, "the Poole 1988 book" or "the Poole 1988 
article") (Brief Attachments AF and AW) as supporting their position that higher 
temperature superconductors were not difficult to make after their original discovery. 
This is because methods of making compositions which could be used to practice 
Applicants' claimed invention were well known prior to Applicants' discovery that 
materials, such as ceramic materials, had aT c > 26°K. In response the Examiner states 
"Initially, however, it should be noted that the Poole article [Poole 1988 (Brief 
Attachments AF and AW)] was published after the priority date presently claimed." It is 
not relevant that Poole 1988 (Brief Attachments AF and AW) was published after the 
priority date since it is clear evidence that only routine experimentation based on what 
was known to persons of skill in the art prior to Applicants' discovery was needed to 
practice Applicants' claimed invention and there is no indication that anything more than 
Applicants' teaching and what was known prior to Applicants' discovery is needed. This 



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is corroborated by the affidavits of Brief Attachments AH to AO, in particular paragraphs 
46 of Brief Attachments AM to AO. The Examiner further comments on the Poole 1988 
book (Brief Attachments AF and AW) stating, "[a]s such, it does not provide evidence 
of the state of the art at the time the presently claimed invention was made". As noted 
Poole 1988 clearly states that the materials that can be used within the scope of 
Applicants' claims were easily made. And as stated above the Examiner has 
acknowledged that the fabrication techniques were well known prior to Applicants' 
invention. Poole 1988 states that is why so much work was done in so short a period of 
time. This is clear and convincing evidence that persons of skill in the art were fully 
enabled by Applicants' teaching to practice Applicants' claimed invention prior to their 
discovery. The CCPA in In re Hogan, supra, and the CAFC in In re Wright, supra, 
explicitly permit later publications to corroborate the truth of an applicants' teaching. It 
is not necessary for Applicants to show that the data was generated prior to Applicants' 
filing date. The CCPA in In re Angstadt, supra, clear states this is not required. The 
Examiner has not stated, nor is there any evidence presented by the Examiner, nor is 
there any indication in the Poole 1988 book that anything more than what Applicants 
taught was necessary to practice Applicants' claimed invention. It is only necessary that 
persons of skill in the art can practice Applicants' claimed invention from Applicants' 
teaching without undue experimentation. As stated in In re Angstadt there is no 
requirement for Applicants to prove that the experimentation to make compositions to 
practice Applicants' claimed invention is undue just because some experimentation is 
needed to select compositions that come within the scope of the Applicants claims. The 
Examiner is not applying the standard of In re Angstadt. 

The Examiner further states referring to Poole 1988 at page (Brief Attachments 
AF and AW) 1 8 of Office Action dated 07/28/2004: 

Finally, the Preface states in part at A3: "The unprecedented worldwide 
effort in superconductivity research that has taken place over the past two 
years has produced an enormous amount of experimental data on the 
properties of the copper oxide type materials that exhibit superconductivity 
above the temperature of liquid nitrogen. During this period a consistent 
experimental description of many of the properties of the principal 



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superconducting compounds such as BiSrCaCuO, LaSrCuO, TIBaCaCuO 
and YBaCuO has emerged, The field of high-temperature 
superconductivity is still evolving ..." That preface is deemed to show that 
the field of high-temperature superconductivity continued to grow, on the 
basis of on-going basic research, after the Bednorz and Mueller article 
was published. 

The continued growth referred to in the passage from Poole 1988 book (Brief 
Attachments AF and AW) quoted above does not mean that this work is not based on 
Applicants' initial fundamental teaching and it does not mean that this required undue 
experimentation. The Poole 1988 book, as quoted above, states that the 
unprecedented amount of work done in the short period of time after Applicants' work 
was because the materials "are not difficult to synthesize." Moreover, as quoted above 
the CCPA In re Fisher 166 USPQ 18, supra, states "such an inventor should be allowed 
to dominate future patentable inventions of other where those inventors were based on 
in some way on his teachings." Moreover, the referred to future developments in the 
passage above are not necessarily patentably distinct from Applicants' teachings. 
Those who developed these compounds would have a reasonable expectation of 
success based on Applicants' teaching and Applicants' article (Brief Attachment AX) 
which motivated the search for species that come within the scope of Applicants' claims. 
The Examiner has provided no evidence to the contrary. Alternatively, as stated above, 
if such later developments are patentable species within the scope of Applicants' 
claims, under In re Fisher, supra, and In re Knowlton, supra, such a later inventor and 
applicant is entitled to a patent to such species and the earlier inventor is entitled to a 
genus claim that dominates the later invented patentable species. Individual 
compositions fabricated and tested based on Applicants' teaching may be separately 
patentable species within the scope of Applicants' generic claims because of 
unexpected results. But, that issue is not under review here. Moreover, the Poole 1988 
(Brief Attachments AF and AW) preface states, "during this period a consistent 
experimental description of many of the properties of the principal superconducting 
compounds such as BiSrCaCuO, LaSrCuO, TIBaCaCuO and YBaCuO has emerged." 
Poole 1988 is clearly stating that "a consistent experimental description ... has 



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emerged", that is consistent with applicants original description in their publication (Brief 
Attachment AX), based on which they received the Nobel prize. 

The first, BiSrCaCuO and third, TiBaCaCuO, of these compositions referred to by 
the Examiner in the passage above does not come within the scope of the claims 
allowed by the Examiner since they do not contain a rare earth or Group III B element, 
even though Poole 1988 (Brief Attachments AF and AW) states that they are easy to 
make following the general principals of ceramic science as taught by Applicants. As 
stated above, to satisfy the enablement requirement Applicants are not required to 
foresee all species that come within the scope of Applicants' claims. Moreover, Poole 
1995 (Brief Attachment Z) described below and in paragraph 23-25 of the Newns 
Affidavit (Brief Attachment AP) and in paragraph 47 of the DST AFFIDAVITS (Brief 
Attachments AM to AO) states that these compositions are "metallic, oxygen-deficient 
... perovskite-like, mixed valence copper compounds" as Applicants' described them to 
be in Applicants' Article (Brief Attachment AX) which is incorporated by reference into 
Applicants' specification. 

Other data supporting Applicants' view is reported in the Review Article 
"Synthesis of Cuprate Superconductors" by Rao et al., IOP Publishing Ltd. 1993. (The 
Rao Article) A copy of this article is in Brief Attachment AB. This article lists in Table 1 
the properties of 29 superconductors made according to Applicants' teaching. Twelve 
(#'s 1 , 8-1 3,16,1 7, 20, 21 , 27 and 28) of those listed do not come within the scope of 
the claims allowed by the Examiner. Only three of the 29 have a T c < 26°K. Those 
twelve do not contain one or more of a rare earth, a Group III B element or an alkaline 
earth element. It is thus clear that broader claims than presently allowed should be 
allowed since it is clear that the allowed claims can be avoided following Applicants' 
teaching without undue experimentation. As stated in In re Fisher supra, Applicants are 
entitled to claims which encompass these materials since they were made following 
Applicants' teaching. 



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The article of Rao et al. (Brief Attachment AB) in the first sentence of the 
introduction citing Applicants' article (Brief Attachment AX) - which is incorporated by 
reference in the application under appeal at page 6 - acknowledges that Applicants 
initiated the field of high T c superconductivity. Applicants further note that the Rao 
article acknowledges that "a large variety of oxides" are prepared by the general 
principles of ceramic science and that Applicants discovered that oxides are high T c 
superconductors. 



The Rao article cites reference 5 therein - the book "New Directions in Solid 
State Chemistry", Rao et al. 1989 (Cambridge; Cambridge University Press) for which 
there is a 1986 edition which predates Applicants' filing date (Brief Attachment AB), 
The Rao article states at pagel , first paragraph of left column: 



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 



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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). The Examiner has not comment on nor rebutted this. 

The Examiner further states at page 18-20 of Office Action dated 07/28/2004: 



The applicants submitted three affidavits, one each from Drs. Tsuei, 
Dinger and Mitzi which were signed in May of 1998. Except for one 
change, those three affidavits are the same as the ones submitted before 
and discussed above. 

Those affidavits have been changed to indicate that the present 
application "includes all known principles of ceramic fabrication known at 
the time the application was filed." 

However, the additional indication also is considered to be a conclusory 
statement unsupported by particular evidence. 

As discussed above with regard to Applicants' response to the Office Action dated 
07/28/2004 Applicants have submitted five affidavits of Dinger, Shaw and Tsuei (Brief 
Attachments AH, Al, AJ, AK and AL). Expanded affidavits (Brief Attachments AM, AN 
and AO) described in detail below include an extensive showing of documentary 
evidence of facts known prior to Applicants' discovery. These affidavits conclusively 
show that once Applicants discovery is known undue experimentation is not necessary 
to practice Applicants' invention to the full scope of the claims. 

The Examiner further states at page 19 of Office Action dated 07/28/2004: 



Application have submitted three affidavits attesting to the applicants' 
status as the discoverers of materials that superconduct > 26°K. Each of 
the affidavits states that "all the high temperature superconductors which 
have been developed based on the work of Bednorz and Mueller behave 



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in a similar manner (way)". Each of the affidavits add "(t)hat once a 
person of skill in the art knows of a specific transition metal oxide 
composition which is superconducting above 26°K, such a person of skill 
in the art, using the techniques described in the (present) application, 
which includes all known principles of ceramic fabrication, can make the 
transition metal oxide compositions encompassed by (the present) claims 
... without undue experimentation or without requiring ingenuity beyond 
that expected of a person of skill in the art. 

It is the Examiner's maintained position that while general principles of 
ceramic fabrication were most certainly known prior to the filing date of the 
instant application, the utilization of such techniques to produce 
superconductive materials within the scope of the instant claims were not 
known. The affidavits are not effective to demonstrate enablement at the 
time the invention was made. As stated in paper #66, page 8, one may 
now know of a material that superconducts at more than 26°K, but the 
affidavits do not establish the existence of that knowledge on the filing 
date of the present application. 

When the Examiner made this statement in the Office Action dated 07/28/2004 
Applicants had submitted five (not three) affidavits (Brief Attachments AH, Al, AJ, AK 
and AL). The Examiner acknowledges that the fabrication techniques necessary to 
practice Applicants' invention were known prior to the filing dated of the present 
application. But, the Examiner further states that the "utilization of such techniques to 
produce superconductive materials within the scope of the instant claims were not 
known". The scope of the instant claims is an apparatus for flowing a superconductive 
current in a composition having aT c > 26°K. That is Applicants' discovery. That is why 
it was not known prior to Applicants' discovery. How to make this type of material was 
known prior to Applicants' discovery. As described in detail below in Applicants' first 
filed application serial no. 07/053,307, filed 05/22/1987, Applicants' claims were directed 
to compositions of matter having high Tc properties. These claims were rejected under 
35 USC 102 as being inherent over prior art. Thus it is incorrect for the Examiner to say 
in regards to known principals of ceramic fabrication "utilization of such techniques to 
produce superconductive materials within the scope of the instant claims was not 
known." It is true that these materials were not previously made with the intent to use 
them as superconductors. This statement of the Examiner is inconsistent with the 
Examiner's earlier rejection for inherency. Prior to Applicants' discovery, It was not 



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known that they were superconductive with aT c > 26°K. The Examiner incorrectly 
states "one may now learn of a material that superconducts at more than 26°K, but the 
affidavits do not establish the existence of that knowledge on the filing date of the 
present invention." If that knowledge was known by another prior to discovery, 
Applicants would not have a patentable invention since they would not be the initial first 
and sole inventor. Moreover, according to the CCPA in In re Angstadt, supra, In re 
Cook, supra and In re Fisher, supra, Applicants' teaching does not have to teach in 
advance all examples that come within the scope of their claims. (See In re Angstadt 
Factor 7 and 8 above). The affidavits state that the knowledge of how to make 
compositions within the scope of Applicants' claims, such as ceramics and oxides made 
by the general principles of ceramic science was known prior to the Applicants' 
discovery. In particular, the affidavits of Mitzi, Dinger, Tsuei, Shaw and Duncombe 
(Brief Attachments AH, Al, AJ, AK and AL) refer to a number of articles and texts on the 
general principles of ceramic science. One of these texts is "Structures, Properties and 
Preparation of Peroskite-type Compounds", F.S. Galasso (1969). (Brief Attachment E) 
The additional affidavits in Brief Attachments AM to AO provide extensive detail on how 
to fabricate samples according to applicants teaching. 

As stated above Applicants note that Poole 1988 (Brief Attachments AF and 
AW) support their position that high temperature superconductors were not difficult to 
make after their original discovery. The Poole 1988 book was published after 
Applicants' initial discovery which was published in Applicants' article (Brief Attachment 
AX). The Examiner states "[a]s such, it does not, provide evidence of the state of the 
art at the time the presently claimed invention was made". Applicants disagree. The 
preface of the Pool 1988 book (Brief Attachments AF and AW) says "[t]his volume 
reviews the experimental aspects of the field of oxide superconductivity with transition 
temperatures from 30K to above 123K, from the time of its discovery by Bednorz and 
Muller in April, 1986 until a few months after the award of the Nobel Prize to them in 
October, 1987." Thus the book reports on work done within eighteen months of 
Applicants' discovery in April 1986 and within eleven months of its publication in 
September, 1986. This passage is referring to Applicants and Applicants' article (Brief 



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Attachment AX) referred to at page 6 of Applicants' specification. This book 
acknowledges that Applicants are the discovers of the field of high temperature 
superconductivity and that persons of skill in the art can make species of high Tc 
material useful to practice Applicants claims. The Examiner's view that the skill of the 
art was insufficient at the time of the filing date of the present application is untenable in 
the view of Poole 1988, Poole 1995, Poole 1996 (Brief Attachments 
AF, AW, W and AG), and Applicants' 132 affidavits of Tsuei, Mitzi, Shaw, Dinger and 
Duncombe, (Brief Attachments AH, Al, AJ, AK and AL) in particular that of Peter 
Duncombe (Brief Attachment AL) which reports data prior to the Applicants' filing date 
and in addition in view of the extensive affidavits of Dinger, Shaw and Tsuei (The DST 
AFFIDAVITS Brief Attachments AM, AN and AO). 

Applicants note that it is generally recognized that it is not difficult to fabricate 
high T c materials in particular ceramics, in particular oxides, more particularly transition 
metal oxides and more particularly copper oxides that are superconductive after the 
discovery by Applicants. Chapter 5 of the Poole 1988 book (Brief Attachments AF and 
AW) entitled "Preparation and Characterization of Samples" 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 1998 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." The Poole 1988. further states at pages 61-62 "[i]n the solid state 
reaction technique one starts with oxygen-rich compounds of the desired components 
such as oxides, nitrates or carbonates of Ba, Bi, La, Sr, Ti, Y or other elements. ... 
These compounds are mixed in the desired atomic ratios and ground to a fine powder to 
facilitate the calcination process. Then these room-temperature-stabile salts are 
reacted by calcination for an extended period (~20hr) at elevated temperatures 



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(~900°C). This process may be repeated several times, with pulverizing and mixing of 
the partially calcined material at each step." This is generally the same as the specific 
examples provided by Applicants and as generally described at pages 8, line 19, to 
page 9, line 5, of Applicants' specification which states "[t]he methods by which these 
superconductive compositions can be made can use known principals of ceramic 
fabrication, including the mixing of powders containing the rare earth or rare earth-like, 
alkaline earth, and transition metal elements, coprecipitation of these materials, and 
heating steps in oxygen or air. A particularly suitable superconducting material in 
accordance with this invention is one containing copper as the transition metal." 
Consequently, Applicants have fully enabled high T c materials and their claims. 



As stated in the affidavit of Brief Attachments AH to AO the preface of the book 
by Poole 1988 (Brief Attachments AF and AW) quoted above, the work of Applicants 
initiated the field of high temperature superconductors and these materials are not 
difficult to synthesize. And according In re Fisher "it is apparent that such an inventor 
should be allowed to dominate future patentable inventions of others where those 
inventions were based in some way on his teaching." (166 USPQ 18, 24) 



The Examiner further states at page 20 of Office Action dated 07/28/2004: 



A key issue that can arise when determining whether the specification is 
enabling is whether the starting materials or apparatus necessary to make 
the invention are available. In the biotechnical area, this is often true 
when the product or process requires a particular strain of microorganism 
and when the microorganism is available only after extensive screening. 
The Court in In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 
1 971 ), made clear that if the practice of a method requires a particular 
apparatus, the application must provide a sufficient disclosure of the 
apparatus if the apparatus is not readily available. The same can be said 
if certain chemicals are required to make a compound or practice a 
chemical process. In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 
(CCPA 1981). 

The Examiner respectfully maintains, for the reasons of record, that the 
disclosure is not fully enabling for the scope of the present claims. 



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The Examiner cites In re Ghiron, 169 USPQ 723, 727 stating In re Ghiron "made 
it clear that if practice of a method requires a particular apparatus, the application must 
provide a sufficient disclosure of the apparatus if the apparatus is not readily available." 
No special apparatus is needed to practice Applicants' claimed invention since the 
apparatus was readily available before Applicants' discovery. The Examiner cites no 
evidence to the contrary. For example, see "Theory of Superconductivity" M. Von Laue, 
Academic Press, Inc., 1952 (Brief Attachment AT) in which is shown that an apparatus 
to flow a superconducting current in a material at a temperature less than the T c of the 
material was well known in 1952 and from the affidavits of Brief Attachments AH to AO 
in particular The DST AFFIDAVITS (Brief Attachments AM, AN and AO) and Poole 
1988 (Brief Attachments AF and AW) apparatus to make ceramic materials was well 
known prior to Applicants' discovery. Superconducting was discovered in 191 1 . Thus 
the apparatus to create superconductive currents were know for more than 70 years 
prior to Applicants' discovery. 

The Examiner citing In re Howarth 210 USPQ 689, 691 states "The same can be 
said if certain chemicals are required to make a compound or practice a chemical 
process." Firstly, the claims of the present invention are not directed to a chemical 
process. In In re Howarth at 210 USPQ 689, 692, The United States Supreme Court 
citing Webster v. Higgins 105 US 580, 586 states an applicant "may begin at the point 
where his invention begins, and describe what he has made that is new and what it 
replaces of the old. That which is common and well known is as if it were written out in 
the patent and delineated in the drawings." In the present invention how to create a 
superconducting current was well known in the art before Applicants' discovery. The 
process for making the compounds through which the apparatus of Applicants' claims 
carry the superconducting current is not new but well know prior to Applicants' 
discovery. What is new is Applicants' discovery that materials exist having aT c > 26°K. 
This is what Applicants are claiming, their discovery of an apparatus carrying a 
superconductive current with a T c > 26°K. In re Howarth states at 210 USPQ 689, 691 
"an inventor need not ... explain every detail since he is speaking to those skilled in the 
art. What is conventional knowledge will be read into the disclosure." The Examiner 



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has not shown what information is missing from Applicants' specification that is not 
known to person of skill in the art prior to Applicants' discovery that is necessary for a 
person of skill in the art to practice Applicants' claimed invention. Specific examples 
that are not specifically identified in Applicants' specification that have T c ^ 26°K that 
can be made according to Applicants' teaching are enabled according to the CCPA in In 
re Angstadt, supra, In re Cook, supra and In re Fisher supra. 



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REMARKS IN REGARD TO REJECTIONS 
OVER THE ASAHI SHINBUM ARTICLE 



Claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 77-81, 84-86, 91-96, 103, 109, 
1 1 1 -1 1 6, 1 1 9, 1 20 and 1 24 were rejected at page 1 6 of the Office Action dated July 30, 
1998 as obvious over the Asahi Shinbum Article (Brief Attachment AV). Only claim 123 
was allowed in that Office Action. (A similar rejection is at page 10 of Office Action 
dated 05/27/97) Since this was a rejection for obviousness over a single reference, this 
means that a person of ordinary skill in the art, according to the Examiner, was enabled 
to practice the claimed inventions of the rejected claims from the teaching of the Asahi 
Shinbum article and what was generally known to a person of ordinary skill in the art at 
the time. The claims rejected over the Asahi Shinbum Article were generic to the 
species of claims 1 23 allowed over the Asahi Shinbum Article. The Examiner's rejection 
of claims for lack of enablement is inconsistent with the obviousness rejection over the 
Asahi Shinbum Article. The Examiner states at page 17 of the Office Action dated 
07/30/1998 and at page 11-12 of the Office Action dated 05/27/1997 "based on the 
teachings of 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 dated 07/30/1998 claim 123 was allowed over the Asahi Shinbum article 
because it showed criticality of the formula recited in this claim. For a single reference 
to be prior art under 35 USC 102 or 103 it is subject to the statutory provisions of 35 
USC 112, first paragraph, that is it must enable a person of skill in the art to practice the 
claimed invention it is alleged to anticipate or render obvious. By the Examiner stating 
that claim 123 was allowed because it showed criticality of the formula recited, the 
Examiner is stating that this is a patentably distinct species because of unexpected 
results of the genius of the Ashai Shinbum Article. The genus of the Asahi Shinbum 
Article is Applicants' teaching reported in Applicants' Article (Brief Attachment AX) 
which is part of Applicants' teaching. 



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Applicants acknowledge the withdrawal of the prior art rejection over Asahi 
Shinbum Article (Brief Attachment AV) in view of the remarks in Applicants' prior 
responses. The Examiner states at page 2 of the Office Action dated 07/28/2004, 
"Applicant has sufficiently demonstrated conception, diligence and reduction to practice 
of the instant invention before the publication date of the Asahi Shinbum article." 
Applicants respectfully submit that the Examiner has not withdrawn the rejection but has 
found the rejection moot by Applicants swearing behind the date of the Asahi Shinbum 
Article, in view of the fact that the Examiner has agreed that Applicant has sufficiently 
demonstrated conception before the publication date of the Asahi Shinbum article in the 
United States and diligence to a reduction to practice of the instant invention. 

The Examiner has not commented on nor rebutted Applicants' argument that in 
rejecting claims under 35 USC 103 over the Asahi Shinbum article, the Examiner 
necessarily concludes that Applicants' claims are fully enabled. The Asahi Shinbum 
article (Brief Attachment AV) refers to Applicants' work which was reported in their 
original article (Brief Attachment AX) which is incorporated by reference in Applicants' 
specification at page 6. 

Since Applicants' original article is the only information enabling the Asahi 
Shinbum article, it logically follows that the Examiner necessarily concludes in 
the 103 rejection that all Applicants' claims are fully enabled. 

Thus in the Office Action of 7-30-98, the Examiner is effectively stating that 
everything within Applicants' non-allowed claims rejected under 35 USC 103 over the 
Asahi Shinbum article alone can be practiced by a person of skill in the art with what is 
taught in the Asahi Shinbum article in combination with what is known to a person of 
skill in the art. All of Applicants' claims rejected over the Asahi Shinbum article are 
dominant to (or generic to) the one claim, claim 123, allowed in the Office Action of 7- 
30-98. Thus by stating that all the non-allowed claims are obvious over the Asahi 
Shinbum article alone, the Examiner is stating that a person of skill in the art needs 
nothing more that what is taught in the Asahi Shinbum article or what is taught therein in 



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combination with what is known to a person of skill in the art to practice that part of each 
of Applicants non-allowed claims which does not overlap allowed claim 123. Thus, it 
logically follows from the 35 USC 103 rejections that all of Applicants' claims are fully 
enabled since the Asahi Shinbum Article is enabled only through Applicants' Article 
(Brief Attachment AX). 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 T c of 30K of the 
superconducting transition has been found. The possibility of 
high T c - superconductivity has been reported by scientists in 
Switzerland this spring. The group of Prof. Shoji TANAKA, 
Dept. Appl. Phys. Faculty of Engineering at the University of 
Tokyo confirmed in November, that this is true. 

and in the second paragraph: 

The 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 at 
page 6 thereof. 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 USC 103, the Examiner necessarily had 
to find that Applicants' article fully enabled their claims. 

In the Office Action dated 07/30/2004, the Examiner has not commented on nor 
rebutted these arguments which are in Applicants' responses, prior to the Fifth 



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Supplementary Amendment dated March 1 , 2004. The Examiner, therefore, must be 
taken to agree with Applicants argument in the prior response that their teaching has 
fully enabled all of their claims. 

At the beginning of Applicants' arguments in the Fifth Supplementary Amendment 
dated March 1 , 2004, in regard to the objections and rejection based on 35 USC 112, 
first paragraph, Applicants have repeated these arguments, that is that the 35 USC 103 
rejections over the Asahi Shinbum article logically requires that all of Applicants' claims 
are fully enabled by Applicants' teaching. The Examiner has again not responded nor 
rebutted them. The Examiner, therefore, must be taken to agree with Applicants 
argument in the response of March 1, 2004 that their teaching has fully enabled all of 
their claims. 

The Examiner's rejections under 35 USC 103 over the Asahi Shinbum articles 
have been maintained since the Office Action dated August 26, 1992 of the ancestral 
application serial no. 08/875,003, filed 04/24/1982, when this rejection was first 
introduced. Thus the Examiner has maintained the view that all of Applicants' claims 
are fully enabled for more than fifteen years. Thus the specification provides an 
enabling disclosure of all of Applicants' claims. Applicants note that the Examiner has 
never withdrawn the rejection of Applicants' claims under 35 USC 103 over the Asahi 
Shinbum article. Applicants showed that they reduced their invention to practice prior to 
the publication date of the Asahi Shinbum article. Until the Examiner states that the 
Asahi Shinbum article is not a reference under 35 USC 102, Applicants' arguments 
unambiguously show that the Examiner must necessarily be of the view that all of 
Applicants' claims are fully enabled. As described below the Examiner now appears to 
state in the Final Action that the Asahi Shinbum Article is not a reference under 35 USC 
102 after stating it was a reference for more than15 years. 

In ancestral Application Serial No. 07/875,003, filed 04/24/1992 the Office Action 
dated 08/26/1992 at page 5 states "Claims 96-108 are rejected under 35 U.S.C. §1 02(a) 
as being anticipated by Asahi Shinbum. " Claims 69-18, 77-85, 91-95 of App 07/875,003 



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were apparatus of use claims of the same type currently under appeal, claims 73-76, 
88-90 are directed to method of preparing compositions of matter, claims 86-87 and 96- 
1 08, are method of operation of a device claims similar to those presently under appeal. 
By rejecting claims 96-108 as anticipated the Examiner was stating that persons of skill 
in the art could practice the inventions of those claims from Asahi Shinbum article which 
is equivalent to stating that those claims are rejected based on Applicants' teaching 
which is further equivalent to saying that Applicants' teaching enables the rejected 
claims. 

In ancestral Application Serial No. 07/875,003, filed 04/24/1992, the Office Action 
dated 1 1/25/1992 at page 3 (which is a supplemental action to the Office Action dated 
08/26/1992) modified this rejection to read claims 24-26 and 86-90 [in addition to claims 
96-108] are rejected under 35 USC §1 02(a) as being anticipated by Asahi Shinbum . 
Claims 24-26 are method of making composition claims. Claims 86-90 are method of 
operation of a device claims. Thus the Examiner necessarily was of the view that a 
person of skill in the art could fabricate the composition of matter and the method of 
operating a device based on the Asahi Shinbum Article which is equivalent to saying 
based on Applicants' teaching which is further equivalent to saying that Applicants' 
teaching enables the rejected claims. 

In ancestral Application Serial No. 08/303,561 , filed 09/09/1994, the Office Action 
dated 03/29/1995 at page 4 states, "Claims 24-26, 86-90 and 96-108 are rejected under 
35 USC §1 02(a) as being anticipated by Asahi Shinbum International Satellite Edition 
(London), November 11,1986 (hereinafter, The Asahi Shinbum article") and at page 5 
"claims 24-26, 86-90 and 96-108 are rejected 35 USC §103 as being unpatentable over 
the Asahi Shinbum article." 

In ancestral Application Serial No. 08/303,561 , filed 09/09/1994 the Office Action 
dated 05/24/1997 states at page 13 "Claims 24-26, 86-90 and 96-128 are rejected 
under 35 USC §1 02(a) as being anticipated by Asahi Shinbum International Satellite 
Edition (London), November 11,1986 (hereinafter, The Asahi Shinbum article") and at 



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page 17 states "Claims 24-26, 86-90 and 96-128 are rejected 35 USC §103 as being 
unpatentable over the Asahi Shinbum article." 

In ancestral Application Serial No. 08/303,561 , filed 09/09/1994 the Office Action 
dated 06/25/1998 states at page 16 "Claims 24-26, 86-90 and 96-135, 137-142 are 
rejected under 35 USC §1 02(a) as being anticipated by Asahi Shinbum International 
Satellite Edition (London), November 11,1986 (hereinafter, The Asahi Shinbum article,'" 
and at page 17 states "Claims 24-26, 86-90 and 96-135 and 137-142 are rejected 35 
USC §103 as being unpatentable over the Asahi Shinbum article." 

In the present application the Office Action dated 05/27/1997 states at page 10, 
"claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 77-81, 84-86, 91-96 and 103 are 
rejected 35 USC §103 as being unpatentable over the Asahi Shinbum , International 
Satellite Edition (London), November 11,1986 (hereinafter, The Asahi Shinbum 
article')." 

In the present application the Office Action dated 07/30/1998 at page 10, states 
"claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 77-81, 84-86, 91-96, 103, 109, 1 11- 
1 1 6, 1 1 9, 1 20 and 1 24 are rejected under 35 USC §1 03(a) as being unpatentable over 
the Asahi Shinbum article." 

In the present application in Office Action dated 02/02/2000 at page 3 the rejection 
of Applicants' claims over the Asahi Shinbum article was withdrawn when by the 
Examiner stated, "applicant has sufficiently demonstrated conception, diligence and 
reduction to practice of the instant invention before the publication dated of the Asahi 
Shinbum Article." 

In the present application the Examiner has never withdrawn the 35 USC 103 
rejection over the Asahi Shinbum Article because it was found not to be a reference 
under 35 USC 102. Thus as stated above, in the present application the Examiner must 
necessarily be viewed as having made a finding of fact that Applicants claims are 
enabled. 



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Applicants arguments for why the Asahi Shinbum article is not a reference is found 
at pages 12-34 of Applicants' paper entitled "Supplementary Response" dated 
08/02/1999 (received by USPTO 08/05/1999) in response to the Office Action dated 
07/30/1998. In the last paragraph of page 14 of that response Applicants argued that 
the Asahi Shinbum Article was not a reference under 35 USC 102 or 103 stating: 

[T]he Asahi Shinbum Article provides no teaching of how to make 
(SIC) the "new ceramic". A reference which does not provide a 
method of making a composition cannot anticipate a claim to a 
composition. Also, the Asahi Shinbum article has no specific 
embodiment of the new composition. Thus it cannot anticipate 
under 35 USC 102 and thus applicants non allowed claims cannot 
be obvious under 35 USC 103(a). 

This argument was not accepted by the Examiner. At page 3 of the Office Action 
dated 02/04/2000 the Examiner withdrew the rejections over Asahi Shinbum Article 
because "applicant has specifically demonstrated conception, diligence and reduction to 
practice before the publication date of the Asahi Shinbum article." Applicants evidence 
for swearing behind the Asahi Shinbum Article appears at pages 34-46 of Applicants 
response dated 08/02/1999. Applicants made the argument in the passage quoted 
above in the parent application (serial no. 08/303,561 , filed 09/09/1994) without 
providing the evidence swearing behind the Asahi Shinbum Article. The Examiner did 
not withdraw the rejection in view of this argument. 



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REMARKS CITING PORTIONS OF THE FILE HISTORY 



Claims of the present application have been rejected as not enabled under 35 
U.S.C. 112, first paragraph. Applicants disagree for the reasons previously noted. 
Applicants in addition point out the following. 

The present application is a Continuation of 08/060,470 filed on 05/1 1/93, which 
is a Continuation of 07/875,003 filed on 04/24/92, which is a Divisional of 07/053,307 
filed on 05/22/87 all now abandoned. 

In the 07/053,307 ancestral application composition of matter claims where 
presented for examination. A copy of the Final Rejection referred to below in this 
application is in Brief Attachment AR. 

In the 07/053,307 ancestral application composition of matter, claims 1 through 
1 1 inclusive, 27 through 35 inclusive, 40 through 54 inclusive, 60 through 63 inclusive, 
and 65 through 68 were finally rejected under 35 U.S.C. 102(b) or in the alternative 
under 35 U.S.C. 103 as unpatentable over each of a publication by Shaplygin et al. in 
the Russian Journal of Inorganic Chemistry , volume 24, pages 820-824 (1979) ("the 
Shaplygin et al. publication"); a publication by Nguyen et al. in the Journal of Solid State 
Chemistry , volume 39, pages 120-127 (1981) ("the Nguyen et al. publication"); a 
publication by Michel et al. in the Materials Research Bulletin , volume 20, pages 667- 
671 (1985) ("the 1985 Michel et al. publication"); and a publication by Michel and 
Raveau in the Revue de Chimie Minerale , volume 21, pages 407-425 (1984) ("the 1984 
Michel and Raveau publication"). See the final rejection dated 4-25-1991 in the 
07/053,307 ancestral application. 

In the 07/053,307 ancestral application, 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 a publication by Perron-Simon et al. in C. R. Acad. Sc. Paris , volume 



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283, pages 33 through 35 (12 July 1976) ("the Perron-Simon et al. publication"); a 
publication by Mossner and Kemmler-Scak in the Journal of the Less-Common Metals , 
volume 105, pages 165 through 168 (1985) ("the Mossner and Kemmler-Sack 
publication"), a publication by Chincholkar and Vyawahare in Thermal Analysis 6th, 
volume 2, pages 251 through 256 (1980) ("the Chincholkar and Vyawahare 
publication"); a publication by Ahmad and Sanyal in Spectroscopy Letters , volume 9, 
pages 39 through 55 (1976) ("the Ahmad and Sanyal publication"); a publication by 
Blasse and Corsmit in the Journal of Solid State Chemistry , volume 6, pages 513 
through 518 (1973) ("the Blasse and Corsmit publication"); United States Patent No. 
3,472,779 to Kurihara et al. ("the Kurihara et al. '779 patent"); a publication by Anderton 
and Sale in Powder Metallurgy No. 1, pages 14 through 21 (1979) ("the Anderton and 
Sale publication"). (See the final rejection dated 4-25-1991). 

In the 07/053,307 ancestral application the Examiner asserted that the cited 
references appeared to disclose materials, which inherently provided superconductive 
properties and consequently therefore, rendered the claims unpatentable. 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. The 
rejections was maintained over these arguments. For these composition of matter 
claims to have been rejected as being inherently anticipated required a finding by the 
Examiner that persons of ordinary skill were enabled to make the claimed compositions 
based on the teaching of the cited references. 

The claims of the present application are directed to apparatus for flowing a 
superconducting current in a superconductive composition of matter having a transition 
temperature greater than or equal to 26 K. This is Applicants' discovery for which they 
received the 1987 Nobel Prize in Physics. The Examiner in the 07/053,307 ancestral 
application stated by the 35 U.S.C. 102 and 103 rejections therein that persons of skill 
in the art knew how to make the compositions of matter based on the references cited 
therein. In that same final rejection (dated 4-25-91 ) the Examiner states at page 4 
thereof in regard to the materials described in the cited references "these materials 



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appear to be identical to those presently claimed except that the superconductive 
properties are not disclosed." Applicants discovered the superconductive properties 
and in the present application are claiming apparatus using this property. Thus, by the 
Examiner's reasoning all of the present claims are fully enabled because the Examiner 
has stated that the compositions of matter recited in the claims can be made with the 
knowledge of a person of skill in the art prior to Applicant's discovery. Thus the 
Examiner, in the 07/053,307 ancestral application, agrees with the Applicants' 
arguments and the Affidavits of Shaw, Duncombe, Tsuei, Dinger and Mitzi (Brief 
Attachments AH, Al, AJ, AK and AL) and The DST AFFIDAVITS Brief Attachments AM, 
AN and AO) submitted by Applicants in support of their position that all their claims are 
enabled. In view thereof, Applicants respectfully request the Board to reverse the 
rejection of the claims under 35 U.S.C. 112, first paragraph as not enabled. 

Applicants' invention is a pioneering invention. "The Supreme Court in 
Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 562 (1898), characterized a 
pioneering invention as "a distinct step in the progress of the art, distinguished from a 
mere improvement or perfection of what had gone before." Texas Instruments ICC 6 
USPQ 2d 1886 (CAFC 1988). Applicants received the 1987 Nobel Prize in Physics for 
there discovery of superconductivity at T c greater that or equal to 26°K which is about 8 
°K higher than the highest T c previously known. Even though others following 
Applicants' teaching identified compositions having T c more than 1 00K greater than 
26K, only Applicants have received a Nobel Prize for this subject matter. This is 
because the others followed Applicants' teaching to identify these other compositions. 

Applicants respectfully request the Board to withdraw the rejections for lack of 
enablement of claims under 35 USC 1 1 2, first paragraph. 



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EVIDENCE FROM THE HANDBOOK OF CHEMISTRY AND PHYSICS 



In Brief Attachments AC and BB there is a Table of high Tc materials form the 
"CRC Handbook of Chemistry and Physics" 2000-2001 Edition. There are a total of 48 
materials listed in Table 1 of which 21 (those marked with an asterisk in the table in 
Brief Attachment BB numbers 1, 7-13, 16-18, 20, 21, 27, 28, 30, 31 and 41-44) do not 
contain one or more of a rare earth, a Group 1MB element or an alkaline earth element. 
Yet all 42 are made according to the general principals or ceramic science taught by 
Applicants. Two of the 42 materials have a Tc of 25k. Thus a person of skill in the art 
following Applicants' teaching can fabricate materials which avoid the claims allowed by 
the Examiner but not the claims not allowed by the Examiner. 



Table 1 in Brief Attachments AC or BB list at the top 7 references as the source 
of the information on the 42 high Tc materials. Those references are listed below. For 
references 1-5 Brief Attachments BC, BD, BE, BF and BG, respectively contain the title 
page and table of contents of the corresponding books. References 6 and 7 are 
articles, copies of which are in Brief Attachments BH and Bl respectively. 



1. Brief Attachment BC 

Ginsburg, D.M., Ed., Physical Properties of High-Temperature Superconductors, Vols. 
1-111, World Scientific, Singapore, 1989-1992. 

2. Brief Attachment BD 

Rao, C.N.R., Ed., Chemistry of High-Temperature Superconductors, World Scientific, 
Singapore, 1991. 

3. Brief Attachment BE 

Shackelford, J.F., The CRC Materials Science and Engineering Handbook, CRC Press, 
Boca Raton, 1992, 98-99 and 122-123. 

4. Brief Attachment BF 

Kaldis, E., Ed., Materials and Crystallographic Aspects of HTc-Superconductivity, 
Kluwer Academic Pub., Dordrecht, The Netherlands, 1992. 

5. Brief Attachment BG 

Malik, S.K. and Shah, S.S., Ed., Physical and Material Properties of High Temperature 
Superconductors, Nova Science Pub., Commack, N.Y., 1994. 



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6. Brief Attachment BH 

Chmaissen, O., et al., Physica C230, 231-238, 1994. 



7. Brief Attachment B I 

Antipov, E.V., et al., Physica C215, 1-10, 1993. 231-238, 1994. 

Copies of the entire books corresponding to Brief Attachment BC, BD, BE, BF, 
and BG were submitted in the present application and are identified as artifacts indicted 
in the Advisory Action dated 08/14/2006. 



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THEORY NOT REQUIRED FOR ENABLEMENT 



As stated in Applicants' prior responses the basic theory of superconductivity has 
been known many years before Applicants' discovery. Notwithstanding, Applicants do 
not have to theoretically understand their invention to be entitled to claims that cover 
their teaching. The Examiner is confusing "scientific theory" with the patent law legal 
term "predictable or unpredictable art." As stated above the patent law legal term 
"predictable or unpredictable art" relates to the language of 35 USC 112, first 
paragraph, "how to make" and "how to practice". This will be referred to herein as "how- 
to-make/how-to-practice predictability". A scientific theory relates to what will be 
referred to herein as "theoretical predictability". The broad subject matter of the present 
application is solid state science. A theory in this subject matter is in the field of solid 
state physics and chemistry which uses quantum mechanics to construct a 
mathematical formalism. Such formalism can create a theory that "theoretically 
predicts" that a particular material can exist and have certain properties, but there may 
be no known way to fabricate this material. For such a circumstance there would be 
100% "theoretical predictability" but no "how-to-make/how-to-practice predictability." 
For this situation there would be no enablement under 35 USC 112, first paragraph. On 
the other hand, there may be no presently existing theory to explain a particular 
phenomenon so that there is no "theoretical predictability", but if it is well known how to 
make the materials and how to use them, then there is "how-to-make/how-to-practice 
predictability" and the materials are enabled within the meaning of 35 USC 112, first 
paragraph. Also, the existence of materials having a Tc less than 26°K does not mean 
that Applicants have not enabled Tc > 26°K. As stated in the application's prior 
responses, the CCPA in In re Angstadt has stated that if the experimentation needed to 
identify compositions that do not come with the scope of a claim is not "undue 
experimentation", then the claim is enabled. Also the reference to "a second non- 
conducting CuO phase" at page 14, line 18, of Applicants' specification does not mean 
that Applicants have not enabled the claims since along with this non-conducting phase 
existed a phase having Tc > 26°K. There is no statutory or decisional law basis for an 
Examiner "deeming" a patent claim not enabled. The Examiner has the burden of 



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showing that based on Applicants' teaching undue experimentation is need to practice 
the claimed invention. The Examiner has not meet this burden to establish a prima 
facia case of nonenablement. As stated above the Board in Ex parte Jackson has 
stated that claims are enabled if merely routine experimentation is needed to identify 
species within the scope of Applicants' claims. 



In Newman v. Quigg, 877 F.2d 1575, 1581-1582 (Fed. Cir. 1989) 11 U.S.P.Q.2D (BNA) 
1340 the CAFC states: 



While it is not a requirement of patentability that an inventor correctly 
set forth, or even know, how or why the invention works, ... neither is 
the patent applicant relieved of the requirement of teaching how to 
achieve the claimed result, even if the theory of operation is not 
correctly explained or even understood. (Citations omitted) 

In In re Isaacs, 52 C.C.P.A. 1791, 1798 (C.C.P.A. 1965) 146 U.S.P.Q. (BNA) 193 the 
CCPA states: 

We point out in connection with this rejection that an applicant need not 
understand the theory or scientific principle underlying his invention. In re 
Storrs, 44 CCPA 981 , 245 F.2d 474, 114 USPQ 293. All that an applicant need 
do is enable a person skilled in the art to duplicate his efforts, and appellants 
have certainly done so here. 

"Enablement is not precluded by some experimentation, such as routine screening." In 
re Wands, 8USPQ2d 1400, 1404. The CAFC agrees with the Board decision in Ex parte 
Jackson at 8USPQ2d 1400, 1404: 

The test is not merely quantitative, since a considerable amount of 
experimentation is permissible, if it is merely routine, or if the 
specification in question provides a reasonable amount of guidance 
with respect to the direction in which the experimentation should 
proceed to enable the determination of how to practice a desired 
embodiment of the invention claimed. 
Ex parte Jackson, 217 U.S.P.Q. (BNA) 804, 807 (1982). 

An art is predictable if species within the scope of a claim can be determined following 
an applicant's teaching in view of what is known to a person of ordinary skill without 
undue experimentation, even in the absence of a theory. Guidance is needed "with 



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respect to the direction in which the experimentation should proceed" when more than 
undue experimentation is needed to make such other species. There is no evidence in 
the current application that anything other than undue experimentation is needed to 
determine species that come within the scope of Applicants claims. As described in 
detail by Dr. Newns' in his affidavit in Brief Attachment AP doing a "physical 
experiment" to determine a species is essentially the same or equivalent to doing a 
"theoretical experiment" to determine a species. Thus Applicants claims are fully 
enabled. 



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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 



In re Patent Application of 
Applicants: Bednorz et al. 
Serial No.: 08/479,810 
Filed: June 7, 1995 



Date: May 15, 2008 



Docket: YO987-074BZ 



Group Art Unit: 1751 
Examiner: M. Kopec 



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

Mail Stop: Appeal Brief - Patents 

Commissioner for Patents 

United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1450 

CORRECTED APPEAL BRIEF IN RESPONSE TO 
NOTICE OF NON-COMPLIANT APPEAL BRIEF Dated 11/15/2007 



VOLUME 1 - Part 2 



DST AFFIDAVITS 



Respectfully submitted, 



/Daniel P Morris/ 



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



IBM CORPORATION 
Intellectual Property Law Dept. 
P.O. Box 218 

Yorktown Heights, New York 10598 



THE DST AFFIDAVITS 



In response to the Examiner's statement at the bottom of page 18 of the Office 
Action of 07/28/2004 that the affidavits Mitzi, Dinger, Tsuei, Shaw and Duncombe of 
Brief Attachments AH, Al, AJ, AK and AL are conclusory and unsupported by particular 
evidence, Applicants submitted the expanded affidavits of Shaw, Dinger, and Tsuei 
(referred to herein as the DST AFFIDAVITS) (Brief Attachments AM, AN and AO). 

1 . Paragraph 1 of each DST AFFIDAVIT gives the educational history of each 
affiant to qualify each affiant as an expert in the ceramic arts. 

2. Paragraph 2 of each DST AFFIDAVIT state that it refers to Attachments A to Z 
and AA which were submitted in a separate paper designated as "FIRST 
SUPPLEMENTAL AMENDMENT" in response to the Office Action dated July 28, 2004 
and to Attachments AB to AG which were submitted in a separate paper designated as 
"THIRD SUPPLEMENTAL AMENDMENT" in response to the Office Action dated July 
28, 2004. The referred to attachments A to Z and AA to AG are identical to Brief 
Attachments A to Z and AA to AG. 

3. Paragraph 3 of each DST AFFIDAVIT provides the work history of each affiant to 
qualify each as an expert in the ceramic arts. 

4. Paragraph 4 of each DST AFFIDAVIT identifies the length of time each affiant 
has worked in the ceramic arts to qualify each affiant as an expert in the ceramic arts. 
The Examiner has not denied that any of the Applicants' affiants are experts in the 
ceramic arts. 

5. Paragraph 5 of each DST AFFIDAVIT refers to a resume and list of publications 
in Attachment 1 included with each affidavit. 



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6. Paragraph 6 of each DST AFFIDAVIT states that these affidavits are in addition 
to the affidavit submitted earlier. Each of the DST AFFIDAVIT states that the affiant has 
reviewed the above-identified patent application under appeal (Bednorz-Mueller 
application) and acknowledges that it represents the work of Bednorz and Mueller, 
which is generally recognized as the first discovery of superconductivity in a material 
having aT c > 26°K and that subsequent developments in this field have been based on 
this work. 

7. Paragraph 7 of each DST AFFIDAVIT states that all the high temperature 
superconductors which have been developed based on the work of Bednorz and 
Mueller behave in a similar manner, conduct current in a similar manner, have similar 
magnetic properties, and have similar structural properties. 

8. Paragraph 8 of each DST AFFIDAVIT states that "once a person of skill in the art 
knows of a specific type of composition described in the Bednorz-Mueller application 
which is superconducting at greater than or equal to 26°K, such a person of skill in the 
art, using the techniques described in the Bednorz-Mueller application, which includes 
all principles of ceramic fabrication known at the time the application was initially filed, 
can make the compositions encompassed by the claims of the Bednorz-Mueller 
application, without undue experimentation or without requiring ingenuity beyond that 
expected of a person of skill in the art of the fabrication of ceramic materials. This is 
why the work of Bednorz and Mueller was reproduced so quickly after their discovery 
and why so much additional work was done in this field within a short period after their 
discovery. Bednorz and Mueller's discovery was first reported in Z. Phys. B 64 page 

1 89-1 93 (1 996) (Brief Attachment AX). 

9. Paragraph 9 of each DST AFFIDAVIT states that the techniques for placing a 
superconductive composition into a superconducting state have been known since the 
discovery of superconductivity in 1911 by Kamerlingh-Onnes. Thus Applicants have 
thought "how to use" their claimed invention satisfying this requirement of 35 USC 112, 
first paragraph. 



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1 0. Paragraph 1 0 of each DST AFFIDAVIT states that prior to 1 986 a person having 
a bachelor's degree in an engineering discipline, applied science, chemistry, physics or 
a related discipline could have been trained within one year to reliably test a material for 
the presence of superconductivity and to flow a superconductive current in a 
superconductive composition. This establishes the level of skill needed to use 
Applicants' claimed invention. The Examiner has not rebutted this definition. 

1 1 . Paragraph 1 1 of each of the prior to 1 986 a person of ordinary skill in the art of 
fabricating a composition according to the teaching of the Bednorz-Mueller application 
would have: a) a Ph.D. degree in solid state chemistry, applied physics, material 
science, metallurgy, physics or a related discipline and have done thesis research 
including work in the fabrication of ceramic materials; or b) have a Ph.D. degree in 
these same fields having done experimental thesis research plus one to two years post 
Ph.D. work in the fabrication of ceramic materials; or c) have a master's degree in these 
same fields and have had five years of materials experience at least some of which is in 
the fabrication of ceramic materials. Such a person is referred to herein as a person of 
ordinary skill in the ceramic fabrication art. Applicants note that their claims are not 
composition of matter claims, but are directed to an apparatus, device, structure etc. 
carrying a superconductor current in an element having T c ^ 26°K. The Examiner has 
not rebutted this definition. 

12. Paragraph 1 2 of each DST AFFIDAVIT states that the general principles of 
ceramic science referred to by Bednorz and Mueller in their patent application and 
known to a person of ordinary skill in the ceramic fabrication art can be found in many 
books and articles published before their discovery, priority date (date of filing of their 
European Patent Office patent application EPO 0275343A1 , January 23, 1987) and 
initial US Application filing date (May 22, 1987). An exemplary list of books describing 
the general principles of ceramic fabrication are: 



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a) Introduction to Ceramics, Kingery et al., Second Edition, John Wiley 
& Sons, 1976, in particular pages 5-20, 269-319, 381-447 and 448-513, a 
copy of which is in Brief Attachment B. 

b) Polar Dielectrics and Their Applications, Burfoot et al., University of 
California Press, 1979, in particular pages 13-33, a copy of which is in 
Brief Attachment C. 

c) Ceramic Processing Before Firing, Onoda et al., John Wiley & 
Sons, 1978, the entire book, a copy of which is in Brief Attachment D. 

d) Structure, Properties and Preparation of Perovskite-Type 
Compounds, F. S. Galasso , Pergamon Press, 1969, in particular pages 
159-186, a copy of which is in Brief Attachment E. 

These references were previously submitted with the Affidavit of Thomas Shaw 
submitted December 15, 1998. 

1 3. Paragraph 1 3 of each DST AFFIDAVIT refers to an exemplary list of articles 
applying the general principles of ceramic fabrication to the types of materials described 
in Applicants' specification which are: 

a) Oxygen Defect K 2 NiF 4 - Type Oxides: The Compounds La 2 - 
x Sr x Cu0 4 -x/2 + *, Nguyen et al., Journal of Solid State Chemistry 39, 120-127 
(1981). See Brief Attachment F. 

b) The Oxygen Defect Perovskite Bal_a4Cu 5 -Oi3.4, A Metallic (This is 
referred to in the Bednorz-Mueller application at page 21, lines 1-2) 
Conductor, C. Michel et al., Mat. Res. Bull., Vol. 20, pp. 667-671, 1985. 
See Brief Attachment G. 



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c) Oxygen Intercalation in Mixed Valence Copper Oxides Related to 
the Perovskite, C. Michel et al., Revue de Chemie Minerale, 21, p. 407, 
1984. (This is referred to in the Bednorz-Mueller application at page 27, 
lines 1-2). See Brief Attachment H. 



d) Thermal Behaviour of Compositions in the Systems x BaTi03 + (1 - 
x) Ba(Ln 05 B 05 ) 0 3 , V.S. Chincholkar et al., Therm. Anal. 6th, Vol. 2., p. 
251-6, 1980. See Brief Attachment I. 



14. Paragraph 1 4 of each DST AFFIDAVIT states the Bednorz-Mueller application in 

the paragraph bridging pages 6 and 7 states in regard to the high T c materials: 

These compositions can carry supercurrents (i.e., electrical currents in a 
substantially zero resistance state of the composition) at temperatures 
greater than 26°K. In general, the compositions are characterized as 
mixed transition metal oxide systems where the transition metal oxide can 
exhibit multivalent behavior. These compositions have a layer-type 
crystalline structure, often perovskite-like, and can contain a rare earth or 
rare earth-like element. A rare earth-like element (sometimes termed a 
near rare earth element is one whose properties make it essentially a rare 
earth element. An example is a group NIB element of the periodic table, 
such as La. Substitutions can be found in the rare earth (or rare earth- 
like) site or in the transition metal sites of the compositions. For example, 
the rare earth site can also include alkaline earth elements selected from 
group MA of the periodic table, or a combination of rare earth or rare earth- 
like elements and alkaline earth elements. Examples of suitable alkaline 
earths include Ca, Sr, and Ba. The transition metal site can include a 
transition metal exhibiting mixed valent behavior, and can include more 
than one transition metal. A particularly good example of a suitable 
transition metal is copper. As will be apparent later, Cu- oxide based 
systems provide unique and excellent properties as high T c 
superconductors. An example of a superconductive composition having 
high T c is the composition represented by the formula RE-TM-O, where 
RE is a rare earth or rare earth-like element, TM is a nonmagnetic 
transition metal, and 0 is oxygen. Examples of transition metal elements 
include Cu, Ni, Cr etc. In particular, transition metals that can exhibit 
multi-valent states are very suitable. The rare earth elements are typically 
elements 58-71 of the periodic table, including Ce, Nd, etc. 

1 5. Paragraph 1 5 of each DST AFFIDAVIT states that in the passage quoted in 
paragraph 14 the general formula is RE-TM-0 "where RE is a rare earth or rare earth- 



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like element, TM is a nonmagnetic transition metal, and 0 is oxygen." This paragraph 
states "Substitutions can be found in the rare earth (or rare earth-like) site or in the 
transition metal sites of the compositions. For example, the rare earth site can also 
include alkaline earth elements selected from group MA of the periodic table, or a 
combination of rare earth or rare earth-like elements and alkaline earth elements." Thus 
applicants teach that RE can be something other than an rare earth. For example, it 
can be an alkaline earth, but is not limited to a alkaline earth element. It can be an 
element that has the same effect as an alkaline earth or rare-earth element, that is a 
rare earth like element. Also, this passage teaches that TM can be substituted with 
another element, for example, but not limited to, a rare earth, alkaline earth or some 
other element that acts in place of the transition metal. 

16. Paragraph 1 6 of each DST AFFIDAVIT stat that the table in paragraph 1 8 of 
each DST AFFIDAVIT is compiled from the Table 1 of the Article by Rao (See Brief 
Attachment AB) and the Table of high T c materials from the "CRC Handbook of 
Chemistry and Physics" 2000-2001 Edition (See Brief Attachment AC). An asterisk in 
column 5 of the table in paragraph 18 indicates that the composition of column 2 does 
not come within the scope of the claims allowed in the Office Action of 07/28/2004. The 
same is true of the Final Rejection. 

1 7. Paragraph 1 7 of each DST AFFIDAVIT states that each affiant has reviewed the 
Office Action dated 07/28/2004, which states at page 6 "The present specification is 
deemed to be enabled only for compositions comprising a transition metal oxide 
containing at least a) an alkaline earth element and b) a rare-earth element of Group 
1MB element." Each DST affiant states that they disagree for the reasons given in each 
DST AFFIDAVIT. 

18. Paragraph 1 8 of each DST AFFIDAVIT provides the composite table which is: 



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1 


2 


3 


4 


5 


6 


7 


# 


MATERIAL 


ARTICLE 


HANDBOOK OF 
CHEM & PHYSICS 




ALKALINE 

EARTH 

ELEMENT 


EARTH 
ELEMENT 


1 


La 2 Cu0 4+a 








N 


Y 


2 


La 2 . x Sr x (Ba x )Cu0 4 








Y 


Y 


3 


La2Ca-|. x Sr x Cu 2 0 6 








Y 


Y 


4 


YBa 2 Cu 3 0 7 








Y 


Y 


5 


YBa 2 Cu 4 0 8 








Y 


Y 


6 


Y 2 Ba 4 Cu 7 0i5 








Y 


Y 


7 


Bi 2 Sr 2 Cu0 6 








Y 


N 


8 


Bi 2 CaSr 2 Cu 2 0 8 








Y 


N 


9 


Bi 2 Ca 2 Sr 2 Cu 3 Oio 








Y 


N 


10 


Bi 2 Sr 2 (Ln-|. x Ce x ) 2 Cu 2 Oio 








Y 


Y 


11 


TI 2 Ba 2 Cu0 6 








Y 


N 


12 


TI 2 CaBa 2 Cu 2 0 8 








Y 


N 


13 


TI 2 Ca 2 Ba 2 Cu 3 Oio 








Y 


N 


14 


TI(BaLa)Cu0 5 








Y 


Y 


15 


TI(SrLa)Cu0 5 








Y 


Y 


16 


(Tlo 5 Pbo5)Sr 2 Cu0 5 








Y 


N 


17 


TICaBa 2 Cu 2 0 7 








Y 


N 


18 


(TI 05 Pbo5)CaSr 2 Cu 2 07 








Y 


N 


19 


TISr 2 Y 0 5 Cao 5 Cu 2 07 








Y 


Y 


20 


TICa 2 Ba 2 Cu 3 0 8 








Y 


N 


21 


(Tl 0 5 Pb 0 5 )Sr 2 Ca 2 Cu 3 0 9 








Y 


N 


22 


TIBa 2 (Ln 1 . x Ce x )2Cu 2 09 








Y 


Y 


23 


Pb 2 Sr 2 Ln 05 Cao 5 Cu 3 0 8 








Y 


Y 


24 


Pb 2 (Sr,La) 2 Cu 2 0 6 








Y 


Y 


25 


(Pb,Cu)Sr 2 (Ln,Ca)Cu 2 0 7 








Y 


Y 


26 


(Pb,Cu)(Sr,Eu)(Eu,Ce)Cu 2 O x 








Y 


Y 


27 


Nd 2 . x Ce x Cu0 4 








N 


Y 


28 


Cai_ x Nd x Cu0 2 








Y 


Y 


29 


Sr 1 . x Nd x Cu0 2 








Y 


Y 


30 


Ca 1 . x Sr x Cu0 2 








Y 


N 


31 


Ba 06 K 04 BiO 3 








Y 


N 


32 


Rb 2 CsC6o 








N 


Y 


33 


NdBa 2 Cu 3 0 7 








Y 


Y 


34 


SmBaSrCu0 7 








Y 


Y 


35 


EuBaSrCu 3 0 7 








Y 


Y 


36 


BaSrCu 3 0 7 








Y 


N 


37 


DyBaSrCu 3 0 7 








Y 


Y 


38 


HuBaSrCu 3 0 7 








Y 


Y 


39 


ErBaSrCu 3 0 7 (Multiphase) 








Y 


Y 



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Page 178 of 377 



40 


TmBaSrCu 3 0 7 (Multiphase) 








Y 


Y 


41 


YBaSrCu 3 0 7 




✓ 


* 


Y 


Y 


42 


HgBa 2 Cu0 2 








Y 


N 


43 


HgBa 2 CaCu 2 0 6 
(annealed in 0 2 ) 








Y 


N 


44 


HgBa 2 Ca 2 Cu 3 0 8 








Y 


N 


45 


HgBa 2 Ca 3 Cu4O 10 








Y 


N 



1 9. Paragraph 1 9 of each DST AFFIDAVIT in referring to the table of paragraph 1 8 
states that the first composition, La 2 Cu 0 4+3 , has the form RE 2 Cu0 4 which is explicitly 
taught by Bednorz and Mueller. The e indicates that there is a nonstoichiometric 
amount of oxygen. Since the table has an asterisk in column 5, as noted in paragraph 
16 above, the first composition is not included in the allowed claims although explicitly 
taught by Applicants. 



20. Paragraph 20 of each DST AFFIDAVIT point out that the Bednorz-Mueller 
application teaches at page 1 1 , line 1 9 to page 1 2, line 7: 



An example of a superconductive compound having a layer-type structure 
in accordance with the present invention is an oxide of the general 
composition RE2TMO4 where RE stands for the rare earths (lanthanides) 
or rare earth-like elements and TM stands for a transition metal. In these 
compounds the RE portion can be partially substituted by one or more 
members of the alkaline earth group of elements. In these particular 
compounds, the oxygen content is at a deficit. For example, one such 
compound that meets this general description is lanthanum copper oxide 
La 2 Cu0 4 ... 

21 . Paragraph 21 of each DST AFFIDAVIT point out that at the Bednorz-Mueller 
application at page 15, last paragraph states "Despite their metallic character, the Ba- 
La-Cu-0 type materials are essentially ceramics, as are other compounds of the RE 2 
TMO4 type, and their manufacture generally follows known principles of ceramic 
fabrication." 



22. Paragraph 22 of each DST AFFIDAVIT note that compound number 27 of the 
composite table contains Nd and Ce, both rare earth elements. All of the other 



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compounds of the composite table, except for number 32, have O and one of the 
alkaline earth elements which as stated above is explicitly taught by applicants. 
Compound 31 is a BiC>3 compound in which TM is substituted by another element, here 
Bi, as explicitly taught by Applicants in the paragraph quoted above. 

23. Paragraph 23 of each DST AFFIDAVIT note that the rare earth elements are Sc, 
Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, and Lu. See the 
Handbook of Chemistry and Physics 59th edition 1978-1979 page B262 in Brief 
Appendix A. The transition elements are identified in the periodic table from the inside 
front cover of the Handbook of Chemistry and Physics in Brief Attachment A. 

24. Paragraph 24 of each DST AFFIDAVIT state that the basic theory of 
superconductivity has been known many years before Applicants' discovery. For 
example, see the book "Theory of Superconductivity", M. von Laue, Academic Press, 
Inc., 1952 (Brief Attachment AD). 

25. Paragraph 25 of each DST AFFIDAVIT notes that in the composite table of 
paragraph 18, compound numbers 7 to 10 and 31 are Bismuth (Bi) compounds. 
Compound number 12 to 22 are Thallium (Tl) compounds. Compound numbers 23 to 
26 are lead (Pb) compounds. Compounds 42 to 45 are Mercury (Hg) compounds. 
Those compounds that do not come within the scope of an allowed claims (the 
compounds which are not marked with an asterisk in column 5 of the composite table) 
are primarily the Bi, Tl, Pb and Hg compounds. These compounds are made according 
to the principles of ceramic science known prior to applicant's filing date. For example, 
Brief Attachments J, K, L, and M contain the following articles: 

Brief Attachment J - Phys. Rev. B. Vol. 38, No. 16, p. 6531 (1988) is 
directed to Thallium compounds. 

Brief Attachment K - Jap. Joun. of Appl. Phys., Vol. 27, No. 2, p. L209- 
L210 (1988) is directed to Bismuth (Bi) compounds. 



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Brief Attachment L - Letter to Nature, Vol. 38, No. 2, p. 226 (18 March 
1993) is directed to Mercury (Hg) compounds. 

Brief Attachment M - Nature, Vol. 336, p. 211 (17 November 1988) is 
directed to Lead (Pb) based compounds. 

26. Paragraph 26 of each DST AFFIDAVIT note that the article of Brief Attachment J 
(directed to Tl compounds) states at page 6531 , left column: 

The samples were prepared by thoroughly mixing suitable amounts of 
TI2O3, CaO, BaC>2, and CuO, and forming a pellet of this mixture under 
pressure. The pellet was then wrapped in gold foil, sealed in quartz tube 
containing slightly less than 1 atm of oxygen, and baked for approximately 
3 h at N 880C. 

Paragraph 26 of each DST AFFIDAVIT state "[t]his is according to the general 
principles of ceramic science known prior to applicant's priority date." 

27. Paragraph 27 of each DST AFFIDAVIT note that the article of Brief Attachment K 
(directed to Bi compounds) states at page L209: 

The Bi-Sr-Ca-Cu-0 oxide samples were prepared from powder reagents 
of Bi 2 0 3 , SrC0 3 , CaC0 3 and CuO. The appropriate amounts of powders 
were mixed, calcined at 800-870C for 5 h, thoroughly reground and then 
cold-pressed into disk-shape pellets (20 mm in diameter and 2 mm in 
thickness) at a pressure of 2 ton. cm 2 . Most of the pellets were sintered at 
about 870C in air or in an oxygen atmosphere and then furnace-cooled to 
room temperature. 



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Paragraph 27 of each DST AFFIDAVIT state "[t]his is according to the general 
principles of ceramic science known prior to applicant's priority date." 

28. Paragraph 28 of each DST AFFIDAVIT note that the article of Brief Attachment L 
(directed to Hg compounds) states at page 226: 

The samples were prepared by solid state reaction between stoichiometric 
mixtures of Ba 2 Cu0 3+ a and yellow HgO (98% purity, Aldrich). The 
precursor Ba 2 Cu0 3+ a was obtained by the same type of reaction between 
Ba0 2 (95% purity, Aldrich) and CuO (NormalPur, Prolabo) at 930C in 
oxygen, according to the procedure described by De Leeuw et al. 6 . The 
powders were ground in an agate mortar and placed in silica tubes. All 
these operations were carried out in a dry box. After evacuation, the 
tubes were sealed, placed in steel containers, as described in ref. 3, and 
heated for 5 h to reach -800C. The samples were then cooled in the 
furnace, reaching room temperature after -10 h. 

Paragraph 28 of each DST AFFIDAVIT states that "[t]his is according to the 
general principles of ceramic science known prior to applicant's priority date." 

29. Paragraph 29 of each DST AFFIDAVIT note that the article of Brief Attachment M 
(directed to Pb compounds) states at page 21 1 , left column: 

The preparative conditions for the new materials are considerably more 
stringent than for the previously known copper-based superconductors. 
Direct synthesis of members of this family by reaction of the component 
metal oxides or carbonates in air or oxygen at temperatures below 900C is 
not possible because of the stability of the oxidized SrPbC>3-based 
perovskite. Successful synthesis is accomplished by the reaction of PbO 
with pre-reacted (Sr, Ca, Ln) oxide precursors. The precursors are 
prepared from oxides and carbonates in the appropriate metal ratios, 



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calcined for 16 hours (in dense Al 2 0 3 crucibles) at 920-980C in air with 
one intermediate grinding. 

Paragraph 28 of each DST AFFIDAVIT state that "[t]his is according to the 
principles of ceramic science known prior to applicant's priority date." 

30. Paragraph 30 of each DST AFFIDAVIT state that "[a] person of ordinary skill in 
the art of the fabrication of ceramic materials would be motivated by the teaching of the 
Bednorz-Mueller application to investigate compositions for high superconductivity other 
than the compositions specifically fabricated by Bednorz and Mueller." 

31 . Paragraph 31 of each DST AFFIDAVIT note that in Brief Attachment U, there is a 
list of perovskite materials from pages 191 to 207 in the book "Structure, Properties and 
Preparation of Perovskite-Type Compounds" by F. S. Galasso, published in 1969, which 
is Brief Attachment E. This list contains about 300 compounds. Thus, what the term 
"Perovskite-type" means and how to make these compounds was well known to a 
person of ordinary skill in the art in 1969, more than 18 years before the Applicants' 
discovery. 

This is clear evidence that a person of skill in the art of fabrication of ceramic 
materials knows (prior to Applicants' priority date) how to make the types of materials in 
Table 1 of the Rao Article and the Table from the Handbook of Chemistry and Physics 
as listed in the composite table above in paragraph 8. 

32. Paragraph 32 of each DST AFFIDAVIT note that the standard reference 
"Landholt-Bornstein", Volumn 4, "Magnetic and Other Properties of Oxides and Related 
Compounds Part A" (1970) lists at page 148 to 206 Perovskite and Perovskite-related 
structures. (See Brief Attachment N). Section 3.2 starting at page 190 is entitled 
"Descriptions of perovskite-related structures". The German title is "Perowskit-anliche 
Strukturen". The German word "anliche" can be translated in English as "like". The 
Langenscheidt's German-English, English-German Dictionary 1970, at page 446 



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translates the English "like" as the German "anliche". (See Brief Attachment O). Pages 
126 to 147 of Brief Attachment N describes "crystallographic and magnetic properties of 
perovskite and perovskite-related compounds", see title of Section 3 at page 126. 
Section 3.2.3.1 starting at page 192 of "Landholt-Bornstein" Vol. 4 (See Brief 
Attachment N) is entitled "Bismuth Compounds". Thus Bismuth perovskite-like 
compounds and how to make them were well known more than 16 years prior to 
Applicants' discovery. Thus the "Landholt Bornstein" book published in 1970, more than 
16 years before Applicants' discovery, shows that the term "perovskite-like" or 
"perovskite related" is understood by persons of skill in the art prior to Applicants' 
priority date. Moreover, the "Landholt-Bornstein" book cites references for each 
compound listed. Thus a person of ordinary skill in the art of ceramic fabrication knows 
how to make each of these compounds. Pages 376-380 of Biref Attachment N has 
figures showing the crystal structure of compounds containing Bi and Pb. 

33. Paragraph 33 of each DST AFFIDAVIT note that the standard reference 
"Landholt-Bornstein, Volume 3, Ferro- and Antiferroelectric Substances" (1969) 
provides at pages 571-584 an index to substances. (See Brief Attachment P). This list 
contains numerous Bi and Pb containing compounds. See, for example pages 578 and 
582-584. Thus a person of ordinary skill in the art of ceramic fabrication would be 
motivated by Applicants' teaching to fabricate Bi and/or Pb containing compounds that 
come within the scope of the Applicants' claims. 

34. Paragraph 34 of each DST AFFIDAVIT note that the standard reference 
"Landholt-Bornstein Volume 3 Ferro- and Antiferroelectric Substances" (1969) (See 
Brief Attachment P) at page 37, section 1 is entitled "Perovskite-type oxides." This 
standard reference was published more than 17 years before Applicants' discovery. 
The properties of perovskite-type oxides are listed from pages 37 to 88. Thus the term 
perovskite-type was well known and understood by persons of skill in the art of ceramic 
fabrication prior to Applicants' discovery and more than 17 years before Applicants' 
discovery persons of ordinary skill in the art knew how to make Bi, Pb and many other 
perovskite, perovskite-like, perovskite-related and perovskite-type compounds. 



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35. Paragraph 35 of each DST AFFIDAVIT note that at page 1 4, line 1 0-1 5 of the 
Bednorz-Mueller application, Applicants' state "samples in the Ba-La-Cu-0 system, 
when subjected to x-ray analysis, revealed three individual crystallographic phases 
V.12. a first layer-type perovskite-like phase, related to the K 2 NiF 4 structure ..." 
Applicants' priority document EP0275343A1 filed July 27, 1988, is entitled "New 
Superconductive Compounds of the K 2 NiF 4 Structural Type Having a High Transition 
Temperature, and Method for Fabricating Same." See (See Brief Attachment AE). The 
book "Structure and Properties of Inorganic Solids" by Francis S. Galasso, Pergamon 
Press (1969) at page 190 lists examples of Tallium (Tl) compounds in the K 2 NiF 4 
structure. (See Brief Attachment Q). Thus based on Applicants' teachings prior to 
Applicants' discovery, a person of ordinary skill in the art of ceramic fabrication would be 
motivated to fabricate Thallium based compounds to test for high Tc superconductivity 
in view of Applicants' teaching. 

36. Paragraph 36 of each DST AFFIDAVIT note that the book "Crystal Structures" 
Volume 4, by Ralph W. G. Wyckoff, Interscience Publishers, 1960 states at page 96 
"This structure, like these of Bi 4 Ti 2 0i 2 (IX, F 12 ) and Ba Bi 4 Ti 4 0 4 (XI, 13) is built up of 
alternating Bi 2 0 2 and perovskite-like layers." Thus a layer of perovskite-like Bismuth 
compounds was well known in the art in 1960 more than 26 years before Applicants' 
priority date. (See Brief Attachment R). 

37. Paragraph 37 of each DST AFFIDAVIT note that the book "Modern Oxide 
Materials Preparation, Properties and Device Applications" edited by Cockayne and 
Jones, Academic Press (1972) states (See Brief Attachment S) at page 155 under the 
heading "Layer Structure Oxides and Complex Compounds": 

"A large number of layer structure compounds of general formula (Bi 2 0 2 ) 2+ 
(A x -iB x 0 3 x+i) 2 " have been reported (Smolenskii et al. 1961; Subbarao, 
1962), where A = Ca, Sr, Ba, Pb, etc., B = Ti, Nb, Ta and x = 2, 3, 4, or 5. 
The structure had been previously investigated by Aurivillius (1949) who 
described them in terms of Alternate (Bi 2 0 2 ) 2+ layers and perovskite layers 
of oxygen octahedra. Few have been found to be ferroelectric and include 
SrBi 2 Ta 2 0 9 (T c = 583°K), PbBi 2 Ta 2 0 9 (T c = 703°K), BiBi 3 Ti 2 TiOi 2 or 



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Bi 4 Ti 3 0i2 (T c = 948°K), Ba2Bi 4 Ti 5 0i8 (T c = 598°K) and Pb2Bi 4 Ti 5 0i8 (T c = 
583°K). Only bismuth titanate Bi 4 Ti 3 0i2 has been investigated in detail in 
the single crystal form and is finding applications in optical stores 
(Cummins, 1967) because of its unique ferroelectric-optical switching 
properties. The ceramics of other members have some interest because 
of their dielectric properties. More complex compounds and solid 
solutions are realizable in these layer structure oxides but none have 
significant practical application." 

Thus the term layered oxides and how to make and use them were well known 
and understood prior to Applicants' discovery. Moreover, layered Bi and Pb compounds 
were well known in 1972 more than 15 years before Applicants' discovery. 

38. Paragraph 38 of each DST AFFIDAVIT note that the standard reference 
"Landholt-Bornstein, Volume 3, Ferro and Antiferroelectric Substances" (1969) at pages 
107 to 1 14 (See Brief Attachment T) list "layer-structure oxides" and their properties. 
Thus the term "layered compounds" was well known in the art of ceramic fabrication in 
1969 more than 16 years prior to Applicants' priority date and how to make layered 
compounds was well known prior to applicants priority date. 

39. Paragraph 39 of each DST AFFIDAVIT note that layer perovskite type Bi and Pb 
compounds closely related to the Bi and Pb high T c compounds in the composite table 
above in paragraph 18 have been known for some time. For example, the following is a 
list of four articles which were published about 35 years prior to Applicants' discovery: 

(1 ) Brief Attachment V - "Mixed bismuth oxides with layer lattices", B. 
Aurivillius, Arkiv Kemi 1, 463, (1950). 

(2) Brief Attachment W - "Mixed bismuth oxides with layered lattices ", 
B. Aurivillius, Arkiv Kemi 1, 499, (1950). 

(3) Brief Attachment X - "Mixed bismuth oxides with layered lattices ", 
B. Aurivillius, Arkiv Kemi 2, 519, (1951). 



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(4) Brief Attachment Y - "The structure of Bi 2 Nb0 5 F and isomorphous 
compounds", B. Aurivillius, Arkiv Kemi 5, 39, (1952). 

These articles will be referred to as Aurivillius 1 , 2, 3 and 4, respectively. 

40. Paragraph 40 of each DST AFFIDAVIT notes that Brief Attachment V (Aurivillius 
1), at page 463, the first page, has the subtitle "I. The structure type of CaNb 2 Bi 2 0 9 . 
Brief Attachment V states at page 463: 

X-ray analysis ... seemed to show that the structure was built up of Bi 2 0 2 2 + 
layers parallel to the basal plane and sheets of composition Bi 2 Ti 3 0 2 io~. 
The atomic arrangement within the Bi 2 Ti 3 0 2 io~ sheets seemed to be the 
same as in structure of the perovskite type and the structure could then be 
described as consisting of Bi 2 0 2 2 + layers between which double perovskite 
layers are inserted. 

41 . Paragraph 41 of each DST AFFIDAVIT note that Brief Attachment V (Aurivillius 

1) at page 464 has a section entitled "PbBi 2 Nb 2 0 9 Phase". And at page 471 has a 
section entitled "Bi 3 NbTiC>9". And at page 475 has a table of compounds having the 
"CaBi 2 Nb 2 0g structure" listing the following compounds Bi 3 NbTi0 9 , Bi 3 TaTi0 9 , 
CaBi 2 Nb 2 0 9 , SrBi 2 Nb 2 0 9 , SrBi 2 Ta 2 0 9 , BaBi 2 Nb 2 0 9 , PbBi 2 Nb 2 0 9 , NaBi 5 Nb 4 0i 8 , 
KBi 5 Nb 4 0i 8 . Thus Bi and Pb layered perovskite compounds were well known in the art 
about 35 years prior to Applicants' discovery. 

42. Paragraph 42 of each DST AFFIDAVIT note that Brief Attachment W (Aurivillius 

2) at page 499, the first page, has the subtitle "II Structure of Bi 4 Ti 3 0i 2 ". And at page 
510, Fig. 4 shows a crystal structure in which "A denotes a perovskite layer Bi 2 Ti 3 0 2 io", 
C Bi 2 0 2 2 + layers and B unit cells of the hypothetical perovskite structure BiTi0 3 ." 

43. Paragraph 43 of each DST AFFIDAVIT note that Brief Attachment X (Aurivillius 

3) has at page 519, the first page, the subtitle "III Structure of BaBi 4 Ti 4 0i 5 ". And in the 



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first paragraph on page 519 states referring to the articles of Brief Attachments V 
(Aurivillius 1), and W (Aurivillius 2) "X ray studies on the compounds CaBi 2 Nb20g [the 
article of Brief Attachment V] and Bi 4 Ti 3 0i2 [the article of Brief Attachment W] have 
shown that the comparatively complicated chemical formulae of these compounds can 
be explained by simple layer structures being built up from Bi 2 0 2 2 + layers and perovskite 
layers. The unit cells are pictured schematically in Figs. 1a and 1c." And Fig. 4 at page 
526 shows "One half of a unit cell of BaBi 4 Ti 4 0i 5 . A denotes the perovskite region and 
B the Me2C>4 layer" where Me represents a metal atom. 

44. Paragraph 44 of each DST AFFIDAVIT note that Brief Attachment Y (Aurivillius 
4) is direct to structures having the Bi 3 Ni 0 C>3F structure. 

45. Paragraph 45 of each DST AFFIDAVIT note that Brief Attachment AA is a list of 
Hg containing solid state compounds from the 1989 Powder Diffraction File Index. 
Applicants do not have available to them an index from prior to Applicants' priority date. 
The Powder Diffraction File list is a compilation of all known solid state compounds with 
reference to articles directed to the properties of these compositions and the methods of 
fabrication. From Brief Attachment AA it can be seen, for example, that there are 
numerous examples of Hg based compounds. Similarly, there are examples of other 
compounds in the Powder Diffraction File. A person of ordinary skill in the art is aware 
of the Powder Diffraction File and can from this file find a reference providing details on 
how to fabricate these compounds. Thus persons of ordinary skill in the art would be 
motivated by Applicants' teaching to look to the Powder Diffraction File for examples of 
previously fabricated composition expected to have properties similar to those 
described in Applicants' teaching. 

46. Paragraph 46 of each DST AFFIDAVIT note that it is generally recognized that it 
is not difficult to fabricate transition metal oxides and in particular copper metal oxides 
that are superconductive after the discovery by Applicants of composition, such as 
transition metal oxides, that are high T c superconductors. This is noted in the book 
"Copper Oxide Superconductors" by Charles P. Poole, Jr., Timir Datta and Horacio A. 



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Farach, John Wiley & Sons (1998), referred to herein as Poole 1988. Chapter 5 of 
Poole 1988 (See Brief Attachment AF and AW) entitled "Preparation and 
Characterization of Samples" 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 1988 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." Poole 1988 further 
states at pages 61-62 "[i]n the solid state reaction technique one starts with oxygen-rich 
compounds of the desired components such as oxides, nitrates or carbonates of Ba, Bi, 
La, Sr, Ti, Y or other elements. ... These compounds are mixed in the desired atomic 
ratios and ground to a fine powder to facilitate the calcination process. Then these 
room-temperature-stabile salts are reacted by calcination for an extended period 
(~20hr) at elevated temperatures (~900°C). This process may be repeated several 
times, with pulverizing and mixing of the partially calcined material at each step." 
Paragraph 46 of each DST Affidavit states that this is generally the same as the specific 
examples provided by Applicants and as generally described at pages 8, line 19, to 
page 9, line 5, of the present application which states "[t]he methods by which these 
superconductive compositions can be made can use known principals of ceramic 
fabrication, including the mixing of powders containing the rare earth or rare earth-like, 
alkaline earth, and transition metal elements, coprecipitation of these materials, and 
heating steps in oxygen or air. A particularly suitable superconducting material in 
accordance with this invention is one containing copper as the transition metal. Each 
DST AFFIDAVIT states in paragraph 46 "Consequently, it is my opinion that Applicants 
have fully enabled high T c materials, [sic] oxides and their claims. 

47. Paragraph 47 of each DST AFFIDAVIT note that Charles Poole et al. published 
another book in 1995 entitled "Superconductivity" Academic Press which has a Chapter 



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7 on "Perovskite and Cuprate Crystallographic Structures". (See Brief Attachment Z). 
This book will be referred to as Poole 1995. 

At page 1 79 of Poole 1 995 states: 

V. PEROVSKITE-TYPE SUPERCONDUCTING STRUCTURES 

In their first report on high-temperature superconductors Bednorz and 

Mueller (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. 

Paragraph 47 of each DST AFFIDAVIT states "I agree with this statement." 

48. Paragraph 48 of each DST AFFIDAVIT 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 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 
La 2 Cu0 4 , neodymium superconductor Nd 2 Cu0 4 , yttrium superconductor YBa 2 Cu 3 02n+4, 



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bismuth superconductor Bi 2 Sr 2 Ca n -i Cu n 0 2n +4, thallium superconductor TI 2 Ba 2 Ca n - 
iCu n 0 2n +4, and mercury superconductor HgBa 2 Ca n -iCu n 0 2n +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 La 2 Cu0 4 . Fig. 8.1 1 at page 110 shows a schematic crystal 
structure showing the layering scheme for HgBa 2 Ca 2 Cu308+ x - Paragraph 48 of each 
DST AFFIDAVIT states that "[t]he layering shown in Poole 1996 (Brief Attachment AG) 
for high T c superconductors is consistent with the layering as taught by Bednorz and 
Mueller in their patent application." 

49. Paragraph 49 of each DST AFFIDAVIT note that thus Poole 1 988 (Brief 
Attachment AF and AW) states that the high T c superconducting materials "are not 
difficult to synthesize" and Poole 1995 (Brief Attachment Z) states that "the new 
superconductors do indeed possess [the] characteristics" that Applicants' specification 
describes these new superconductors to have. Poole 1996 (Brief Attachment AG) 
provide details showing that high T c superconductors are layered or layer-like as taught 
by Bednorz and Mueller. Therefore, as of Applicants' discovery persons of ordinary skill 
in the art of ceramic fabrication were enabled to practice Applicants' invention to the full 
scope that it is presently claimed, including in the claims that are not allowed from the 
teaching in the Bednorz-Mueller application without undue experimentation that is by 
following the teaching of Bednorz and Mueller in combination with what was known to 
persons of ordinary skill in the art of ceramic fabrication. In paragraph 49 east DST 
AFFIDAVIT states "The experiments to make high T c superconductors not specifically 
identified in the Bednorz-Mueller application were made by principles of ceramic 
fabrication prior to the date of their first publication. It is within the skill of a person of 
ordinary skill in the art of ceramic fabrication to make compositions according to the 
teaching of the Bednorz-Mueller application to determine whether or not they are high 
T c superconductors without undue experimentation." 

50. Paragraph 50 of each of the DST AFFIDAVITS states: 



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I have personally made many samples of high Tc superconductors 
following the teaching of Bednorz and Mueller as found in their 
patent applications. In making these materials it was not necessary 
to use starting materials in stoichiometric proportions to produce a 
high T c superconductor with insignificant secondary phases or 
multi-phase compositions, having a superconducting portion and a 
non-superconducting portion, where the composite was a high Tc 
superconductor. Consequently, following the teaching of Bednorz 
and Mueller and principles of ceramic science known prior to their 
discovery, I made, and persons of skill in the ceramic arts were 
able to make, high T c superconductors without exerting extreme 
care in preparing the composition. Thus I made and persons of 
skill in the ceramic arts were able to make high T c superconductors 
following the teaching of Bednorz and Mueller, without 
experimentation beyond what was well known to a person of 
ordinary skill in the ceramic arts prior to the discovery by Bednorz 
and Mueller. 



In the Final Action the Examiner has not specifically commented on nor rebutted 
the arguments of the DST AFFIDAVITS, therefore it's Applicants' understanding that the 
Examiner agrees with the DST AFFIDAVITS. Since the Examiner has not rebutted the 
DST AFFIDAVITS affiants and the qualifications, it is Applicants' understanding that the 
Examiner accepts the DST AFFIDAVITS (and the affiants of the affidavits of Brief 
Attachments AH to AL) as reliable experts in the ceramic arts, in particular the 
superconductive ceramic arts. 



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EXAMINER'S ARGUMENTS IN THE FINAL REJECTION 



In the Final Office Action at page 4 the Examiner states: 

Applicant remarks regarding these rejections have been fully 
considered. A rebuttal follows below. In arguing the instant enablement 
rejection, applicant contends that the Examiner has not provided any 
factual evidence that the art of high temperature superconductivity is 
an extremely unpredictable one. 

As shown above the patent legal term "predictable art" or "unpredictable art" is 
not synonymous with "theoretical predictability," but means "how to make and use" 
predictability which is the standard of 35 USC 112, first paragraph. The evidence 
submitted by Applicants clearly shows that persons of skill in the art know how "to make 
and use" species that come within the scope of Applicants' claims and thus the art of 
the high T c superconductors is a "predictable art" within the meaning of that term in the 
patent law. A predictable art is one in which species within the scope of the claim can 
be determined without undue experimentation or testing (See Ex parte Jackson supra) 



At page 4 to 5 of the Final Action the Examiner states: 
Applicant's statements include: 

Applicants request that the Examiner provide an Examiner's affidavit 
showing that the Examiner has expertise to make such a statement not 
supported by documented factual evidence (Response filed 1/31/05, 
page 119).: 

The Examiner should withdraw the rejection, provide factual evidence 
to support the opinion or submit an Examiner's affidavit under MPEP 
706.02(a) qualifying himself as an expert in the art of high Tc. 
superconductivity to offer such a conclusory opinion (Response filed 
1/31/05, page 121). 

The Examiner has not provided the requested Examiner's affidavit. 



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The Examiner further quotes Applicants: 



The Examiner has provided no evidence to support the statement 'that 
at the time the invention was made, the theoretical mechanism of 
superconductivity in these materials was not well understood. This 
mechanism is still not understood'. Applicant's request the Examiner to 
introduce evidence to support this statement or to place an Examiner's 
affidavit under MPEP 706.02(a) qualifying himself as an expert to 
make this statement (Response filed 1/31/05, page 136) . 

The Examiner did not provide the requested Examiner's affidavit, but the Examiner 



Enclosed are articles relating to experimental and theoretical work on 
superconductivity. 

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) discusses both 
the practical applications and theoretical mechanisms relating to 
superconductivity. 

At page 4, the Schuller reference states (Referred to herein as Schuller 
Paragraph 1): 

Basic research in high temperature superconductivity, because the 
complexity of the materials, brings together expertise from materials 
scientists, physicists and chemists, experimentalists and theorists... It 
is important to realize that this field is based on complex materials and 
because of this materials science issues are crucial. Microstructures, 
crystallinity, phase variations, nonequilibrium phases, and overall 
structural issues playa crucial role and can strongly affect the physical 
properties of the materials. Moreover, it seems that to date there are 
no clear-cut directions for searches for new superconducting phases, 
as shown by the serendipitous discovery of superconductivity in M g B 2 . 
Thus studies in which the nature of chemical bonding and how this 
arises in existing superconductors may prove to be fruitful. 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 
M g B 2 have not uncovered any new superconductors (Referred to 
herein as Schuller Paragraph 1). 



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At pages 5-6, the Schuller reference states (Referred to herein as Schuller 
Paragraph 2): 

The theory of high temperature superconductivity has proven to be 
elusive to date. This is probably as much caused by the fact that in 
these complex materials it is very hard to establish uniquely even the 
experimental phenomenology, as well as by the evolution of many 
competing models, which seem to address only particular aspects of 
the problem. The Indian story of the blind men trying to characterize 
the main properties of an elephant by touching various parts of its body 
seems to be particularly relevant. It is not even clear whether there is a 
single theory of superconductivity or whether various mechanisms are 
possible. Thus it is impossible to summarize, or even give a complete 
general overview of all theories of superconductivity and because of 
this, this report will be very limited in its theoretical scope. 

At page 7, the Schuller reference states (Referred to herein as Schuller 
Paragraph 3): 

Thus far " the existence of ,a totally new superconductor has proven 
impossible to predict from first principles. Therefore their discovery has 
been based largely on empirical approaches, intuition, and. even 
serendipity. This unpredictability is at the root of the excitement that 
the condensed matter community displays at the discovery of a new 
material that is superconducting at high temperature. 

In response to the Schuller article Applicants submitted the Affidavit of Newns (Brief 
Attachment AP). The Affidavit of Newns describes in detail what a theory is in solid state 
science and comments on the three paragraphs from Schuller that the Examiner relies on. Dr. 
Newns has qualified himself as an expert in theoretical solid state science. The Examiner has 
not commented on nor rebutted Dr. Newns' affidavit (Brief Attachment AP.) 



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Dr. Newns Affidavit 



1 . Paragraph 4 of the Newns Affidavit lists Dr. Newns educational history to qualify 
him as an expert in the field of theoretical solid state science. 

2. Paragraph 2 of the Newns Affidavit refers to Dr. Newns stating that his resume 
and curriculum vitale are attached to the affidavit to qualify Dr. Newns as an 
expert in the theoretical solid state science. 

3. Paragraph 3 of the Newns Affidavit refers to 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 mechanisms relating to superconductivity." 

4. Paragraph 4 of the Newns Affidavit quotes the passage that the Examiner at page 4 
of the Final Action cites from page 4 of Schuller et al. (Schuller Paragraph 1) 

5. Paragraph 5 of the Newns Affidavit quotes the passage that the Examiner at pages 

4 -5 of the Final Action cites from pages 5- 6 of Schuller et al. (Schuller Paragraph 2) 

6. Paragraph 5 of the Newns Affidavit quotes the passage that the Examiner at page 5 
of the Final Action cites page 7 of Schuller et al. (Schuller Paragraph 3) 

7. In Paragraph 7 of the Newns Affidavit Dr. Newns states that he is submitting his 
declaration to clarify what is meant by predictability in theoretical solid state science. 
Dr. Newns notes that all solid state materials, even elemental solids, present 
theoretical problems. That difficulty begins with the basic mathematical formulation 
of quantum mechanics and how to take into account all interactions that are involved 
in atoms having more than one electron and where the interactions between the 
atoms may be covalent, ionic or Van der Waals interactions. A theory of a solid is 
based on approximate mathematical formalisms to represent these interactions. A 
theoretical solid state scientist makes an assessment using physical intuition, 
mathematical estimation and experimental results as a guide to focus on features of 
the complex set of interactions that this assessment suggests are dominant in their 
effect on the physical phenomena for which the theorist is attempting to develop a 
theory. This process results in what is often referred to as mathematical formalism. 

Volume 1 Page 1 96 of 377 



This formalism is then applied to specific examples to determine whether the 
formalism produces computed results that agree with measured experimental 
results. This process can be considered a "theoretical experiment." For example, 
applying the theoretical formalism to a particular crystal structure comprised of a 
particular set of atoms to compute a value of a desired property is in this context a 
"theoretical experiment." 

8. Paragraph 8 of the Newns Affidavit notes that even when a successful theoretical 
formalism is developed, that formalism does not produce a list of materials that have 
a particular property that is desired. Rather for each material of interest the same 
"theoretical experiment" must be conducted. Moreover, even if such a "theoretical 
experiment" indicates that the particular material investigated has the property, there 
is no assurance that it does without experimentally fabricating the material and 
experimentally testing whether it has that property. 

9. In paragraph 8 of the Newns Affidavit Dr. Newns notes for example, semiconductors 
have been studied both experimentally and theoretically for more than 50 years. The 
theory of semiconductors is well understood. A material is a semiconductor when 
there is a filled valence band that is separated from the next empty or almost empty 
valence band by an energy that is of the order of the thermal energy of an electron 
at ambient temperature. The electrical conductivity of the semiconductor is 
controlled by adding dopants to the semiconductor crystal that either add electrons 
to the empty valence band or remove electrons from the filled valence band. 
Notwithstanding this theoretical understanding of the physical phenomena of 
semiconductivity, that understanding does not permit either a theoretical or 
experimental solid state scientist to know a priori what materials will in fact be a 
semiconductor. Even with the well developed semiconductor theoretical formalisms, 
that theory cannot be asked the question "can you list for me all materials that will be 
a semiconductor?" Just as an experimentalist must do, the theoretical scientist 
must select a particular material for examination. If the particular material already 
exists, an experimentalist can test that material for the semiconducting property. If 
the particular material does not exist, the theoretical solid state scientist must first 
determine what the crystal structure will be of that material. This in of itself may be a 



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formidable theoretical problem to determine accurately. Once a crystal structure is 
decided on, the theoretical formalism is applied in a "theoretical experiment" to 
determine if the material has the arraignment of a fully filled valence and an empty 
valence band with the correct energy spacing. Such a theoretical experiment 
generally requires the use of a computer to compute the energy band structure to 
determine if for the selected composition the correct band configuration is present 
for the material to be a semiconductor. This must be verified by experiment. Even 
with the extensive knowledge of semiconducting properties such computations are 
not 100% accurate and thus theory cannot predict with 100% accuracy what material 
will be a semiconductor. Experimental confirmation is needed. Moreover, that a 
theoretical computation is a "theoretical experiment" is in the conceptual sense not 
different than a physical experiment. The theorist starting out on a computation, just 
as an experimentalist staring out on an experiment, has an intuitive feeling that, but 
does not know whether, the material studied will in fact be a semiconductor. As 
stated above solid state scientists, both theoretical and experimental, are initially 
guided by physical intuition based on prior experimental and theoretical work. 
Experiment and theory complement each other, at times one is ahead of the other 
in an understanding of a problem, but which one is ahead changes over time as an 
understanding of the physical phenomena develops. 

1 0. Paragraph 1 0 of the Newns Affidavit notes that the description of the 
semiconductor situation is for illustration of the capability of theory in solid state 
science where there is a long history of both experimental and theoretical 
developments. 

1 1 . Paragraph 1 1 of the Newns Affidavit notes that superconductivity was first 
discovered by H. Kammerlingh Onnes in 191 1 and the basic theory of 
superconductivity has been known many years before Applicants' discovery. For 
example, see the book "Theory of Superconductivity", M. von Laue, Academic 
Press, Inc., 1952 (See Brief Attachment AD). Prior to Applicants' discovery 
superconductors were grouped into two types: Type I and Type II. 

12. Paragraph 1 2 of the Newns Affidavit notes that the properties of Type I 
superconductors were modeled successfully by the efforts of John Bardeen, Leon 



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Cooper, and Robert Schrieffer in what is commonly called the BCS theory. A key 
conceptual element in this theory is the pairing of electrons close to the Fermi level 
into Cooper pairs through interaction with the crystal lattice. This pairing results from 
a slight attraction between the electrons related to lattice vibrations; the coupling to 
the lattice is called a phonon interaction. Pairs of electrons can behave very 
differently from single electrons which are fermions and must obey the Pauli 
exclusion principle. The pairs of electrons act more like bosons which can condense 
into the same energy level. The electron pairs have a slightly lower energy and leave 
an energy gap above them on the order of .001 eV which inhibits the kind of collision 
interactions which lead to ordinary resistivity. For temperatures such that the thermal 
energy is less than the band gap, the material exhibits zero resistivity. (Applicants; 
claim 31 explicitly recites "said composition has crystalline structure which enhances 
electron-phonon interactives to produce superconductivity at a temperature greater 
than or equal 26K." 

1 3. Paragraph 1 3 of the Newns Affidavit notes that there are about thirty pure metals 
which exhibit zero resistivity at low temperatures and have the property of excluding 
magnetic fields from the interior of the superconductor (Meissner effect). They are 
called Type I superconductors. The superconductivity exists only below their critical 
temperatures and below a critical magnetic field strength. Type I and Type II 
superconductors (defined below) are well described by the BCS theory. 

14. Paragraph 14 of the Newns Affidavit notes that starting in 1930 with lead-bismuth 
alloys, a number of alloys were found which exhibited superconductivity; they are 
called Type ll_superconductors. They were found to have much higher critical fields 
and therefore could carry much higher current densities while remaining in the 
superconducting state. 

1 5. Paragraph 1 5 of the Newns Affidavit notes that ceramic materials are expected to 
be insulators -- certainly not superconductors, but that is just what Georg Bednorz 
and Alex Muller, the inventors of the present patent application under examination, 
found when they studied the conductivity of a lanthanum-barium-copper oxide 
ceramic in 1986. Its critical temperature of 30 K was the highest which had been 
measured to date, but their discovery started a surge of activity which discovered 



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materials exhibiting superconducting behavior in excess of 125 K. The variations on 
the ceramic materials first reported by Bednorz and Muller which have achieved the 
superconducting state at much higher temperatures are often just referred to as high 
temperature superconductors and form a class of their own. 

16. Paragraph 1 6 of the Newns Affidavit notes that it is generally believed by 
theorists that Cooper pairs result in High Tc superconductivity. What is not 
understood is why the Cooper pairs remain together at the higher temperatures. A 
phonon is a vibration of the atoms about their equilibrium positions in a crystal. As 
temperature increases these vibrations are more complex and the amplitude of 
these vibrations is larger. How the Cooper pairs interact with the phonons at the 
lower temperature, when these oscillations are less complex and of lower amplitude, 
is understood, this is the BCS theory. Present theory is not able to take into 
account the more complex and larger amplitude vibrations that occur at the higher 
temperatures. 

1 7. Paragraph 1 7 of the Newns Affidavit notes that in the article of Schuller referred 
to by the Examiner paragraphs 4, 5 and 6 present essentially the same picture. 

18. Paragraph 1 8 of the Newns Affidavit notes that in Schuller paragraph 4 of the 
Schuller Affidavit (from pages 4 to 5 of The Final Action, Schuller paragraphs 1 , 2 
and 3) above, 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 MgB 2 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. That a similar use of intuition and systematic searching 
"after the discovery of superconductivity in MgB 2 have not uncovered any new 
superconductors" is similar to a "theoretical experiment" that after the computation 



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is done does not show that the material studied has the property being investigated, 
such as semiconductivity. The Schuller article was published in April 2002 
approximately one year after the experimental discovery of superconductivity in 
MgB 2 was reported on in March 2001 (Reference 8 of the Schuller article. See 
paragraph 19 of the Newns Affidavit.) This limited time of only one year is not 
sufficient to conclude that systematic searching "after the discovery of 
superconductivity in MgB 2 " cannot uncover any new superconductors. 
Experimental investigations of this type are not more unpredictable than theoretical 
investigations since the experimental investigation has a known blue print or course 
of actions, just as does a "theoretical experiment." Just as a physical experimental 
investigation may lead to a null result, a "theoretical experiment" may lead to a null 
result. In the field of High Tc superconductivity physical experiment is as predictable 
as a well developed theory since the experimental procedures are well known even 
though very complex. Experimental complexity does not mean the field of High Tc 
superconductivity is unpredictable since the methods of making these material are 
so well known. 

19. Paragraph 19 of the Newns Affidavit notes that in Schuller paragraph 1 in 
paragraph 4 of the Newns Affidavit above, Schuller refers to the discovery of MgB 2 
citing the paper of Nagamatsu et al. Nature Vol. 410, March 2001 in which the MgB 2 
is reported to have a Tc of 39 K, to have a layered graphite crystal structure and to 
be made from powders using know ceramic processing methods. MgB 2 has a 
substantially simpler structure than the first samples reported on by Bednorz and 
Muller and therefore, can be more readily investigated theoretically. There have 
been recent reports by Warren Pickett of the University of California at Davis and by 
Marvin L. Cohen and Steven Louie at the University of California at Berkeley 
describing progress in a theoretical understanding of the Tc of M g B 2 . It is not 
surprising that progress in the theory of superconductivity at 39 K has been made 
based on this relatively simple material. In fact a few months after the Schuller article 
was published in April 2002, Marvin .L Cohen and Steven Louie were authors on an 
article Choi, HJ; Roundy, D; Sun, H; Cohen, ML; Louie, SG "First-principles 
calculation of the superconducting transition in MgB 2 within the anisotropic 



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Eliashberg formalism " PHYSICAL REVIEW B; JUL 1, 2002; Vol. 66; p 20513. The 
following is from the Abstract of this article: 

"We present a study of the superconducting transition in MgB 2 using the ab 
initio pseudopotential density-functional method, a fully anisotropic 
Eliashberg equation, and a conventional estimate for//*. Our study shows 
that the anisotropic Eliashberg equation, constructed with ab initio 
calculated momentum-dependent electron-phonon interaction and 
anharmonic phonon frequencies, yields an average electron-phonon 
coupling constant A=0.61 , a transition temperature Tc=39 K, and a boron 
isotope-effect exponent a(B)=0.32. The calculated values for Tc. X, and g(B) 
are in excellent agreement with transport, specific-heat, and isotope-effect 
measurements, respectively . The individual values of the electron-phonon 
coupling 2(k,k(')) on the various pieces of the Fermi surface, however, vary 
from 0.1 to 2.5. The observed Tc is a result of both the raising effect of 
anisotropy in the electron-phonon couplings and the lowering effect of 
anharmonicity in the relevant phonon modes." (Emphasis added) 



Thus the statement of the Schuller article in Schuller paragraph 2 (quoted in paragraph 
5 of the Newns Affidavit) above "The theory of high temperature superconductivity has 
proven to be elusive to date" is not totally accurate since shortly after the publication of 
the Schuller article a theory of the Tc of MgB 2 was published by Marvin L. Cohen and 
Steven Louie. 



A month later they expanded on this in the article Choi, HJ; Roundy, D; Sun, H; Cohen, 
ML; Louie, SG "The origin of the anomalous superconducting properties of MgB2" 
NATURE, AUG 15, 2002;Vol 418; pp 758-760. The following is from the Abstract of this 



" Magnesium diboride ... differs from ordinary metallic superconductors in 
several important ways, including the failure of conventional models ... to 
predict accurately its unusually high transition temperature, the effects of 
isotope substitution on the critical transition temperature, and its 
anomalous specific heat... A detailed examination of the energy associated 
with the formation of charge-carrying pairs, referred to as the 
'superconducting energy gap', should clarify why MgB 2 is different. Some 
early experimental studies have indicated that MgB 2 has multiple gaps... 
Here we report an ab initio calculation of the superconducting gaps in MgB 2 
and their effects on measurable quantities. An important feature is that the 
electronic states dominated by orbitals in the boron plane couple strongly to 
specific phonon modes, making pair formation favourable. This explains the 



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high transition temperature, the anomalous structure in the specific heat, 
and the existence of multiple gaps in this material. Our analysis suggests 
comparable or higher transition temperatures may result in layered 
materials based on B. C and N with partially filled planar orbitals. (Emphasis 
added) 

Thus the statement in the Schuller article in paragraph 5 of the Newns Affidavit 
(Schuller Paragraph 2 above) "Thus far, the existence of, a totally new superconductor 
has proven impossible to predict from first principles" was shown by the work of Marvin 
.L. Cohen and Steven Louie published shortly after the article of Schuller also to be not 
totally accurate. Moreover, the highlighted section of the abstract refers to layered as a 
property of the materials just as Applicants' specification has identified layered as a 
property of high Tc superconductors. See Applicants' original claim 9. 

20. Paragraph 20 of the Newns Affidavit notes that in paragraph 5 of the Newns 
Affidavit above (Schuller Paragraph 2) Schuller states "The theory of high temperature 
superconductivity has proven to be elusive to date." As stated above although solid 
state theorist believe that Cooper Pairs are the mechanism of the High Tc 
superconductors, we do not as of yet completely understand how to create a 
mathematical formalism that takes into account the atomic vibrations at these higher 
temperatures to theoretically permit electrons to remain paired. 

21 . Paragraph 21 of the Newns Affidavit notes that in paragraph 5 of the 
Newns Affidavit above (Schuller Paragraph 2) Schuller further states "This is probably 
as much caused by the fact that in these complex materials it is very hard to establish 
uniquely even the experimental phenomenology." Even though these materials are 
complex that complexity does not have to be understood to make these material since 
experimental solid state scientists well understand the method of making these 
materials. The book "Copper Oxide Superconductors" by Charles P. Poole, Jr., Timir 
Datta and Horacio A. Farach, John Wiley & Sons (1998), (See Brief Attachment AF and 
AW) referred to herein as Poole 1988 states in Chapter 5 entitled "Preparation and 
Characterization of Samples" states at page 59: 

"Copper oxide superconductors with a purity sufficient to exhibit zero resistivity 
or to demonstrate levitation (Early) are not difficult to synthesize. We believe 



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that this is at least partially responsible for the explosive worldwide growth in 
these materials". 

Poole 1988 further states at page 61 : 

"In 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." 

22. Paragraph 22 of the Newns Affidavit states "It is thus clear that experimentalists 
knew, at the time of Benorz and Muller's discovery, how to make the High Tc class of 
material and that to do so it was not necessary to precisely understand the experimental 
phenomenology." 

23. Paragraph 23 of the Newns Affidavit notes that Charles Poole et al. published 
another book in 1995 entitled "Superconductivity" Academic Press which has a Chapter 
7 on "Perovskite and Cuprate Crystallographic Structures". (See 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 Miiller (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. 

24. Paragraph 24 of the Newns Affidavit states "thus Poole 1 988 states that the high 
T c superconducting materials are not difficult to synthesize and Poole 1995 states that 
the new superconductors do indeed possess [the] characteristics that Applicants' 
specification (the patent application currently under examination) describes these new 
superconductors to have." 

25. Paragraph 25 of the Newns Affidavit quotes from Schuller Paragraph 2 in 
(paragraph 5 of the Newns Affidavit above) Schuller states: 



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"The theory of high temperature superconductivity has proven to be 
elusive to date. This is ....caused by the fact ... the evolution of many 
competing models, which seem to address only particular aspects of 
the problem. The Indian story of the blind men trying to characterize 
the main properties of an elephant by touching various parts of its 
body seems to be particularly relevant. It is not even clear whether 
there is a single theory of superconductivity or whether various 
mechanisms are possible. Thus it is impossible to summarize, or even 
give a complete general overview of all theories of superconductivity 
and because of this, this report will be very limited in its theoretical 
scope." 

Paragraph 25 of the Newns Affidavit notes that the initial development of a theory 

always considers the problem from many different aspects until the best and most 

fruitful approach is realized. That at this time "It is not even clear whether there is a 

single theory of superconductivity or whether various mechanisms are possible" does 

not mean that experimental solid state scientists do not know how make this class of 

High Tc materials. As stated by Poole 1988 and Poole 1995 the experimental solid state 

scientist does know how to make this class of High Tc materials. 

26. Paragraph 26 of the Newns Affidavit notes that the Examiner at page 5 of 

the Final Action cites page 7 of Schuller et al (Schuller Paragraph 3) which states: 

"Thus far, the existence of, a totally new superconductor has proven 
impossible to predict from first principles. Therefore their discovery has 
been based largely on empirical approaches, intuition, and. even 
serendipity. This unpredictability is at the root of the excitement that the 
condensed matter community displays at the discovery of a new material 
that is superconducting at high temperature." 

A first principles theory that accurately predicts all physical properties of a material does 
not exist for as simple a material as water in its solid form as ice which may very well be 
the most extensively studied solid material. Most theories of solid state materials have 
phenomenological components that are approximations based on empirical evidence. 
As stated above solid state theoretical scientists have not as of yet formulated a 
theoretical formalism that accounts for electrons remaining paired as Cooper pairs at 
higher temperatures. But this does not prevent experimental scientists from fabricating 
materials that have structurally similar properties to the materials first discovered by 
Bednorz and Muller. This is particularly true since the basic theory of superconductivity 



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was also well known at the time of their discovery and the methods of making these 
materials was well known at the time of their discovery. It was not necessary at the time 
of their discovery to have the specific theoretical mechanism worked out in detail in 
order to make samples to test for High Tc superconductivity. Even Schuller 
acknowledges "empirical searches in the oxides gave rise to many superconducting 
systems." 



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COMMENTS ON THE SCHULLER ARTICLE 



Schuller Paragraph 1 as noted above and as discussed in the Newns Affidavit (Brief 
Attachment AP) states: 

Moreover, it seems that to date there are no clear-cut directions for 
searches for new superconducting phases, as shown by the 
serendipitous discovery of superconductivity in MgB 2 . Thus studies in 
which the nature of chemical bonding and how this arises in existing 
superconductors may prove to be fruitful. 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 MgB 2 have not 
uncovered any new superconductors 

And Schuller Paragraph 3 as noted above and as discussed in the Newns 
Affidavit (Brief Attachment AP) states: 

Thus far " the existence of ,a totally new superconductor has proven 
impossible to predict from first principles. Therefore their discovery has 
been based largely on empirical approaches, intuition, and. even 
serendipity. This unpredictability is at the root of the excitement that 
the condensed matter community displays at the discovery of a new 
material that is superconducting at high temperature. 

Schuller clearly acknowledges that enlightened empirical searches guided by chemical 
and materials intuition or systematic searches using well-defined strategies gave rise to 
many superconducting systems in the oxides. As stated above once Applicants 
revealed their discovery this is what persons of ordinary skill in the art did to determine 
other species within the scope of Applicants' claims. This is clear acknowledgement 
that no undue experimentation was involved in this determination. Schuller paragraph 2 
also states "similar (probable?) searches after the discovery of superconductivity in 
MgB 2 have not uncovered any new superconductors." This is clear acknowledgement 
that after the discovery of MgB 2 , which is a layered material made by ceramic 
processing, other species have been made by systematic studies guided by the same 
intuition, that is enabled, and tested and found not to be high Tc superconductors. That 



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these materials were made and tested means that they were enabled. That they were 
tested and found not to be high Tc superconductors does not mean that they are not 
enabled. Schuller paragraph 1 refers to "the serendipitous discovery of 
superconductivity in MgB 2 " and Schuller paragraph 3 refers to "Therefore their discovery 
has been based largely on empirical approaches, intuition, and. even serendipity." A 
serendipitous discovery is an unexpected result, which does not establish lack of 
enablement, but that discovery of such species may entitle the discoverer to a patent on 
that specie due to unexpected results as contemplated by In re Fisher, supra. Thus the 
Schuller article corroborates Applicants' position that their application enables the 
rejected claims. There is nothing in the Schuller article that states directly or implies 
that anything other than Applicants discovery and what was known prior to Applicants' 
discovery was used to make oxide or non-oxide species that were and were not high Tc 
superconductors. As noted above Applicants are not required, to satisfy the 
enablement requirement, to foresee all species that come within the scope of their 
claims when they can be determined without undue experimentation and testing. When 
the USPTO allows a later claim to a species because of unexpected results, that does 
not render an earlier allowed genus claim to that species not enabled and invalid. Thus 
serendipity does not result in lack of enablement. This is consistent with In re Hogan, 
supra, an In re Wright, supra, which state that information developed after the filing date 
of the genus cannot be used to show enablement or lack of enablement. 

As noted above Applicants' specification explicitly teaches high Tc compositions 
containing Mg. Mg is an alkaline earth element. See Brief Volume 2 for details at page 
138-139. 



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In the Final Action at page 7 the Examiner states: 

A published article entitled "Exploring Superconductivity" published at 

( http: //www.nobelchannel.com/learningstudio/ introduction ), states: 

It is worth noting that there is no accepted theory to explain the high- 
temperature behavior of this type of compound. The BCS theory , which 
has proven to be a useful tool in understanding lower-temperature 
materials, does not adequately explain how the Cooper pairs in the 
new compounds hold together at such high temperatures. When 
Bednorz was asked how high-temperature superconductivity works, he 
replied, "If I could tell you, many of the theorists working on the 
problem would be very surprised." 

Submitted with Applicants' Second Amendment After Final Rejection dated April 12, 
2006 is a declaration under 37 CFR 1 .132 (Brief Attachment AQ) of co-inventor Georg 
Bednorz explaining the meaning of the statement attributed to him "If I could tell you, many of 
the theorists working on the problem would be very surprised" in response to a question from 
the interviewer about the mechanism of High Tc superconductivity. Co-inventor Georg 
Bednorz states: 

I am an experimental scientist and in the field of solid state science, 
because of the complexities of theory and experiment, workers in the field 
are either experimentalist or theorist and typically not both. In this field, 
including the field of high Tc superconductivity, theory utilizes complex 
mathematical procedures about which theorist are expert. Thus theorist 
working in the field would have been surprised if, I , as an experimentalist, 
had been the sole person in the field to gain sufficient overview and 
experimental and theoretical insight, to propose a final theory of high 
temperature superconductivity at this early stage of research. 

In the Final Action at page 7 the Examiner states: 

It is clear from these articles, published well after the filing date of the 
instant application, that the art is still considered complex and 
unpredictable, and that no single theory for the mechanism responsible 
for superconductivity has been generally accepted. 

For the reasons given above Applicants respectfully disagree that the "art is ...unpredictable" 
within the meaning of the US patent law as described in detail above. Applicants agree that 
the art is complex. As the Shaw Affidavit of 2005, the Tsuei Affidavit of 2005 and the Dinger 
Affidavit of 2005 (the DST AFFIDAVITS Brief Attachments AM, An and AO) state in 



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paragraph 11 of each of these affidavits a person of ordinary skill in the art of fabrication of 
ceramic materials has a high level of training and skill and can fabricate these materials 
without undue experimentation. As stated in paragraph 10 of these affidavits considerably 
less training and skill is needed to test these materials for superconductivity properties. The 
Examiner has not commented on nor rebutted the DST Affidavits. 

The Examiner states at page 8 of the Final Action: 

Applicant has taken the position that the instant "apparatus" claims do 
not require the instant specification be fully enabled for the claimed 
superconductive compositions. At page 157 of the response filed 
1/31/05, applicant states "Notwithstanding, since the claims are 
apparatus and device claims, Applicants do not believe that they are 
required to provide a teaching of how to fabricate all compositions 
which may be used within the full scope of Applicant's claimed 
invention". 

Applicants note that the Board in Ex parte Jackson, supra, recognizes that enablement 
is applied differently in different contexts when it says at 217 USPQ 808 "The problem 
of enablement of processes carried out by microorganisms were uniquely different from 
the field of chemistry generally." 

The Examiner has mischaracterized Applicants' comments at page 157 of the 
response filed 1/31/0. Applicants claims are not composition of matter claims, but 
are apparatus claims and required enablement is for apparatus claims which are, 
as explained above, of narrower scope than composition claims. Notwithstanding 
Applicants have shown extensive evidence that persons of skill in the art can 
make high Tc compositions without undue experimentation. The Examiner has 
acknowledged this, as described above, when the Examiner rejected 
composition claims as anticipated by prior art. The claims under examination are 
a use of the high Tc property of those compounds that was discovered by 
Applicants. The Examiner has also acknowledged this by the rejection of 



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Applicants' claims as obvious over the Asahi Shinbum article, as described 
above. 



The Examiner further states at page 8 of the Final Action: 

The Examiner respectfully disagrees. The Examiner respectfully 
maintains that the instant claims must be enabled for all aspects of the 
claimed invention, including compositions utilized therein. 

Poole 1988 (Brief Attachment AF and AW), as stated above, states that species within 
the scope of applicants claims "are not difficult to synthesize" and Poole 1995 (Brief 
Attachment Z) states that "the new superconductors do indeed possess [the] 
characteristics" that Applicants' specification describes these new superconductors to 
have. Thus the compositions and their use are enabled by Applicants' teaching. The 
Examiner has provided no evidence or argument to the contrary and thus has not made 
a prima facie case of lack of enablement. 



The Examiner states at page 8 of the Final Action: 

Such is the basis of applicant's invention. 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 compositions. The numerous 1 .132 
declarations, such as those of Mitzi, Shaw, Dinger and Duncombe, and 
the Rao article, are directed to production of know superconductive 
materials. (Emphasis in the original). 

Thus the Examiner agreed 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." 



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The Examiner states at page 8 of the Final Action 

What is not a "matter of routine experimentation" in this complex, 
unpredictable art is arriving at superconductive compositions outside 
the scope of the allowable claims (e.g., subsequently discovered 
BSCCO or Tl-systems as disclosed in Rao (see response filed 3/8/05, 
pages 141-143). The Examiner respectfully maintains that the instant 
disclosure has not provided sufficient guidance to produce such 
materials. 

This statement is inconsistent with the evidence introduced by Applicant in particular 
Poole 1988 (Brief Attachment AF and AW) which states that species within the scope of 
applicants claims "are not difficult to synthesize" and Poole 1995 (Brief Attachment Z) 
states that "the new superconductors do indeed possess [the] characteristics" that 
Applicants' specification describes these new superconductors to have. Thus species 
within the scope of applicants' claims are determinable based on mere routine 
experimentation which the Board's decision in Ex parte Jackson, supra, states is all that 
is needed for enablement. 

A BSCCO compound is an acronym for a Bi-Sr-Ca-Cu-0 compound, i.e. a 
bismuth-strontium-calcium-copper oxide compound. See article in Brief Attachment BJ 
from the on-line Wikepedia Encyclopedia. (This article was submitted with the "Ninth 
Supplemental Response submitted 1 1/06/2006 which has not been entered by the 
Advisory Action dated 1 1-28-07.) Applicants resubmitted the Article in Brief Attachment 
BJ with the Seventeenth Supplemental Response After Final Rejection on 3-20-2008 
which had not been entered when this Brief was filed. If the Examiner does not enter 
the Seventeenth Response After Final, Applicants respectfully request the Bard to take 
judicial notice of this, since this is information known to persons of skill in the art and 
should be known to the Examiner who referred to BSCCO in the Final Rejection. 
Moreover, an Examiner examining the high TC superconductive arts should know what 
the acronym means. 



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The Examiner states referring to Poole 1988 (Brief Attachment AF and AW) at 
page 18 of Office Action dated 07/28/2004: 



Finally, the Preface states in part at A3: "The unprecedented worldwide 
effort in superconductivity research that has taken place over the past two 
years has produced an enormous amount of experimental data on the 
properties of the copper oxide type materials that exhibit superconductivity 
above the temperature of liquid nitrogen. During this period a consistent 
experimental description of many of the properties of the principal 
superconducting compounds such as BiSrCaCuO, LaSrCuO, 
TIBaCaCuO and YBaCuO has emerged, The field of high-temperature 
superconductivity is still evolving ..." (Emphasis added.) 

Poole 1988 (Brief Attachments AF and AW) specifically describes BSCCO and 
thallium (Tl) compounds. 



As noted many times in the prosecution of this application Poole 1988 (See H 48 of 

DST AFFIDAVITS Brief Attachments AM, AN and AO) 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 1988 (Brief Attachments AF and AW) 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. 

Since skilled artisans can fabricate samples without knowing the "subtle physiochemical 
process involved" and without a detailed theory, this art is predictable. 

In Applicants' SECOND SUPPLEMENTAL AMENDMENT submitted March 8, 
2005 Applicants state in the paragraph bridging pages 153 and 154: 



Charles Poole et al. published another book in 1995 entitled 
"Superconductivity" Academic Press which has a Chapter 7 on 



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"Perovskite and Cuprate Crystallographic Structures". (See 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. 

Thus Poole 1988 states that the high T c 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. 



Poole 1995 is Brief Attachment Z and Poole 1988 is Brief Attachment AW. 



Thus the BSCCO and thallium compounds referred to by the Examiner at page 8 of the 
Final Action, as quoted above, are described in Poole 1988 as being "not difficult to 
synthesize" and in Poole 1995 as having the properties that Applicants' teaching 
teaches they have. Thus Applicants teaching enables the BSCCO and thallium 
compounds referred to by the Examiner at page 8 of the Final Action. 
Brief Attachment BL contains Pages E-85 to E-100 of the "CRC Handbook of Chemistry 
and Physics 59 th Edition 1978-1979. This was submitted with the Fourteenth 
Supplemental Response submitted 10/25/2006 which was not entered when this Brief 
was submitted. Applicants resubmitted this with the Sixteenth Supplemental Response 
requesting reconsideration and entry into the record. Since the information in Brief 
Attachment BL was well know prior to Applicants' discovery, an Examiner of the 
superconductive materials art should not be unaware of this information. This 
information is well known to persons of ordinary skill in the art prior to Applicants 
discovery. These pages list superconductive elements and materials having Tc less 
than 26 K. Persons of ordinary skill in the art after Applicants' discovery would be 
motivated to look for other materials within the scope of Applicants non-allowed claims 



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that would have the properties taught by Applicants and comprise elements shown to 
exhibit superconductivity at lower temperatures. For example, at page E-87, bottom 
table, Bi and Tl are listed as elements exhibiting superconductivity. Page E-85 refers to 
Type I and Type II superconductors. (See Newns Affidavit paragraphs 11 to 14 (Brief 
Attachment AO) which refers to Type I and Type II superconductors. Newns Affidavit 
paragraph 13 states that there are about 30 pure metals that are Type I 
superconductors.) The elements listed in both tables on page E-87 as being 
superconductors are: Al, Be, Bi, Cd, Ga (three forms fiyd), Hg (two forms a /?), In, La 
(two forms a /?) Mo, Nb, Os, Pa, Pb, Re, Ru, Sb, Sn, Ta, Ti, Tl, V, W, Zn and Zr. Pages 
E-89 to E-99 show compounds comprising Bi, Tl, Ca and Sr that exhibit 
superconductivity. Applicants specification teaches at page 7, lines 19-20. "Examples of 
suitable alkaline earths include Ca, Sr, and Ba,." at page 1 1 , lines 7-8,. and at page 3, 
line 4 refers to "metallic oxides, such as the perovskite Ba-Pb-Bi-0 system" and at other 
locations. Thus Applicants teach Bi, Sr, Ca, Ca, C and O, the constituents of a BSCCO 
high Tc, composition. Thus since Applicants teach each of these elements Bi, Sr, Ca, 
Cu and O and since Tl and Bi and compounds thereof were, prior to Applicants' 
discovery, known superconductors at less than 26 K, persons of skill in the art would be 
motivated in view of Applicants' discovery and what was known to persons of skill in the 
art, as described in the affidavits of Brief Attachments AH to AP, to look for other 
materials within the scope of Applicants non-allowed claims that would have the 
properties taught by Applicants and comprise elements such as Bi, Sr, Ca, Cu, O and Tl 
( in particular any of the elements listed above from page E-87) to exhibit 
superconductivity at temperatures greater than or equal to 26 K. 

At page 9 of the Final Action the Examiner states: 

At page 125 of the response filed 1/31/05, applicant argues In re 
Fisher (166 USPQ 18) emphasizing "It is apparent that such an 
inventor should be allowed to dominate the future patentable 
inventions' of others where those inventions were based in some way 
on his teachings". The Examiner respectfully submits the remaining 
statements of Fisher are equally important: 



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It is equally apparent, however, that he must not be committed to 
achieve this dominance be claims which are insufficiently supported 
and hence, not in compliance with the first paragraph of 35 USC 112. 
That paragraph requires the scope of the claims must bear a 
reasonable correlation to the scope of enablement provided by the 
specification to persons of ordinary skill in the art... In cases involving 
unpredictable factors such as most chemical reactions... the scope of 
enablement obviously varies inversely with the degree of 
unpredictability of the factors involved... 

Applicants have submitted extensive evidence that they have fully enabled their claims 
and it is undisputed that as sated by Poole 1988 (Brief Attachment AF and AW) using 
techniques known prior to Applicants' discovery '"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". As noted above an art is not unpredictable when species within the 
scope of the claim are determinable without undue experimentation. The Examiner has 
not made a prima facie showing that the art of high Tc superconductivity is 
unpredictable. 



The Examiner states at page 1 0 of the Final Action: 

While applicant argues "domination", the issue of "reasonable 
correlation to the scope of enablement" is as important. 

At several instances the remarks, applicant has stated "In the present 
invention Applicants have provided a teaching (and proof thereof) of 
how to make all known high Tc materials useful to practice their 
claimed invention" (reply filed 1/31/05, page 152). The Examiner 
respectfully disagrees. 

The Examiner states that he disagrees but provides no objective evidence for the 
disagreement. The Examiner doe not indicate species that come within the scope of 
Applicants' claims that cannot be made following Applicants' teaching, but which are in 
fact high Tc superconductors. Applicants do not have to foresee all species that come 
within the scope of the claims for those claims to be enabled. 



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The Examiner further states at page 10 of the Final Action: 

Applicant has provided an enabled disclosure for superconductive 
compositions containing a transition metal oxide containing at least a) 
an alkaline earth element and b) a rare-earth element of Group NIB 
element (pages 5-8 of Rejection mailed 2/28/04). 

Applicants disagree that their disclosure is so limited for the reasons given 



The Examiner further states at page 10 of the Final Action: 

The fact that other subsequently discovered superconductive systems 
(such as BSCCQ) may be made by "general principles of ceramic 
science" does not provide enablement for the claimed invention. The 
state of the art for a given technology is not static in time. The state of 
the art must be evaluated based on the application filing date. Whether 
the specification would have been enabling as of the filing date 
involves consideration of the nature of the invention, the state of the 
prior art, and the level of skill in the art. The initial inquiry is into the 
nature of the invention, i.e., the subject matter to which the claimed 
invention pertains. (Emphasis added) 

Applicants evidence clearly and unambiguously shows that only techniques known prior 
to applicants discovery and applicants teaching have been used to make species 
fabricated after Applicants discovery. The Examiner has not shown anything to the 
contrary. The Examiner has not provided the evidence or argument corresponding to 
"involves consideration of the invention" or the referred to "initial inquiry". 



At page 1 1 of the Final Action the Examiner further states: 



The nature of the invention becomes the backdrop to determine the 
state of the art and the level of skill possessed by one skilled in the 
art. The state of the prior art is what one skilled in the art would 
have known, at the time the application was filed, about the subject 
matter to which the claimed invention pertains. A conclusion of lack 
of enablement means that, based on the evidence regarding each 
of the factors discussed in the rejection, the specification, at the 
time the application was filed, would not have taught one skilled in 
the art how to make and/or use the full scope of the claimed 
invention without undue experimentation. 



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In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 
1993). 

As described above In re Wright is directed to a biotechnology invention and as stated 
by the Board in Ex parte Jackson, supra, it does not apply, to the present application but 
In re Angstadt, supra, and In re Geerdes, supra, apply. It is clear from the evidence 
presented by Applicants that later developed species that come within the scope of 
Applicants' non-allowed claims are made by the same techniques taught by Applicants 
guided by what was know to a person of skill in the art, prior to Applicants discovery. 
See the DST AFFIDAVITS (Brief Attachments AM, AN and AO.) See Poole 1988 (Brief 
Attachments AF and AW). See Poole 1995 (Brief Attachment Z.) For a person of 
ordinary skill in the art to fabricate the later discovered species it is only necessary to 
use applicants teaching with what was known by a person of skill in the art at the time of 
Applicants' discovery. The Examiner has not stated that the later discovered species 
cannot be made following applicants teaching with what was known by a person of skill 
in the art at the time of Applicants' discovery. Thus under In re Wright, as discussed 
above, Applicants have enables their claims. 
The Examiner further states at page 11 of the Final Action: 

In discussing the Rao article at page 169 of the response filed 1/31/05, 
applicant states: 

It thus is clear that broader claims than allowed should be allowed 
since it is clear that the allowed claims can be avoided following 
applicant's teaching without undue experimentation. Applicants are 
entitled to claims which encompass these materials since they were 
made following Applicants' teaching. 

The Examiner does not dispute that Rao acknowledges that 
applicant initiated the study of high temperature superconductivity, 
or that a large number of oxides are prepared by the general 
principles of ceramic science. 

However, the Examiner maintains that such superconductive 
compounds cannot be made by following applicants teaching 
without undue experimentation. These are materials subsequently 
discovered by others. 



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The Examiner states that the species identified in the Rao article not within the scope of 
the allowed claims "cannot be made by following applicants teaching without undue 
experimentation." But, the Examiner des not identify what the alleged undue 
experimentation is. What has to be done differently than taught by Applicants to 
fabricate these species? The DST AFFIDAVITS (Brief Attachments AM, An and AO) 
Poole 1988 (Brief Attachments AF and AW), Poole 1995 (Brief Attachment W), Poole 
1996 (Brief Attachment AG) and Rao (Brief Attachment AB), clearly and unambiguously 
show that only Applicants teaching is needed to make these species. As described 
above the Schuller article, cited by the Examiner, supports Applicants' position. The 
Examiner has made no comment on or rebutted the DST AFFIDAVITS. Enablement is 
clearly established by the Examiner's earlier rejection of applicants claims as obvious 
over the Asahi Shinbum Article (Brief Attachment AV) as described above and the 
rejection of Applicants' initially presented composition of matter claims, as described 
above, as being inherent in the prior art. 



The Examiner further estates at page 12 of the Final Action: 

Applicant are entitled to claims, apparatus or otherwise, which are fully 
enabled by the instant specification at the time of filing. For the 
reasons clearly set forth in the rejection, after carefully reviewing the 
instant disclosure including all examples and statements included 
therein, the Examiner respectfully maintains that the instant claims are 
enabled for superconductive compositions containing a transition metal 
oxide containing at least a) an alkaline earth element and b) a rare- 
earth element of Group 1MB element (pages 5-8 of Rejection mailed 
2/28/04). 

As argued above this is an unsupported conclusory statement and for the reasons above 
Applicants disagree. 

The Examiner further states at page 12 of the Final Action: 

Additionally, applicant's remarks regarding the Asahi Shinbum article 
are noted (pages 178-180 of the remarks filed 1/31/05). Applicant 
contends "Since Applicant's original article is the only information 
enabling the Asahi Shinbum article, it logically follows that the 
Examiner necessarily concludes that all Applicant's claims are fully 



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enabled". The Examiner respectfully disagrees. A careful review of the 
article discloses "an oxide compound of La and Cu with Barium which 
has a structure of the so-called perovskites". No specific stoichiometry 
is proposed. 

Even if this disclosure were available as a prior publication, the 
Examiner contends that the article may not be applied as operable 
prior art. The disclosure in an assertedly anticipating reference must 
provide an enabling disclosure of the desired subject matter; mere 
naming or description of the subject matter is insufficient, if it cannot be 
produced without undue experimentation. Elan Pharm., Inc. v. Mayo 
Foundation for Medical and Education Research, 346 F.3d 1051, 1054, 
68 USPQ2d 1373, 1376 (Fed. Cir. 2003) . 



Applicants note that the Examiner has never withdrawn the rejection of Applicants' 
claims (noted above) as obvious under 35 USC 103(a) over the Asahi Shinbum article. 
Applicants showed that they reduced their invention to practice prior to the publication 
date of the Asahi Shinbum article. To avoid the rejection of Applicants' claims, 
Applicants were only successful by swearing behind it. The Examiner would not agree 
that the Asahi Shinbum Article was not a reference under 35 USC 102. This is the 
current state of the prosecution of this rejection. Until the Examiner states that the 
Asahi Shinbum article is not a reference under 35 USC 102, Applicants' arguments 
unambiguously show that the Examiner must necessarily be of the view that all of 
Applicants' claims are fully enabled. As noted above the Examiner maintained the 
rejections under 35 USC 102 and 103 since 1992 (more than 15 years) in the 
prosecution of this and the ancestral applications. This has substantially contributed to 
the large pendency of this application and the ancestral applications. The Examiner 
appears to be stating that notwithstanding having maintained this rejection for 15 years, 
the Examiner has now decided after "[a] careful review of the article discloses 'an oxide 
compound of La and Cu with Barium which has a structure of the so-called perovskites'. 
No specific stoichiometry is proposed. Even if this disclosure were available as a prior 
publication, the Examiner contends that the article may not be applied as operable prior 
art." This statement is directly contradictory to the 35 USC 103 rejections for 
obviousness over the Asahi Shinbum Article. See the discussion above in pages 154 to 
160 in particular the Examiner's comments quoted at page 160. If the Examiner is now 



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of the view that the Asahi Shinbum Article is not a valid reference, Applicants should not 
be required to rely on their affidavits to avoid it as a reference. The Examiner should 
formally enter in the record a statement withdrawing the 35 USC 103 and 102 rejections 
in view of the Asahi Shinbum Article because it is not a reference under 35 USC 102. It 
is clear from Applicants' evidence that only routine experimentation is needed to 
practice Applicants' non-allowed claims. 



The Examiner further estates at page 1 3 of the Final Action: 

With respect to applicants remarks regarding portions of the file 
history, applicant contends that the prior art rejections in parent 
application 07/053,307 (composition claims), conclusively lead to the 
conclusion ",..all of the instant claims are fully enabled because the 
Examiner has stated that the compositions of matter recited in the 
claims may be made with the knowledge of a person of skill in the art 
prior to Applicant's filing date" (pages 181-1 83 of the remarks filed 
1/31/05) . 

Again, the Examiner respectfully disagrees. It appears that the 
references were cited and applied as inherently possessing the 
claimed superconductive characteristics. They have no disclosure 
relating to superconductivity, and appear to have little or no bearing on 
the scope of enablement issues of the instant claims. As stated above, 
the Examiner sincerely believes that the above remarks address each 
of applicant's concerns set forth in the Petition filed 1/31/05, as well as 
the additional remarks and attachment filed subsequently. 

Applicants respectfully disagree with the Examiners conclusion. It is true that the 
references, some of which are incorporated herein by reference in Applicants' 
specification, "were cited and applied as inherently possessing the claimed 
superconductive characteristics [and that Tjhey have no disclosure relating to 
superconductivity." "To anticipate a claim, a prior art reference must disclose 
every limitation of the claimed invention, either explicitly or inherently." In re 
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997), 44 U.S.P.Q.2D (BNA) 1429 



Moreover [t]o serve as an anticipation when the reference is silent about the 
asserted inherent characteristic, such gap in the reference may be filled with 
recourse to extrinsic evidence. Such evidence must make clear that the missing 



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descriptive matter is necessarily present in the thing described in the reference, 
and that it would be so recognized by persons of ordinary skill. In re Oelrich, 666 
F.2d 578, 581, 212 U.S.P.Q. (BNA) 323, 326 (CCPA 1981) (quoting Hansgirg v. 
Kemmer, 26 C.C.P.A. 937, 102 F.2d 212, 214, 40 U.S.P.Q. (BNA) 665, 667 
(CCPA 1939)) provides: 

Inherency, however, may not be established by probabilities or possibilities. The 
mere fact that a certain thing may result from a given set of circumstances is not 
sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that 
the natural result flowing from the operation as taught would result in the 
performance of the questioned function, it seems to be well settled that the 
disclosure should be regarded as sufficient." Continental Can Co. v. Monsanto 
Co., 948 F.2d 1264, 1268-1269 (Fed. Cir. 1991). Thus when the Examiner 
rejected Applicants' composition claims because the high Tc property was 
inherent in the teaching of the cited prior art references, the Examiner was 
acknowledging that persons of skill in the art prior to Applicants earliest filing date 
knew how to make samples having the high Tc property which necessarily 
means that persons of skill in the art knew how to make those compositions. The 
Examiner does not explain how an apparatus, that uses a composition that a 
skilled artisan knows how to make, is not enabled. When the structure of the 
apparatus is well known except for the fact that the composition is a 
superconductor which fact is the innovative discovery. The apparatus for 
conducting a superconductive current in certain materials having a Tc <26 k was 
well known prior to Applicants' discovery. 



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SUMMARY OF THE QUESTIONS RAISED BY THIS PROSECUTION 



The Examiner has not made a prima facie case of lack of enablement. The Examiner 
has merely conclusory deemed the rejected claims not enabled. A number of 
Applicants' claims have been rejected under 35 USC 112, first paragraph, as not 
enabled by Applicants' specification. The Examiner has given these reasons in support 
of this rejection: 1 ) the Examiner's unsupported statements that the art of high T c 
superconductivity is unpredictable; 2) the Examiner's statement that the theory of high 
T c superconductivity is not well understood; and 3) the Examiner points to examples 
cited in Applicants' specification which do not show superconductivity greater than or 
equal to 26°K. The Examiner has provided no support for reason 1 . The only support 
the Examiner has provided for reason 2 is the article of Schuller which as shown by 
Applicant support Applicants' position that their claims are enabled. Schuller clearly 
states that systematic searches guided by chemical and materials intuition using well- 
defined empirical strategies and searches in the oxides gave rise to many high Tc 
superconducting systems, that is through routine experimentation. Schuller also states 
that similar searches bused on M g B 2 have been done, thereby being enabled even 
though not finding as many high Tc species. The Examiner cited no authority to support 
the Examiner's view that a well developed theory is necessary to support enablement. 
Thus, reasons 1 and 2 are the Examiner's unsupported opinion. Applicants' examples 
that do not have a T c greater than or equal to 26°K (Reason 3) do not support the 
Examiner's lack of enablement rejection in view of the decisions cited by Applicants, in 
particular, In re Angstadt, Amgen v. Chugai Pharmaceutical Co. and In re Wands. 
Applicants have provided extensive evidence in support of their view that their claims 
are enabled: 

1) the five initial affidavits of Tsuei, Dinger, Duncombe, Shaw and Mitzi (Brief 
Attachments AH to AL) and the three additional extensive DST AFFIDAVITS (Brief 
Attachments AM, AN and AO) 

2) the books and articles cited in these affidavits, 



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3) Poole 1988 that states that the reason so much work was done in such a short period 
of time after Applicants' first discovery was that the high T c materials were easy to make 
using well known fabrication techniques, 

4) the article of Rao et al. entitled "Synthesis of Cuprate Superconductors" (Brief 
Attachment AB) which cite numerous species of high T c materials which can be made 
according to Applicants' teaching; 

5) the CRC Handbook of Chemistry and Physics (Brief Attachment BL) which cites 
numerous species of high T c materials which can be made according to Applicants' 
teaching; 

6) the Poole 1995 (Brief Attachment 2) which states that the high Tc materials are 
layered perovskites as Applicants states they were in their initial publication for which 
they received the 1987 Nobel Prize; 

7) and Poole 1996 (Brief Attachment AG) which shows that the physical properties of 
the high Tc superconductors are consistent with there description in Applicants' 
specification Many of the species in items 4 and 5 above the Rao Article and the 
Handbook of Chemistry and Physics, respectively, are not specifically recited in 
Applicants' specification, but they come within the genus of Applicants' claims that have 
been rejected as not enabled. Moreover, there is no evidence of record that a person of 
skill in the art cannot, without undue experimentation, make these species following 
Applicants' teaching. The Examiner has not denied that Applicants extensive proof 
shows that a person of skill in the art can fabricate these species following Applicants' 
teaching. Under In re Angstadt and In re Wards it is Examiner's burden to establish that 
undue experimentation is needed to practice Applicants' claimed invention. The 
Examiner has made no attempt to satisfy this burden. 

As stated, all of Applicants' claims except for one (claim 123) were initially rejected in 
the final rejection of the parent application as anticipated or obvious over the Asahi 



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Shinbum article under 35 USC 102 and 103. These rejections were found moot in view 
of the Examiner agreeing that Applicants effectively swore behind the date of this 
article. The Examiner has not withdrawn the 35 USC 102 and 103 rejections. Thus as 
alleged by Applicants from very early in the prosecution of this application, by these 
rejections, the Examiner has necessarily and unambiguously found all of Applicants' 
claims enabled. As stated, the Asahi Shinbum article [Brief Attachment AV] derives its 
enablement from Applicants' publication [Attachment AX] which was published less than 
a year before Applicants' filing date and which is incorporated by reference in 
Applicants' specification. For a reference to anticipate a claimed invention the reference 
must enable from the teaching therein a person of skill in the art to practice the alleged 
anticipated claims and for a single reference to render obvious a claimed invention the 
single reference must enable a person of skill in the art to practice the alleged obvious 
claims from the teaching of that reference in combination with what is know to a person 
of skill in the art. Thus, all of Applicants' claims that were rejected under 35 USC 1 02 
and 103 over the Asahi Shinbum article must be fully enabled by the Examiner's own 
rational. Moreover, the Examiner rejected applicants composition claims as inherent in 
the prior art. This means that persons of skill in the art knew how to make these 
materials. Thus all of Applicants' claims rejected as not enabled are in fact enabled 
since the non-obvious use of an enabled compound must be enabled. 

More specifically, Applicants see no justifiable reason to reject as not enabled 
Applicants' claims which specifically recite, or that can be amended to recite, that the 
element having a Tc >26K "can be made according to known principles of ceramic 
science" since there is no evidence that such species cannot be made following 
Applicants' teaching. As stated above, the sentenced bridging page 1 and 2 of the 
specification states "Generally, superconductivity is considered to be a property of the 
metallic state of a material since all known superconductors are metallic under the 
conditions that cause them to be superconducting. A few normally non-metallic materials, 
for example, become superconducting under very high pressure wherein the pressure 
converts them to metals before they exhibit superconducting behavior." Applicants discovered 
that ceramic materials are superconductors. Their work lead others to look for other species. 



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Applicants' evidence shows that those others used Applicants teaching to determine those 
species. Thus following In re Fisher "It is apparent that such an inventor should be allowed 
to dominate the future patentable inventions of others where those inventions were 
based in some way on his teachings." (1 66 USPQ 1 8, 24) 



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Supplementary Comments To 
Part VII 
CFR37 §41.37(c)(1)(w7) 



FUNDAMENTAL EARLY SUPREME COURT DECISIONS 

Argument 
A 

As listed at page 3 of the Brief Volume 1 many of applicants claims have been 
rejected as not enabled under 23 USC 112, first paragraph. In support of this view the 
Examiner has provided a number of arguments. The following list is a representative 
example of these statements. 



1 . 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. 

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

In particular, the question arises: will any layered perovskite 
material exhibit superconductivity? 

3. the Examiner states at page 4 of the Final Office Action that these claims have 
been rejected: 

because the specification, while being enabling for compositions 
comprising a transition metal oxide containing at least a) an alkaline 
earth element or Group MA element and b) a rare-earth element or 
Group 1MB element, does not reasonably provide enablement for 
the invention as claimed. The specification does not enable any 
person skilled in the art to which it pertains, or with which it is most 
nearly connected, to make the invention commensurate in scope 
with these claims. 

4. The Examiner states at page 8 of the Final Action: 

What is not a "matter of routine experimentation" in this complex, 
unpredictable art is arriving at superconductive compositions outside 
the scope of the allowable claims (e.g., subsequently discovered 
BSCCO or Tl-systems as disclosed in Rao (see response filed 3/8/05, 



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pages 141-143). The Examiner respectfully maintains that the instant 
disclosure has not provided sufficient guidance to produce such 
materials. 

5. The Examiner further states at page 14 of the Office Action of 07/28/2004: 

The present specification discloses on its face that only certain oxide 
compositions of rare earth, alkaline earth, and transition metals made 
according to certain steps will superconduct at > 26°K. 

Applicants have extensively argued the applicability of the CCPA decision In re 

Angstadt, 537 F.2d 498, 190 USPQ 214 (C.C.P.A. 1976). As stated by Applicants at 

page 91 of this Brief Volume 1: 

The Board in Ex parte Jackson further states at 217 USPQ 808 "The 
problem of enablement of processes carried out by microorganisms 
were uniquely different from the field of chemistry generally. Thus, 
we are convinced that such recent cases as In re Angstadt 537 F.2d 
498, 190 USPQ 214 (CCPA 1976) and In re Geerdes 491 F.2d 1260, 
180 USPQ 789 (CCPA 1974) are in apposite to this case." 
Therefore, since the present application is not directed to 
biotechnology or microorganism invention, the decision of Ex parte 
Jackson does not apply, but In re Angstadt and In re Geerdes do 
apply. 

The CCPA states in In re Angstadt, 537 F.2d 498, 503-504 (C.C.P.A. 1976) 190 

USPQ 214 citing the United Stated Supreme Court decision Minerals Separation, Ltd. v. 

Hyde, 242 U.S. 261, 270-71 (1916): 

To require disclosures in patent applications to transcend the level of 
knowledge of those skilled in the art would stifle the disclosure of inventions in 
fields man understands imperfectly, like catalytic chemistry. The Supreme 
Court said it aptly in Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 270-71 
(1916), in discussing the adequacy of the disclosure of the froth flotation 
process of ore separation: 

Equally untenable is the claim that the patent is invalid for the reason 
that the evidence shows that when different ores are treated 
preliminary tests must be made to determine the amount of oil and 
the extent of agitation necessary in order to obtain the best results. 
Such variation of treatment must be within the scope of the claims, 
and the certainty which the law requires in patents is not greater 
than is reasonable, having regard to their subject-matter. The 
composition of ores varies infinitely, each one presenting its special 
problem, and it is obviously impossible to specify in a patent the 
precise treatment which would be most successful and economical 
in each case. The process is one for dealing with a large class of 
substances and the range of treatment within the terms of the 



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claims, while leaving something to the skill of persons applying the 
invention, is clearly sufficiently definite to guide those skilled in the 
art to its successful application, as the evidence abundantly shows. 
This satisfies the law. Mowry v. Whitney, 14 Wall. 620; Ives v. 
Hamilton, 92 U.S. 426, and Carnegie Steel Co. v. Cambria Iron Co., 
185 U.S. 403, 436, 437 [Emphasis added ] 



The text in bold shall be referred herein to as The Supreme Court Minerals v. Hyde 
Enablement Statement. 



In Minerals Separation, Ltd. v. Hyde Patent No. 835120 (Minerals Patent), issued 

November 6, 1906, was asserted by the plaintiff against the defendant's method. The 

claims of this patent are directed to improvements in the concentration of ores by a 

process of oil flotation. The defendant asserted that the claims were not enabled. The 

Supreme Court held that claims 1,2,3, 5, 6, 7 and 1 2 were valid. The reason for why 

these claims were found enabled is quoted above in bold from In re Angstadt. Claims 1 

and 12 found enabled by the Supreme Court are: 

1 . The herein-described process of concentrating ores which 
consists in mixing the powdered ore with water, adding a small 
proportion of an oily liquid having a preferential affinity for 
metalliferous matter, [amounting to a fraction of one percent, on 
the ore), agitating the mixture until the oil-coated mineral matter 
forms into a froth, and separating the froth from the remainder by 
notation. 

12. The process of concentrating powdered ore which consists in 
separating the minerals' from gangue by coating the minerals with 
oil in water containing a fraction of one per cent, of oil on the ore, 
agitating the mixture to cause the oil-coated mineral to form a 
froth, and separating the froth from the remainder of the mixture. 

The claims found enabled are directed to "ores." The Supreme Court did not 
require the claims of the Minerals Patent to be limited to the ores that were recited in the 
patent. The claims include within their scope "ores" described in the patent, ores know 
by others and not described in the patent, ores not yet discovered and, moreover, 
would include within their scope an ore type materials that was not naturally occurring, 
but which could be made by man. The Supreme Court states as quoted above in the 



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Supreme Court Minerals v. Hyde Enablement Statement "The composition of ores 
varies infinitely." The patent applicant was not required to describe the infinite variation 
of the ores in the patent to generically claim an ore and for this generic claim to be 
enabled for all ores. The only specific description in the Minerals Patent of an ore is at 
Col. 1 , lines 10-12 which states "This invention relates to improvements in the 
concentration of ores, the object being to separate metalliferous matter,, graphite, and the 
like from gangue by means of oils, fatty acids,: or other substances which have a preferential 
affinity for metalliferous matter over gangue" and at Col. 2, lines 70 - 76, "The following is 
an example of the application of this invention to the concentration of a particular ore. An 
ore containing ferruginous blende, galena, and gangue consisting of quartz, rhodonite, 
and garnet is finely powdered and mixed with water containing a fraction of one per cent, 
or up to one per cent, of a mineral acid or acid salt, conveniently sulfuric acid or mine or 
other waters containing ferric sulfate." The reason given by the Supreme Court, as 
quoted above in The Supreme Court Minerals v. Hyde Enablement Statement, for why 
the generic claims covering an infinite number of species were enabled is "[t]he process 
is one for dealing with a large class of substances and the range of treatment within the 
terms of the claims, while leaving something to the skill of persons applying the 
invention, is clearly sufficiently definite to guide those skilled in the art to its successful 
application, as the evidence abundantly shows. This satisfies the law." That there is a 
large class (infinite in number) of substances within the scope of the claim that may not 
be specifically described, and where the specification only describes a small number of 
preferred embodiments, does not render the claim not enabled. The Supreme Court 
clearly says "leaving something to the skill of persons applying the invention is clearly 
sufficiently definite to guide those skilled in the art to its successful application." 
Moreover, there is no certainty that the claimed method in the Materials Patent would 
work for every ore until it was experimentally determined to work for a particular ore. 
This did not render the claims not enabled. It is clear that the Supreme Court did not 
find that it was necessary to know what ores the process worked for in advance since 
this was experimentally determinable by techniques known to persons of skill in the art 
following the teaching in the Minerals Patent. Thus the patent applicant of the Minerals 
Patent was not required to foresee (or predict in the sense used by the Examiner of the 



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present application) all species that came within the scope of the Minerals Patent 

claims. The same is true of the claims under appeal herein and rejected as not enabled. 

Applicants have provided abundant evidence to show that persons of skill in the 

art knows how to make species of materials that can be tested to determine if they have 

the high T c property. The Examiner has acknowledged this at page 8 of the Final Action 

where the Examiner states: 

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 compositions. The numerous 
1 .132 declarations, such as those of Mitzi, Shaw, Dinger and Duncombe, and the 
Rao article, are directed to production of know superconductive materials. 
(Emphasis in the original) 

This statement has been referred to in the Brief Volume 4 as the Examiner's First 
Enablement Statement. It is unrebutted that persons of skill in the art know how to test 
material to determine whether they have a T c greater than or equal to 26 K. 

It is clear from the Minerals Separation, Ltd. v. Hyde Patent Supreme Court 
decision that experimental determination of species that come within the scope of a 
claim satisfies the enablement requirement. This is clear as quoted above in The 
Supreme Court Minerals v. Hyde Enablement Statement in which the Supreme Court 
states "Equally untenable is the claim that the patent is invalid for the reason that the 
evidence shows that when different ores are treated preliminary tests must be made to 
determine the amount of oil and the extent of agitation necessary in order to obtain the 
best results. Such variation of treatment must be within the scope of the claims, and the 
certainty which the law requires in patents is not greater than is reasonable, having 
regard to their subject-matter." It is clear from the evidence presented by Applicants 
that persons of skill in the art know how to make materials and test them for the high Tc 
property. With regard to this subject matter what the Examiner is requiring in the present 
application is unreasonable and beyond "the certainty which the law requires in 
patents." It is clear form the Supreme Court decision in Minerals Separation, Ltd. v. 



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Hyde, 242 U.S. 261 that it is not necessary for the patent applicant to know in advance 
what materials ("ores" in the Minerals Separation Patent) the claimed process is 
applicable to and what the value of parameters (amount or oil and degree of agitation) 
are in advance. They can be experimentally determined. That the applicant had no 
theory to predict these parameters in advance of making these measurements does not 
render the claims not enabled. As stated in this Volume 1 of the Brief above the 
contemporary term of "predictable and unpredictable arts" in patent decisions does not 
means "theoretical predictability" and does mean determinable by theory or experiment. 
In Minerals Separation, Ltd. v. Hyde, 242 U.S. 261determinability is provided by 
experiment. The Supreme Court says this "is clearly sufficiently definite to guide those 

skilled in the art to its successful application This satisfies the law. " Following the 

Supreme Court Minerals v. Hyde Enablement Statement Applicants' teaching "satisfies 
the law. " 

The CCPA in In re Angstadt, 537 F.2d 498, 503 (C.C.P.A. 1976) 190 USPQ 214 

commenting on the dissent states: 

The dissent's reliance on In re Rainer, 54 CCPA 1445, 377 F.2d 1006, 
1 53 USPQ 802 (1 967), is misplaced. If Rainer stands for the 
proposition that the disclosure must provide "guidance which will 
enable one skilled in the art to determine, with reasonable certainty 
before performing the reaction, whether the claimed product will be 
obtained" (emphasis in original), as the dissent claims, then all 
"experimentation" is "undue," since the term "experimentation" implies 
that the success of the particular activity is uncertain. Such a 
proposition is contrary to the basic policy of the Patent Act, which is to 
encourage disclosure of inventions and thereby to promote progress in 
the useful arts. 

In the present application the Examiner's position (proposition) is requiring what the 
CCPA states is not required and "[s]uch a proposition is contrary to the basic policy of 
the Patent Act, which is to encourage disclosure of inventions and thereby to promote 
progress in the useful arts." The certainty that the Examiner is requiring is beyond what 
the Supreme Court requires and what the Patent Act requires. 



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The CCPA applies the Supreme Court Minerals v. Hyde Enablement Statement 
in In re Bosy, 53 CCPA 1231, 1234-1235 (CCPA 1966) 149 U.S.P.Q. (BNA) 789 
stating: 

The Supreme Court set out some guidelines with reference to the 
sufficiency of a specification to disclose an invention in such a 
manner as will enable one of ordinary skill in the art to make it in 
Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1929), at 270-271: 
[Stating the Supreme Court Minerals v. Hyde Enablement 
statement quoted above.] 

The CCPA also cite Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 in In re Corr. 52 
CCPA. 1505. 1508 (CCPA 1965) 146 U.S.P.Q. (BNA) 69 and states "The certainty 
required in patents is not greater than that which is reasonable, having regard to the 
subject matter involved. Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 ." In re 

Hudson. 40 CCPA 1036. 1040 (CCPA 1953) 

The CAFC adopted the Supreme Court Minerals v. Hyde Enablement Statement 

in W.L. Gore & Associates, Inc. v. Garlock, Inc., stating: 

The district court invalidated both patents for indefiniteness because of 
its view that some "trial and error" would be needed to determine the 
"lower limits" of stretch rate above 10% per second at various 
temperatures above 35 degrees C. That was error. Assuming some 
experimentation were needed, a patent is not invalid because of a 
need for experimentation. Minerals Separation, Ltd. v. Hyde, 242 
U.S. 261, 270-71, 61 L. Ed. 286, 37 S. Ct. 82 (1916). A patent is 
invalid only when those skilled in the art are required to engage in 
undue experimentation to practice the invention. In re Angstadt, 
537 F.2d 498, 503-04, 190 USPQ 214, 218 (CCPA 1976). There was 
no evidence and the court made no finding that undue experimentation 
was required. 

W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1557 
(Fed. Cir. 1983)220 U.S.P.Q. (BNA) 303 (1983) (Emphasis added.) 

The Examiner's reasons for finding Applicants' claims not enabled are 
inconsistent with the Supreme Court decision in Minerals Separation, Ltd. v. Hyde. For 
example considering the five specifically identified reasons listed above: 
1 . The Examiner states that "Small changes in composition can result in 

dramatic changes in or loss of superconducting properties. " 



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o It is the Supreme Court's position in Minerals Separation, 
Ltd. v. Hyde that such a position is untenable. The court states in 
The Supreme Court Minerals v. Hyde Enablement Statement 
quoted above "Equally untenable is the claim that the patent is 
invalid for the reason that the evidence shows that when different 
ores are treated preliminary tests must be made to determine the 
amount of oil and the extent of agitation necessary in order to 
obtain the best results." 

2. The Examiner states "In particular, the question arises: will any layered 
perovskite material exhibit superconductivity?" 

o It is the Supreme Court's position in Minerals Separation, 
Ltd. v. Hyde that such a position is untenable where it is 
experimentally determinable which layered perovskite material 
exhibits superconductivity. The court states in The Supreme Court 
Minerals v. Hyde Enablement Statement quoted above "The 
composition of ores varies infinitely, each one presenting its special 
problem, and it is obviously impossible to specify in a patent the 
precise treatment which would be most successful and economical 
in each case." 

3. The Examiner states "because the specification, while being enabling for 
compositions comprising a transition metal oxide containing at least a) an 
alkaline earth element or Group MA element and b) a rare-earth element or 
Group 1MB element, does not reasonably provide enablement for the 
invention as claimed. The specification does not enable any person skilled 
in the art to which it pertains, or with which it is most nearly connected, to 
make the invention commensurate in scope with these claims." 

o It is the Supreme Court's position in Minerals Separation, 
Ltd. v. Hyde that such a position is untenable where it is 
experimentally determinable which material exhibits 
superconductivity. The court states in The Supreme Court Minerals 
v. Hyde Enablement Statement quoted above "The composition of 



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ores varies infinitely, each one presenting its special problem, and it 
is obviously impossible to specify in a patent the precise treatment 
which would be most successful and economical in each case." 

4. The Examiner states "[w]hat is not a 'matter of routine experimentation' in 
this complex, unpredictable art is arriving at superconductive compositions 
outside the scope of the allowable claims .... The Examiner respectfully 
maintains that the instant disclosure has not provided sufficient guidance 
to produce such materials." 

o Preliminarily, that the art of making high T c materials is 
complex does not necessarily render generic claims not enabled 
since the skill of persons in this art is high. The Examiner 
acknowledges this in the Examiner's First Enablement Statement, 
quoted above. Thus the complexity is within the skill of the art. 
The Examiner's statement that the high T c art is unpredictable is 
untenable in view of the Supreme Court's position in Minerals 
Separation, Ltd. v. Hyde that "[t]he process is one for dealing with a 
large class of substances and the range of treatment within the 
terms of the claims, while leaving something to the skill of persons 
applying the invention, is clearly sufficiently definite to guide those 
skilled in the art to its successful application, as the evidence 
abundantly shows." Since the Examiner's First Enablement 
Statement acknowledges that persons of skill in the art know how 
to make materials within the scope of Applicants' rejected claims 
and since it is unrebutted that they know how to test these 
materials for the high T c property, Applicants' teaching "is clearly 
sufficiently definite to guide those skilled in the art to its successful 
application, as the evidence [submitted by Applicants] abundantly 
shows." 

5. The Examiner states "[t]he present specification discloses on its face that 
only certain oxide compositions of rare earth, alkaline earth, and transition 
metals made according to certain steps will superconduct at > 26°K." 



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o It is the Supreme Court's position in Minerals Separation, 
Ltd. v. Hyde that such a position is untenable where it is 
experimentally determinable which material exhibits 
superconductivity. As noted above the patent at issue in the 
Minerals Separation, Ltd. v. Hyde dispute described only a small 
number of examples but as noted in the Supreme Court Minerals v. 
Hyde Enablement Statement quoted above "[t]he composition of 
ores varies infinitely, each one presenting its special problem, 
and it is obviously impossible to specify in a patent the precise 
treatment which would be most successful and economical in each 
case. The process is one for dealing with a large class of 
substances and the range of treatment within the terms of the 
claims, while leaving something to the skill of persons applying the 
invention, is clearly sufficiently definite to guide those skilled in the 
art to its successful application, as the evidence abundantly 
shows." Thus the Supreme Court found enabled claims covering a 
composition that "varies infinitely" based on a description that 
describes a few examples where, as in the present application, it 
was within the skill of the art to apply the invention to other species 
in that infinite variety. 

Applicants' arguments in this Brief Volume 1 to Volume 5, support the position 
argued in this section of the Brief, in particular the following enablement statements 
described in Volume 3 of the Brief: 

Examiner's First Enablement Statement (also provided above) 

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 



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Schuller Enablement Statement 
Rao enablement Statement 



It is thus clear following the Supreme Court decision in Minerals Separation, Ltd. 
v. Hyde, 242 U.S. 261 that all of Applicants' claims are enabled and Applicants request 
that the Board reverse the rejections for lack of enablement. 



B 

At page 32 of this Volume 1 of the Brief in Preliminary Comment C and in greater 
detail staring at page 155 of this Volume 1 of the Brief Applicants state quoting from 
page 155: 

Claims 1, 12-31, 33-38, 40-46, 55-59, 64, 69-72, 77-81, 84-86, 91-96, 
1 03, 1 09, 1 1 1 -1 1 6, 1 1 9, 1 20 and 1 24 were rejected at page 1 6 of the 
Office Action dated July 30, 1998 as obvious over the Asahi Shinbum 
Article (Brief Attachment AV). Only claim 123 was allowed in that 
Office Action. (A similar rejection at page 1 0 of Office Action dated 
05/27/97) Since this was a rejection for obviousness over a single 
reference, this means that a person of ordinary skill in the art, 
according to the Examiner, was enabled to practice the claimed 
inventions of the rejected claims from the teaching of the Asahi 
Shinbum article and what is generally known to a person of ordinary 
skill in the art. The claims rejected over the Asahi Shinbum Article 
were genie to the species of claims 123 allowed over the Asahi 
Shinbum Article. The Examiner's rejection of claims for lack of 
enablement is inconsistent with the obviousness rejection over the 
Asahi Shinbum Article. The Examiner states at page 17 of the Office 
Action dated 07/30/1998 and at page 1 1-12 of the Office Action dated 
05/27/1997 "based on the teachings of 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 dated 07/30/1998 claim 123 was allowed over the 
Asahi Shinbum article because it showed criticality of the formula 
recited in this claim. For a single reference to be prior art under 35 
USC 102 or 103 it is subject to the statutory provisions of 35 USC 112, 
first paragraph, that is it must enable a person of skill in the art to 
practice the claimed invention it is alleged to anticipate or render 
obvious. By the Examiner stating that claim 123 was allowed because 
it showed criticality of the formula recited, the Examiner is stating that 
this is a patentably distinct species because of unexpected results of 



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the genius of the Ashai Shinbum Article. (The genus of the Asahi 
Shinbum Article is Applicants' teaching.) 

As stated in detail above the Examiner maintained the rejection for obviousness 
over the Asahi Shinbum article for many years and repeated the rejection many times. 
Applicants were required to get around the Asahi Shinbum article by swearing behind it 
by affidavit. Thus it is still the Examiner's view that the Asahi Shinbum article alone 
enables Applicants' claims rejected as not enabled. In this Volume 1 of the Brief 
Applicants have described in detail why the Examiner's view necessarily requires a 
finding that the Examiner's rejection for obviousness of the same claims that have been 
rejected as not enabled is inconsistent and necessarily requires a finding that the 
Examiner's position requires a finding that Applicants' claims are enabled. 



The United States Supreme Court was confronted with a similar situation in 

Loom v Higgins where the court stated: 

A great deal of testimony was introduced by the defendants to 
show that the patentee had failed to describe his invention in such 
full, clear, and exact terms as to enable persons skilled in the art to 
construct and use it. It seems to us that the attempt has failed. ... 
But it stands confessed that the thing has been done, that is to say, 
the contrivance which Webster claims in his patent has been 
applied, and very successfully so, ... If the thing could not be 
understood without the exercise of inventive power, it is a little 
strange that it should have been so easily adapted to the 
looms on which it has been used with such striking results. 

It is worthy of remark... that the defendants, in their answer, state it 
as a fact, that prior to the alleged invention of Webster, looms 
containing lays having shuttle-boxes rigidly attached were publicly 
known and described in certain English patents... and that all the 
other ... were described in another English patent ... and they aver 
... that the ... use of the two things together... were obvious 
and ...well known, and constituted a part of the known state of 
the art. This averment in the answer... does not seem to tally 
very well with the allegation that Webster has failed to point 
out, in his patent, how to use and apply his invention, and that 
it requires further invention to use and apply it. 

Loom Co. v. Higgins. 105 U.S. 580. 587 (U.S. 1882) (Emphasis 



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added.) 

This will be referred to herein as the Supreme Court Loom v Higgins Enablement 

Statement. The Supreme Court is stating here that a finding or obviousness is 

inconsistent with a finding of lack of enablement. Consequently, as stated at page 1 60 

of this Volume 1 of the Brief "[i]n the present application the Examiner has never 

withdrawn the 35 USC 103 rejection over the Asahi Shinbum Article because it was 

found not to be a reference under 35 USC 102. Thus as stated above, in the present 

application the Examiner must necessarily be viewed as having made a finding of fact 

that Applicants claims are enabled." 

Applicants submitted a great deal of evidence and testimony in the form of 

affidavits to show that the Applicants described their invention in such full, clear, and 

exact terms as to enable persons skilled in the art to make and use it. Particularly 

relevant, in view of the passage quoted above from Loom v. Higgins, is the Poole 1988 

Enablement statement which is referred throughout the Brief Volume 1 and in Volume 3. 

Applicants at page 91 of Volume 3 state: 

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. 

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 



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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. 

The defendant in Loom v Higgins asserted that the patentee's claims were not enabled, 
that is, to practice those claims required, in the language of the Supreme Court, "the 
exercise of inventive power." In the Supreme Court Loom v Higgins Enablement 
Statement the court states in regards to the defendants assertion that the plaintiff's 
claims were not enabled "If the thing could not be understood without the exercise of 
inventive power, it is a little strange that it should have been so easily adapted to the 
looms on which it has been used with such striking results." In making this statement 
the court is relying on work done by persons other than the inventor that was done after 
the invention by the inventor. Thus Supreme Court is saying that where the facts show 
that an invention is readily implemented by others this is evidence that the claimed 
invention is enabled. The Poole 1988 Enablement Statement is stating that the 
inventions of the claims under appeal in the present application were readily 
implemented by others after knowing Applicants' discovery. 

At page 142 of this Volume 1 of the Brief Applicants note that the Examiner states at 

page 17 of Office Action dated 07/28/2004 referring to Poole 1988: 

The applicants point to "Copper Oxide Superconductors" by Charles P. 
Pooler Jr., et al., (hereinafter, "the Poole article") as supporting their 
position that higher temperature superconductors were not that difficult to 
make after their original discovery. 

Initially however, it should be noted that the Poole article was published 
after the priority date presently claimed. As such, it does not provide 
evidence of the state of the art at the time the presently claimed invention 
was made. 

In view of the Supreme Court decision on Loom v. Higgins the Examiner's statement 
"[initially however, it should be noted that the Poole article was published after the 
priority date presently claimed. As such, it does not provide evidence of the state of the 
art at the time the presently claimed invention was made" is untenable. The Examiner 
has made no attempt to show that what is described in Poole 1988 (Brief Attachments 



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AF and AW) required "the exercise of inventive power" to apply Applicants teaching to 
determine other species of high T c materials. Poole 1988 clearly states that these other 
species were "not difficult to synthesize" and the methods to make other examples 
"requires little familiarity with the subtle physicochemical process involved in the 
transformation of a mixture of compounds into a superconductor." Applying the 
Supreme Court Loom v Higgins Enablement Statement "[i]f the thing could not be 
understood without the exercise of inventive power, it is a little strange that it should 
have been so easily adapted to the looms on which it has been used with such striking 
results," "it is a little strange that [ Applicants' teaching] should have been so easily 
adapted to [to make other species of high T c materials] ...with such striking results" and 
so quickly after Applicants' discovery. 

In view of the Supreme Court's decision in Loom v. Higgins Applicants request the 
Board to reverse the rejection of applicants' claims for lack of enablement. 

CONCLUSION 

Applicants request the Board to reverse the Examiner's rejection of Applicants claims 
rejected as not enabled under 35 USC 112, first paragraph as listed at page 3 of this 
Brief Volume 1 . 



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Part VIII 
Claims Appendix 



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 means for passing an electrical 
superconducting current through said composition while exhibiting said 
superconductivity. 

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

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

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

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

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

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



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

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

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

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

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

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 
transition temperature, and 

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

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

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

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



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

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

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

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

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

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

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

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

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 



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

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

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

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

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

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

CLAIM 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. 



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

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

CLAIM 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 Cu 3+ ions in said composition and a means 
for passing a superconducting current through said superconducting composition. 

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

CLAIM 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. 



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

CLAIM 38 The combination of claim 36, where said at least one other element is an 
element which results in Cu 3+ ions in said composition. 

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 Cu 2+ and Cu 3+ ions in said 
composition. 

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

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

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



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

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 a means for passing a superconducting electric 
current through said superconductor. 

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

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

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

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

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

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



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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. 

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, 

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 

cooling 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. 
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 



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

CLAIM 58 A combination, comprised of: 

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

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

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

CLAIM 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. 



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

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

CLAIM 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. 
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 T c 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 T c , and 



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

CLAIM 65 (ALLOWED) 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. 

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

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

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

CLAIM 69 A superconductive combination, comprising: 



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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. 

CLAIM 73 (WITHDRAWN) An apparatus comprising a composition of matter 
comprising a superconducting onset temperature greater than or equal to 26°K, said 
composition of matter made by a method comprising the steps of: 

preparing powders of oxygen-containing compounds of a rare earth or rare earth-like 
element, an alkaline earth element, and copper, 

mixing said compounds and firing said mixture to create a mixed copper oxide 
composition including said alkaline earth element and said rare earth or rare earth-like 
element, and 

annealing said mixed copper oxide composition at an elevated temperature less than 
about 950°C in an atmosphere including oxygen to produce a superconducting 
composition having a mixed copper oxide phase exhibiting a superconducting onset 



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temperature greater than or equal to 26°K, said superconducting composition having a 
layer-like crystalline structure after said annealing step. 

CLAIM 74 (WITHDRAWN) The method of claim 73, where the amount of oxygen 
incorporated into said composition is adjusted by said annealing step, the amount of 
oxygen therein affecting the critical temperature T c of the superconducting composition. 

CLAIM 75 (WITHDRAWN) An apparatus comprising a composition of matter for 
carrying a superconductive current comprising a superconducting onset temperature 
greater than or equal to 26°K, said superconductor being comprised of a rare earth or 
rare earth-like element (RE), an alkaline earth element (AE), copper (CU), and oxygen 
(O) and having the general formula RE-AE-CU-O, said composition being made by a 
method including the steps of combining said rare earth or rare earth-like element, said 
alkaline earth element and said copper in the presence of oxygen to produce a mixed 
copper oxide including said rare earth or rare earth-like element and said alkaline earth 
element therein, and 

heating said mixed copper oxide to produce a superconductor having a crystalline layer- 
like structure and exhibiting a superconducting onset temperature greater than or equal 
to 26°K the critical transition temperature of said superconductor being dependent on 
the amount of said alkaline earth element therein. 

CLAIM 76 (WITHDRAWN) The apparatus of claim 75, where said heating step is done 
in an atmosphere including oxygen. 

CLAIM 77 (ALLOWED) 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 



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superconducting state at a temperature greater than or equal to 26°K, said mixed 
copper oxide having a superconducting onset temperature greater than or equal to 
26°K, and 

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

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

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

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

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

CLAIM 82 (WITHDRAWN) An apparatus comprising a superconductor comprising a 
superconducting onset temperature greater than or equal to 26°K, said superconductor 
being comprised of a rare earth or rare earth-like element (RE), an alkaline earth 
element (AE), a transition metal element (TM), and Oxygen (O) and having the general 
formula RE-AE-TM-O, said superconductor being made by a method including the steps 
of combining said rare earth or rare earth-like element, said alkaline earth element and 
said transition metal element in the presence of oxygen to produce a mixed transition 
metal oxide including said rare earth or rare earth-like element and said alkaline earth 
element therein, and 



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

CLAIM 83 (WITHDRAWN) The apparatus of claim 82, where said transition metal is 
copper. 

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. 

CLAIM 86 (ALLOWED) 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, 



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means 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 

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

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

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. 

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

CLAIM 91 A combination, comprising: 



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

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

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

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

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

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

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 T c of greater than or equal to 26°K; 



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

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

CLAIM 97 (ALLOWED) 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 -I ike element and at least one alkaline-earth element. 

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

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

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. 

CLAIM 103 (ALLOWED) 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 



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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 T c and a lower limit defined by an effectively-zero- 
bulk-resistivity intercept temperature T q=0 , the transition-onset temperature T c being 
greater than or equal to 26°K; 

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

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

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

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

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

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



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CLAIM 109 A superconductive apparatus comprising a composition having a transition 
temperature greater than or equal to 26°K, the composition including a rare earth or 
alkaline earth element, a transition metal element capable of exhibiting multivalent 
states and oxygen, including at least one phase that exhibits superconductivity at 
temperature greater than or equal to 26°K, means for maintaining said composition at 
said temperature to exhibit said superconductivity and means for passing an electrical 
superconducting current through said composition while exhibiting said 
superconductivity. 

CLAIM 110 The combination of claim 15, where said additional element is rare earth or 
alkaline earth element. 

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

CLAIM 112 A device comprising a superconducting copper oxide having a 
superconductive onset temperature greater than or equal to 26°K, said superconducting 
copper oxide being at a temperature less than said superconducting onset temperature 
and having a superconducting current flowing therein. 

CLAIM 113 (ALLOWED) 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 (ALLOWED) A device comprising a superconducting oxide composition 
having a superconductive onset temperature greater than or equal to 26°K, said 



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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 1MB element, an alkaline earth, 
and copper. 

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

CLAIM 1 16 An apparatus comprising a transition metal oxide having a T c greater than 
or equal to 26°K carrying a superconducting current said transition metal oxide is 
maintained at a temperature less than said T c . 

CLAIM 1 17 A structure comprising a transition metal oxide having a T c greater than or 
equal to 26°K carrying a superconducting current. 

CLAIM 1 18 An apparatus comprising a transition metal oxide having a T c greater than 
or equal to 26°K carrying a superconducting current. 

CLAIM 1 1 9 A device comprising a copper oxide having a T c greater than or equal to 
26°K carrying a superconducting current said copper oxide is maintained at a 
temperature less than said T c . 

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

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



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

CLAIM 123 (ALLOWED) A superconductive apparatus comprising: 

a composition of the formula Ba x La x -5Cu 5 OY 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 540°C to about 950°C 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 means 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 means for passing an electrical current through said composition while said metal 
oxide phase is in said superconducting state. 

CLAIM 124 (ALLOWED) A device comprising a composition of matter having a T c 
greater than or equal to 26°K carrying a superconducting current, said composition 
comprising at least one each of a 1MB element, an alkaline earth, and copper oxide said 
device is maintained at a temperature less than said T c . 

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

CLAIM 126 A device comprising a composition of matter having a T c 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. 



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CLAIM 127 A device comprising a composition of matter having a T c greater than or 
equal to 26°K carrying a superconducting current, said composition comprising at least 
one each of a 1MB element, and copper oxide. 

CLAIM 128 A transition metal oxide device comprising a T c _greater than or equal to 
26°K and carrying a superconducting current. 

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

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, a means for maintaining said composition at said 
temperature to exhibit said superconductivity and means for passing an electrical 
superconducting current through said composition which exhibiting said 
superconductivity. 

CLAIM 131 The combination of claim 15, where said additional element is a rare earth 
or Group III B element. 

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

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

CLAIM 1 34 The combination of claim 71 , where said mixed copper oxide further 
includes a rare earth or Group III B element. 



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CLAIM 135 (ALLOWED) 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, 

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

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

CLAIM 137 (ALLOWED) 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, 

means 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 

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



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

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 T c 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 T c of the 
superconductive composition; and 

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

CLAIM 140 (ALLOWED) 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 T c and a lower limit defined by an effectively-zero- 
bulk-resistivity intercept temperature T r=0 , the transition-onset temperature T c being 
greater than or equal to 26°K; 



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

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

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

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

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

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

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

CLAIM 144 (ALLOWED) 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, 



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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 (ALLOWED) The apparatus of claim 144, where said transition metal is 
copper. 

CLAIM 146 An apparatus: 

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

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

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

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

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

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: 



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(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 T c 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 T c of 
the superconductive composition; and 

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

CLAIM 150 (ALLOWED) The superconductive apparatus according to claim 149 in 
which the copper-oxide compound of the superconductive composition includes at least 
one rare-earth or rare-earth -I ike element and at least one alkaline-earth element. 

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

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

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

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

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



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CLAIM 156 (ALLOWED) 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 T c and a lower limit defined by an effectively-zero- 
bulk-resistivity intercept temperature T p=0 , the transition-onset temperature T c being 
greater than or equal to 26°K; 

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

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

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

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

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



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

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

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

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

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

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

CLAIM 163 An apparatus comprising: 

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

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



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

CLAIM 164 An apparatus comprising: 

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

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

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

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

CLAIM 165 An apparatus for causing electric-current flow in a superconductive state at 
a temperature greater than or equal to 26°K, comprising: 

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

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



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

CLAIM 166 An apparatus for conducting an electric current essentially without resistive 
losses, comprising: 

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

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

(c) a current source causing an electric current to flow in the superconductor element. 
CLAIM 167 (ALLOWED) An apparatus comprising: 

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

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

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



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

CLAIM 168 (ALLOWED) An apparatus comprising: 

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

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

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

CLAIM 169 (ALLOWED) An apparatus comprising: 

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

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

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



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

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

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

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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound having 
a layer-type perovskite-like crystal structure, the copper-oxide compound including at 
least one element selected from the group consisting of a Group II A element and at 
least one element selected from the group consisting of a rare earth element and a 
Group 1MB element, the composition having a superconductive/resistive transition 
defining a superconductive-resistive-transition temperature range between an upper 



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limit defined by a transition-onset temperature T c and a lower limit defined by an 
effectively-zero-bulk-resistivity intercept temperature T p=0 , the transition-onset 
temperature T c being greater than or equal to 26°K; 

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

(c) a current source causing an electric current to flow in the superconductor element. 
CLAIM 172 (ALLOWED) An apparatus comprising: 

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

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

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

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

CLAIM 173 (ALLOWED) An apparatus comprising: 

a composition including a transition metal, oxygen and an element selected from the 
group consisting of a Group II A element and at least one element selected from the 
group consisting of a rare earth element and a Group 1MB element, where said 
composition is a mixed transitional metal oxide formed from said transition metal and 



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said oxygen, said mixed transition metal oxide having a non-stoichiometric amount of 
oxygen therein and exhibiting a superconducting state at a temperature greater than or 
equal to 26°K; 

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

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

CLAIM 174 (ALLOWED) An apparatus: 

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

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

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

said composition including a transitional metal oxide and at least one element selected 
from the group consisting of Group II A element and at least one element selected from 
the group consisting of a rare earth element and a Group 1MB element. 

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a transition metal oxide 



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

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

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

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

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

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

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



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CLAIM 177 (ALLOWED) An apparatus comprising: 

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

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

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

said copper oxide includes at least one Group II A element, and at least one element 
selected from the group consisting of a rare earth element and a Group 1MB element. 

CLAIM 178 (ALLOWED) An apparatus comprising: 

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

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

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

CLAIM 179 (ALLOWED) A structure comprising: 



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

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

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

said composition including a copper oxide, a Group II A element, at least one element 
selected from the group consisting of a rare earth element and a Group 1MB element. 

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

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

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

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

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



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

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

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

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

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



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CLAIM 184 An apparatus comprising a superconducting copper oxide having a 
superconductive onset temperature greater than or equal to 26°K, a temperature 
controller maintaining said superconducting copper oxide at a temperature less than 
said superconducting onset temperature and a current source flowing a 
superconducting current in said superconducting oxide. 

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

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

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

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

CLAIM 189 (ALLOWED) An apparatus comprising: 



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

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

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

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

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

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



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

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

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

CLAIM 196 (ALLOWED) An apparatus comprising: 

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

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

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

CLAIM 197 (ALLOWED) The apparatus of claim 196, where said transition metal is 
copper. 



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CLAIM 198 A superconductive apparatus for causing electric current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound having 
a substantially layered perovskite crystal structure, the composition having a 
superconductor transition temperature T c 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 T c of 
the superconductive composition; and 

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

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

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

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

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



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

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

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

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

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

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

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

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



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

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

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

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

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

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

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

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



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

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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound having 
a substantially layered perovskite crystal structure, the composition having a 
superconductive transition temperature T c of greater than or equal to 26°K, said 
superconductive composition includes a Group II A element and at least one element 
selected from the group consisting of a rare earth element and a Group 1MB element; 

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

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



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

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

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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a transition metal oxide 
compound having a substantially layered perovskite crystal structure, the composition 
having a superconductive transition temperature T c of greater than or equal to 26°K, 
said superconductive composition includes a Group II A element and at least one 
element selected from the group consisting of a rare earth element and a Group 1MB 
element; 



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

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

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

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

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

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

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

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



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CLAIM 219 An apparatus according to claim 184 wherein said superconducting copper 
oxide comprises a substantially layered perovskite crystal structure. 

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

CLAIM 221 (ALLOWED) An apparatus according to claim 186 wherein said 
superconducting oxide composition comprises a substantially layered perovskite crystal 
structure. 

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

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

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

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

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

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

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



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

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

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

CLAIM 232 An apparatus comprising: 

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

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

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

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

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

CLAIM 235 (ALLOWED) An apparatus comprising: 



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

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

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

CLAIM 236 (ALLOWED) An apparatus according to claim 235, where said transition 
metal is copper. 

CLAIM 237 An apparatus comprising: 

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

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

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

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



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CLAIM 240 An apparatus capable of carrying electric current flow in a superconductive 
state at a temperature greater than or equal to 26°K, comprising: 

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

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

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

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

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

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

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

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



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

CLAIM 247 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a layer-type perovskite-like crystal structure, the copper-oxide compound 
including at least one rare-earth or rare-earth-like element and at least one alkaline- 
earth element, the composition comprising a superconductive/resistive transition 
defining a superconductive/resistive-transition temperature range between an upper 
limit defined by a transition-onset temperature T c and a lower limit defined by an 
effectively-zero-bulk-resistivity intercept temperature T p=0 , the transition-onset 
temperature T c 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 T p=0 of the 
superconductive composition; and 

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

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

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

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



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

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

CLAIM 253 An apparatus comprising: 

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

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

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

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

CLAIM 254 An apparatus comprising: 

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

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



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

CLAIM 255 An apparatus comprising: 

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

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

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

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

CLAIM 256 An apparatus capable of carrying an electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

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

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



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

CLAIM 257 An apparatus capable of carrying an electric current essentially without 
resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a layer-type perovskite-like crystal structure, the copper-oxide compound 
including at least one element selected from the group consisting of a Group II A 
element, a rare earth element and a Group III B element, the composition comprising a 
superconductive/resistive transition defining a superconductive/resistive-transition 
temperature range between an upper limit defined by a transition-onset temperature T c 
and a lower limit defined by an effectively-zero-bulk-resistivity intercept temperature 
T p =o, the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

(c) a source of an electric current to flow in the superconductor element. 
CLAIM 258 (ALLOWED) An apparatus comprising: 

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

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



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

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

CLAIM 259 (ALLOWED) An apparatus comprising: 

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

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

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

CLAIM 260 (ALLOWED) An apparatus comprising: 

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

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



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

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

CLAIM 261 (ALLOWED) An apparatus capable of carrying an electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 262 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a layer-type perovskite-like crystal structure, the copper-oxide compound 
including at least one element selected from the group consisting of a Group II A 



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element and at least one element selected from the group consisting of a rare earth 
element and a Group III B element, the composition comprising a 
superconductive/resistive transition defining a superconductive-resistive-transition 
temperature range between an upper limit defined by a transition-onset temperature T c 
and a lower limit defined by an effectively-zero-bulk-resistivity intercept temperature 
T p =o, the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

(c) a source of an electric current to flow in the superconductor element. 
CLAIM 263 (ALLOWED) An apparatus comprising: 

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

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

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

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

CLAIMS 264 (ALLOWED) An apparatus comprising: 



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

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

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

CLAIM 265 (ALLOWED) An apparatus comprising: 

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

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

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

said composition including a transitional metal oxide and at least one element selected 
from the group consisting of Group II A element and at least one element selected from 
the group consisting of a rare earth element and a Group 1MB element. 



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CLAIM 266 (ALLOWED) An apparatus capable of carrying an electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 267 An apparatus for conducting an electric current essentially without resistive 
losses, comprising: 

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



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

(c) a source of an electric current to flow in the superconductor element. 
CLAIM 268 An apparatus comprising: 

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

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

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

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

CLAIM 269 (ALLOWED) An apparatus comprising: 

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



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

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

CLAIM 270 (ALLOWED) An apparatus comprising: 

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

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

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

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

CLAIM 271 (ALLOWED) An apparatus for causing an electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a layer-type perovskite-like crystal structure, the composition comprising a 
superconductive transition temperature T c of greater than or equal to 26°K, said 
superconductive composition includes at least one element selected from the group 



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consisting of a Group II A element, at least one element selected from the group 
consisting of a rare earth element and at least one element selected from the group 
consisting of a Group III B element; 

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

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

CLAIM 272 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a layer-type perovskite-like crystal structure, the copper-oxide compound 
including at least one element selected from the group consisting of a group II A 
element, at least one element selected from the group consisting of a rare earth 
element and at least one element selected from the group consisting of a Group 1MB 
element, the composition comprising a superconductive-resistive transition temperature 
defining a superconductive/resistive-transition temperature range between an upper 
limit defined by a transition-onset temperature T c and a lower limit defined by an 
effectively-zero-bulk-resistivity intercept temperature T p=0 , the transition-onset 
temperature T c 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 T p=0 of the 
superconductive composition; and 

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



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CLAIM 273 An apparatus comprising a composition comprising a transition 
temperature greater than or equal to 26°K, the composition including a rare earth or 
alkaline earth element, a transition metal element capable of exhibiting multivalent 
states and oxygen, including at least one phase that exhibits superconductivity at 
temperature greater than or equal to 26°K, a temperature controller for maintaining said 
composition at said temperature to exhibit said superconductivity and a source of an 
electrical superconducting current through said composition with said phrase exhibiting 
said superconductivity. 

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

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

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

CLAIM 277 (ALLOWED) An apparatus comprising a superconducting oxide 
composition comprising a superconductive onset temperature greater than or equal to 
26°K, a temperature controller for maintaining said superconducting copper oxide at a 



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temperature less than said superconducting onset temperature and a source of a 
superconducting electrical current therein, said composition comprising at least one 
each of a Group III B element, an alkaline earth, and copper. 

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

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

CLAIM 280 (ALLOWED) An apparatus comprising: 

a composition of the formula Ba x La x -5, Cu 5 Oy, 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 540°C to about 950°C and for times of about 15 minutes to 
about 12 hours, said composition comprising 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 source of an electrical current through said composition while said metal oxide phase 
is in said superconducting state. 

CLAIM 281 (ALLOWED) An apparatus comprising a source of a superconducting 
electrical current in a composition of matter comprising a T c greater than or equal to 
26°K, said composition comprising at least one each of a III B element, an alkaline 



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earth, and copper oxide and a temperature controller for maintaining said composition 
of matter at a temperature less than T c . 

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

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

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

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

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

CLAIM 287 (ALLOWED) An apparatus comprising: 



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

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

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

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

CLAIM 289 An apparatus for causing electric current flow in a superconductive state at 
a temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 290 An apparatus according to claim 289 in which the copper-oxide compound 
of the superconductive composition includes at least one element selected from the 



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group consisting of a rare-earth element and a Group III B element and at least one 
alkaline-earth element. 

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

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

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

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

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

CLAIM 296 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

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



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

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

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

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

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

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

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

CLAIM 302 An apparatus for causing electric-current flow in a superconductive state at 
a temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a substantially layered perovskite crystal structure, the composition 
comprising a superconductive transition temperature T c of greater than or equal to 26°K, 
said superconductive composition includes at least one element selected from the 
group consisting of a Group II A element, a rare earth element; and a Group 1MB 
element; 



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

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

CLAIM 303 An apparatus for conducting an electric current essentially without resistive 
losses, comprising: 

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

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

CLAIM 304 (ALLOWED) An apparatus for causing electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

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



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comprising a substantially layered perovskite crystal structure, the composition 
comprising a superconductive transition temperature T c of greater than or equal to 
26°K, said superconductive composition includes at least one element selected from the 
group consisting of a Group II A element and at least one element selected from the 
group consisting of a rare earth element and a Group III B element; 

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

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

CLAIM 305 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

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

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



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CLAIM 306 (ALLOWED) An apparatus for causing electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a transition metal oxide 
compound comprising a substantially layered perovskite crystal structure, the 
composition comprising a superconductive transition temperature T c of greater than or 
equal to 26°K, said superconductive composition includes at least one element selected 
from the group consisting of a Group II A element and at least one element selected 
from the group consisting of a rare earth element and a Group 1MB element; 

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

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

CLAIM 307 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

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



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

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

CLAIM 308 An apparatus according to claim 273 wherein said composition comprises a 
substantially layered perovskite crystal structure. 

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

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

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

CLAIM 312 (ALLOWED) An apparatus according to claim 277 wherein said 
superconducting oxide composition comprises a substantially layered perovskite crystal 
structure. 

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

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

CLAIM 315 (ALLOWED) An apparatus according to claim 280 wherein said 
composition comprises a substantially layered perovskite crystal structure. 



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CLAIM 316 (ALLOWED) An apparatus according to claim 281 wherein said 
composition of matter comprises a substantially layered perovskite crystal structure. 

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

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

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

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

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

CLAIM 322 A superconductive combination according to anyone of claims 84 or 85, 
wherein said mixed transition metal oxide can be made according to known principles 
of ceramic science. 

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

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



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

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

CLAIM 327 A combination according to anyone of claims 64 or 135, wherein said 
mixed copper oxide can be made according to known principles of ceramic science. 

CLAIM 328 A superconductive apparatus according to anyone of claims 48 to 52, 96 to 
108, 198 to 204, 371, 383 or 384, wherein said superconductive composition can be 
made according to known principles of ceramic science. 

CLAIM 329 A superconductive combination according to anyone of claims 12 to 23, 
110, 131, 132 or 367-370, wherein said superconductive composition can be made 
according to known principles of ceramic science. 

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

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

CLAIM 332 An apparatus according to anyone of claims 183, 217, 218, 274 or 309, 
wherein said superconductive transition metal oxide can be made according to known 
principles of ceramic science. 

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



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

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

CLAIM 336 (ALLOWED) An apparatus according to anyone of claims 186, 221, 272, 
312 or 413, wherein said superconductive oxide composition can be made according to 
known principles of ceramic science. 

CLAIM 337 A device according to anyone of claims 1 1 4 or 1 1 7, wherein said transition 
metal oxide can be made according to known principles of ceramic science. 

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

CLAIM 339 A superconductive apparatus according to anyone of claims 27-32, 132 or 
370, wherein said transition metal oxide can be made according to known principles of 
ceramic science. 

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

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

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



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CLAIM 343 A device according to anyone of claims 1 1 9 or 1 21 , wherein said copper 
oxide can be made according to known principles of ceramic science. 

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

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

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

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

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

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

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

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

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



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CLAIM 353 A superconductive apparatus according to anyone of claims 139, 140, 149 
to 1 55, 1 56 to 1 61 , 1 70, 1 71 , 1 75, 1 76, 1 80, 1 81 , 205 to 21 6, 387-393, or 396-401 , 
wherein said superconductive composition can be made according to known principles 
of ceramic science. 

CLAIM 354 An apparatus according to anyone of claims 165, 166, 185, 220, 240 to 
246, 247 to 252, 261 , 262, 289, 290 to 301 , 394, 395, 402-406, 409 or 41 0, wherein 
said superconductive composition can be made according to known principles of 
ceramic science. 

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

CLAIM 356 A device according to anyone of claims 1 24 to 1 27, wherein said 
composition of matter can be made according to known principles of ceramic science. 

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

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

CLAIM 359 An apparatus according to anyone of claims 1 95 or 230, wherein said 
copper oxide composition can be made according to known principles of ceramic 
science. 



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CLAIM 360 An apparatus according to anyone of claims 286 or 321 , wherein said 
copper oxide composition can be made according to known principles of ceramic 
science. 

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

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

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

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

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

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



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

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

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

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

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

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

CLAIM 373 A combination, comprised of: 

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

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



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

CLAIM 374 A combination, comprised of: 

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

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

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

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

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



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CLAIM 377 (WITHDRAWN) An apparatus comprising a superconductor having a 
superconducting onset temperature greater than or equal to 26°K, said superconductor 
being made by a method including the steps of: 

preparing powders of oxygen-containing compounds of a rare earth or rare earth-like 
element, an alkaline earth element, and copper, 

mixing said compounds and firing said mixture to create a mixed copper oxide 
composition including said alkaline earth element and said rare earth or rare earth-like 
element, and 

annealing said mixed copper oxide composition at an elevated temperature less than 
about 950°C in an atmosphere including oxygen to produce a superconducting 
composition having a mixed copper oxide phase exhibiting a superconducting onset 
temperature greater than or equal to 26°K, said superconducting composition 
comprising a crystalline structure comprising a layered characteristic after said 
annealing step. 

CLAIM 378 (WITHDRAWN) An apparatus comprising a superconductor having a 
superconducting onset temperature greater than or equal to 26°K, said superconductor 
being comprised of a rare earth or an element (RE) comprising a rare earth 
characteristic, an alkaline earth element (AE), copper (CU), and oxygen (O) and having 
the general formula RE-AE-CU-O, said superconductor being made by a method 
comprising the steps of combining said rare earth or element comprising a rare earth 
characteristic, said alkaline earth element and said copper in the presence of oxygen to 
produce a mixed copper oxide including said rare earth or rare earth-like element and 
said alkaline earth element therein, and 

heating said mixed copper oxide to produce a superconductor having a crystalline 
structure comprising a layered characteristic and exhibiting a superconducting onset 



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temperature greater than or equal to 26°K the critical transition temperature of said 
superconductor being dependent on the amount of said alkaline earth element therein. 

CLAIM 379 A combination, comprising: 

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

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

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

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



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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition comprising a copper-oxide compound having a crystal 
structure comprising a perovskite characteristic and a layered characteristic, the 
composition having a superconductor transition temperature T c 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 T c of the 
superconductive composition; and 

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

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

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



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

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

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

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

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

CLAIM 388 (ALLOWED) An apparatus comprising: 

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



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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
characteristic, the composition having a superconductor transition temperature T c 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 T c of 
the superconductive composition; and 

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

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

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

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



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

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

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

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

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

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



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

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

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

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

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

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

CLAIM 396 (ALLOWED) 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 



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comprising a crystal structure comprising a layered characteristic and a perovskite 
characteristic, the composition having a superconductive transition temperature T c of 
greater than or equal to 26°K, said superconductive composition includes at least one 
element selected from the group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth element and a Group 1MB 
element; 

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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
characteristic, the copper-oxide compound including at least one element selected from 
the group consisting of a Group II A element and at least one element selected from the 
group consisting of a rare earth element and a Group III B element, the composition 
having a superconductive/resistive transition defining a superconductive-resistive- 
transition temperature range between an upper limit defined by a transition-onset 
temperature T c and a lower limit defined by an effectively-zero-bulk-resistivity intercept 

temperature T p=0 , the transition-onset temperature T c being greater than or 
equal to 26°K; 

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



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

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

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

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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a transition metal-oxide 
compound comprising a crystal structure comprising a layered characteristic and a 
perovskite characteristic, the transition metal-oxide compound including at least one 
element selected from the group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth element and a Group 1MB 
element, the composition having a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range between an upper limit defined 



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by a transition-onset temperature T c and a lower limit defined by an effectively-zero- 
bulk-resistivity intercept temperature T p = 0 , the transition-onset temperature T c being 
greater than or equal to 26°K; 

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

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

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

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

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

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

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



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

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

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

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

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

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

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



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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a layer-type perovskite-like crystal structure, the copper-oxide compound 
comprising at least one rare-earth or element comprising a rare earth characteristic and 
at least one alkaline-earth element, the composition comprising a 
superconductive/resistive transition defining a superconductive/resistive-transition 
temperature range between an upper limit defined by a transition-onset temperature T c 
and a lower limit defined by an effectively-zero-bulk-resistivity intercept temperature 
T p =o, the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

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

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



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

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

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

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

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

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



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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
characteristic, the composition comprising a superconductive transition temperature T c 
of greater than or equal to 26°K, said superconductive composition includes at least one 
element selected from the group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth element and a Group 1MB 
element; 

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

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
characteristic, the copper-oxide compound including at least one element selected from 



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the group consisting of a Group II A element and at least one element selected from the 
group consisting of a rare earth element and a Group III B element, the composition 
comprising a superconductive/resistive transition defining a superconductive-resistive- 
transition temperature range between an upper limit defined by a transition-onset 
temperature T c and a lower limit defined by an effectively-zero-bulk-resistivity intercept 
temperature T p=0 , the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

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

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

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

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

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



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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a transition metal-oxide 
compound comprising a crystal structure comprising a layered characteristic and a 
perovskite characteristic, the transition metal-oxide compound including at least one 
element selected from the group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth element and a Group 1MB 
element, the composition comprising a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range between an upper limit defined 
by a transition-onset temperature T c and a lower limit defined by an effectively-zero- 
bulk-resistivity intercept temperature T p=0 , the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

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

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

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
characteristic, the copper-oxide compound including at least one element selected from 
the group consisting of a group II A element, at least one element selected from the 
group consisting of a rare earth element and at least one element selected from the 
group consisting of a Group III B element, the composition comprising a 



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superconductive-resistive transition temperature defining a superconductive/resistive- 
transition temperature range between an upper limit defined by a transition-onset 
temperature T c and a lower limit defined by an effectively-zero-bulk-resistivity intercept 
temperature T p = 0 , the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

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

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

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

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

CLAIM 417 A superconducting apparatus according to claim 372, wherein said copper 
oxide can be made according to known principles of ceramic science. 

CLAIM 418 A combination according to claim 373, wherein said copper oxide can be 
made according to known principles of ceramic science. 



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CLAIM 419 A combination according to claim 374, wherein said material can be made 
by known principles of ceramic science. 

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

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

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

CLAIM 423 A apparatus according to claim 382, wherein said copper oxide material 
can be made by known principles of ceramic science. 

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

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

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

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

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



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a superconductive element comprising a superconductive composition, said 
superconductive composition comprising O and at least one element selected from the 
group consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, 
Dy, Ho, Er, Tm, Yb, and Lu; and 

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

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

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

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

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

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

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

CLAIM 433 An apparatus according to any one of claims 428 to 430 or 431 , wherein 
said composition comprises a perovskite-like structure. 

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



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

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

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

CLAIM 438 An apparatus comprising: a means for conducting a superconducting 
current at a temperature greater than or equal to 26°K and a means for providing an 
electric current to flow in said means for conducting a superconducting current. 

CLAIM 439 An apparatus according to claim 438, wherein said means for conducting a 
superconductive current comprises a T c greater than or equal to 26°K. 

CLAIM 440 An apparatus according to claim 438, further including a temperature 
controller for maintaining said means for conducting a superconducting current at a said 
temperature. 

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

CLAIM 442 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises one or more of the 
groups consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, 
Dy, Ho, Er, Tm, Yb and Lu. 

CLAIM 443 An apparatus according to anyone of claims 438, 439 or 440, wherein said 
means for conducting a superconducting current comprises one or more of Be, Mg, Ca, 
Sr, Ba and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, 
Er, Tm, Yb and Lu. 



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CLAIM 444 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises a layered structure. 

CLAIM 445 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises a substantially 
perovskite structure. 

CLAIM 446 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises a perovskite-like 
structure. 

CLAIM 447 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises a perovskite related 
structure. 

CLAIM 448 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises a structure having a 
perovskite characteristic. 

CLAIM 449 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises a transition metal. 

CLAIM 450 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises a copper oxide. 

CLAIM 451 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises oxygen in a 
nonstoichiomeric amount. 



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CLAIM 452 An apparatus according to anyone of claims 438, 439 and 440, wherein 
said means for conducting a superconducting current comprises a multivalent transition 
metal. 

CLAIM 453 An apparatus according to anyone of claims 438, 439 or 440, wherein 
said means for conducting a superconducting current can be made according to known 
principles of ceramic science. 

CLAIM 454 An apparatus according to claim 441 , wherein said means for conducting 
a superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 455 An apparatus according to claim 442, wherein said means for conducting 
a superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 456 An apparatus according to claim 443, wherein said means for conducting 
a superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 457 An apparatus according to claim 444, wherein said means for conducting 
a superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 458 An apparatus according to claim 445, wherein said means for conducting a 
superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 459 An apparatus according to claim 446, wherein said means for conducting a 
superconducting current can be made according to known principles of ceramic 
science. 



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CLAIM 460 An apparatus according to claim 447, wherein said means for conducting a 
superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 461 An apparatus according to claim 448, wherein said means for conducting a 
superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 462 An apparatus according to claim 449, wherein said means for conducting a 
superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 463 An apparatus according to claim 450, wherein said means for conducting a 
superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 464 An apparatus according to claim 451 , wherein said means for conducting a 
superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 465 An apparatus according to claim 452, wherein said means for conducting a 
superconducting current can be made according to known principles of ceramic 
science. 

CLAIM 466 An apparatus comprising: 

a superconductive current carrying element comprising a T c K;D 26 □ 

said superconductive current carrying element comprises a property selected from one 
or more of the group consisting of a mixed valent oxide, a transition metal, a mixed 
valent transition metal, a perovskite structure, a perovskite-like structure, a perovskite 



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related structure, a layered structure, a stoichiomeric or nonstoichiomeric oxygen 
contents and a dopant. 

CLAIM 467 An apparatus according to claim 466, wherein said superconductive 
K.D current carrying element is at a temperature greater than or equal to 26 

CLAIM 468 An apparatus according to claim 466, further including a temperature 
controller for maintaining said superconductive current carrying element at a 
temperature less than said T c . 

CLAIM 469 An apparatus according to anyone of claims 466, 467 or 468, wherein said 
superconductive current carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, 
Ho, Er, Tm, Yb and Lu. 

CLAIM 470 An apparatus according to anyone of claims 466, 467 or 468, wherein said 
superconductive current carrying element comprises one or more of Be, Mg, Ca, Sr, Ba 
and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, 
Yb and Lu. 

CLAIM 471 An apparatus according to claim 469, wherein said superconductive 
current carrying element comprises a transition metal. 

CLAIM 472 An apparatus according to claim 470, wherein said superconductive 
current carrying element comprises a transition metal 

CLAIM 473 An apparatus according to anyone of claims 466, 467, or 468, wherein 
said superconducting current carrying element can be made according to known 
principles of ceramic science. 



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CLAIM 474 An apparatus according to of claim 471 , wherein said superconducting 
current carrying element can be made according to known principles of ceramic 
science. 

CLAIM 475 An apparatus according to of claim 472, wherein said superconducting 
current carrying element can be made according to known principles of ceramic 
science. 

CLAIM 476 An apparatus comprising: 

a superconductive current carrying element comprising a T c K;D 26 □ 

said superconductive current carrying element comprises an oxide, a layered perovskite 
structure or a layered perovskite-like structure and comprises a stoichiomeric or 
nonstoichiomeric oxygen content. 

CLAIM 477 An apparatus according to claim 476, wherein said superconductive 
K.D current carrying element is at a temperature greater than or equal to 26 

CLAIM 478 An apparatus according to claim 476, further including a temperature 
controller for maintaining said superconductive current carrying element at a 
temperature less than said T c . 

CLAIM 479 An apparatus according to anyone of claims 476, 477 or 478, wherein said 
superconductive current carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, 
Ho, Er, Tm, Yb and Lu. 

CLAIM 480 An apparatus according to anyone of claims 476, 477 or 478, wherein said 
superconductive current carrying element comprises one or more of Be, Mg, Ca, Sr, Ba 



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and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, 
Yb and Lu. 

CLAIM 481 An apparatus according to claim 479, wherein said superconductive 
current carrying element comprises a transition metal. 

CLAIM 482 An apparatus according to claim 480, wherein said superconductive 
current carrying element comprises a transition metal. 

CLAIM 483 An apparatus according to claim 476, wherein said superconductive 
current carrying element comprises copper oxide. 

CLAIM 484 An apparatus according to anyone of claims 476, 477 or 478, wherein said 
superconductive current carrying element can be made according to known principles of 
ceramic science. 

CLAIM 485 An apparatus according to claim 479, wherein said superconductive 
current carrying element can be made according to known principles of ceramic 
science. 

CLAIM 486 An apparatus according to claim 480, wherein said superconductive 
current carrying element can be made according to known principles of ceramic 
science. 

CLAIM 487 An apparatus according to claim 481 , wherein said superconductive 
current carrying element can be made according to known principles of ceramic 
science. 

CLAIM 488 An apparatus according to claim 482, wherein said superconductive 
current carrying element can be made according to known principles of ceramic 
science. 



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CLAIM 489 An apparatus according to claim 483, wherein said superconductive 
current carrying element can be made according to known principles of ceramic 
science. 

CLAIM 490 An apparatus according to claim 484, wherein said superconductive 
current carrying element can be made according to known principles of ceramic 
science. 

CLAIM 491 An apparatus according to claim 485, wherein said superconductive 
current carrying element can be made according to known principles of ceramic 
science. 

CLAIM 492 The superconducting apparatus of claim 361 , where said phase is 
crystalline with a structure comprising a perovskite related structure. 

CLAIM 493 The superconducting apparatus of claim 362, where said phase is 
crystalline with a structure comprising a perovskite related structure. 

CLAIM 494 The combination of claim 12, where said composition includes a 
superconducting phase comprising a perovskite related structure. 

CLAIM 495 The combination of claim 379, wherein said crystalline structure comprises 
a perovskite related structure. 

CLAIM 496 A superconductive apparatus for causing electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition comprising a copper-oxide compound having a crystal 
structure comprising a perovskite related structure and a layered characteristic, the 



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composition having a superconductor transition temperature T c 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 T c of the 
superconductive composition; and 

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

CLAIM 497 A superconductive apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

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

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

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

CLAIM 498 A superconductive apparatus for causing electric current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 



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(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
related structure, the composition having a superconductor transition temperature T c 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 T c of 
the superconductive composition; and 

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

CLAIM 499 A superconductive apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
related 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 T c 
and a lower limit defined by an effectively-zero-bulk-resistivity intercept temperature 
T p =o, the transition-onset temperature T c being greater than or equal to 26°K; 

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

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



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CLAIM 500 An apparatus for causing electric-current flow in a superconductive state at 
a temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 501 An apparatus for conducting an electric current essentially without resistive 
losses, comprising: 

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



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

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

CLAIM 502 (ALLOWED) A superconductive apparatus for causing electric-current flow 
in a superconductive state at a temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
related structure, the composition having a superconductive transition temperature T c of 
greater than or equal to 26°K, said superconductive composition includes at least one 
element selected from the group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth element and a Group 1MB 
element; 

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

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

CLAIM 503 (ALLOWED) A superconductive apparatus for conducting an electric 
current essentially without resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
related structure, the copper-oxide compound including at least one element selected 



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from the group consisting of a Group II A element and at least one element selected 
from the group consisting of a rare earth element and a Group 1MB element, the 
composition having a superconductive/resistive transition defining a superconductive- 
resistive-transition temperature range between an upper limit defined by a transition- 
onset temperature T c and a lower limit defined by an effectively-zero-bulk-resistivity 
intercept temperature T p=0 , the transition-onset temperature T c being greater than or 
equal to 26°K; 

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

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

CLAIM 504 (ALLOWED) A superconductive apparatus for causing electric-current flow 
in a superconductive state at a temperature greater than or equal to 26°K, comprising: 

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

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

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



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CLAIM 505 (ALLOWED) A superconductive apparatus for conducting an electric 
current essentially without resistive losses, comprising: 

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

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

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

CLAIM 506 (ALLOWED) A superconductive apparatus for causing electric-current flow 
in a superconductive state at a temperature greater than or equal to 26°K, comprising: 

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



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

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

CLAIM 507 (ALLOWED) A superconductive apparatus for conducting an electric 
current essentially without resistive losses, comprising: 

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

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

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

CLAIM 508 An apparatus capable of carrying electric current flow in a superconductive 
state at a temperature greater than or equal to 26°K, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 



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related structure, the composition comprising a superconductor transition temperature 
T c of greater than or equal to 26°K; 

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

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

CLAIM 509 An apparatus capable of carrying an electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

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

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

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

CLAIM 510 An apparatus capable of carrying an electric current essentially without 
resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 



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related structure, the copper-oxide compound including at least one element selected 
from the group consisting of a Group II A element, a rare earth element and a Group III 
B element, the composition comprising a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range between an upper limit defined 
by a transition-onset temperature T c and a lower limit defined by an effectively-zero- 
bulk-resistivity intercept temperature T p=0 , the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

CLAIM 51 1 (ALLOWED) An apparatus capable of carrying an electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

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

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

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



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CLAIM 512 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a copper-oxide compound 
comprising a crystal structure comprising a layered characteristic and a perovskite 
related structure, the copper-oxide compound including at least one element selected 
from the group consisting of a Group II A element and at least one element selected 
from the group consisting of a rare earth element and a Group 1MB element, the 
composition comprising a superconductive/resistive transition defining a 
superconductive-resistive-transition temperature range between an upper limit defined 
by a transition-onset temperature T c and a lower limit defined by an effectively-zero- 
bulk-resistivity intercept temperature T p=0 , the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

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

CLAIM 513 (ALLOWED) An apparatus capable of carrying an electric-current flow in a 
superconductive state at a temperature greater than or equal to 26°K, comprising: 

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



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

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

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

CLAIM 514 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 

(a) a superconductor element made of a superconductive composition, the 
superconductive composition consisting essentially of a transition metal-oxide 
compound comprising a crystal structure comprising a layered characteristic and a 
perovskite related structure, the transition metal-oxide compound including at least one 
element selected from the group consisting of a Group II A element and at least one 
element selected from the group consisting of a rare earth element and a Group 1MB 
element, the composition comprising a superconductive/resistive transition defining a 
superconductive/resistive-transition temperature range between an upper limit defined 
by a transition-onset temperature T c and a lower limit defined by an effectively-zero- 
bulk-resistivity intercept temperature T p=0 , the transition-onset temperature T c 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 T p=0 of the 
superconductive composition; and 

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

CLAIM 515 (ALLOWED) An apparatus for conducting an electric current essentially 
without resistive losses, comprising: 



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

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

CLAIM 51 6 An apparatus of claim 1 46 wherein said means for carrying a 
superconductive current is comprised of an oxide. 

CLAIM 517 An apparatus comprising: 

a superconductive current carrying element comprising a T c K;D 26 □ 

said superconductive current carrying element comprises a metallic, oxygen-deficient, 
perovskite-like, mixed valent copper compound. 

CLAIM 518 An apparatus according to claim 517, wherein said superconductive 
K.D current carrying element is at a temperature greater than or equal to 26 



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CLAIM 519 An apparatus according to claim 517, further including a temperature 
controller for maintaining said superconductive current carrying element at a 
temperature less than said T c . 

CLAIM 520 An apparatus according to anyone of claims 51 7, 51 8 or 51 9, wherein said 
superconductive current carrying element comprises one or more of the group 
consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho 
Er, Tm, Yb and Lu. 

CLAIM 521 An apparatus according to anyone of claims 51 7, 51 8 or 51 9, wherein said 
superconductive current carrying element comprises one or more of Be, Mg, Ca, Sr, Ba 
and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu Gd, Tb, Dy, Ho, Er, Tm, 
Yb and Lu. 

CLAIM 522 An apparatus comprising: 

a superconductive current carrying element comprising a T c K;D 26 □ 

said superconductive current carrying element comprises a composition that can be 
made according to known principles of ceramic science. 

CLAIM 523 An apparatus according to claim 522, wherein said superconductive 
current carrying element is at a temperature K.ngreater than or equal to 26 

CLAIM 524 An apparatus according to claim 523, further including a temperature 
controller for maintaining said superconductive current carrying element at a 
temperature less than said T c . 

CLAIM 525 An apparatus according to anyone of claims 522, 523 or 524, wherein said 
superconductive current carrying element comprises one or more of the group 



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consisting of Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, 
Ho, Er, Tm, Yb and Lu. 

CLAIM 526 An apparatus according to anyone of claims 522, 523 or 524, wherein said 
superconductive current carrying element comprises one or more of Be, Mg, Ca, Sr, Ba 
and Ra and one or more of Sc, Y, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, 
Yb and Lu. 

CLAIM 527 An apparatus according to claim 525, wherein said superconductive 
current carrying element comprises a transition metal. 

CLAIM 528 An apparatus according to claim 526, wherein said superconductive 
current carrying element comprises a transition metal. 

CLAIM 529 An apparatus according to claim 522, wherein said superconductive 
current carrying element comprises copper oxide. 

CLAIM 530 An apparatus according to anyone of claims 522, 523 or 524, wherein said 
superconductive current carrying element is substantially perovskite. 

CLAIM 531 An apparatus according to anyone of claims 522, 523 or 524, wherein said 
superconductive current carrying element comprises a perovskite-like structure. 

CLAIM 532 An apparatus according to anyone of claims 522, 523 or 524, wherein said 
superconductive current carrying element comprises a perovskite related structure. 

CLAIM 533 An apparatus according to anyone of claims 522, 523 or 524, wherein said 
superconductive current carrying element comprises a nonstoichiometric amount of 
oxygen. 



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CLAIM 534 An apparatus according to anyone of claims 522, 523 or 524, wherein said 
superconductive current carrying element comprises a layered structure. 

CLAIM 535 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 a means for carrying a 
superconducting current 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 536 An apparatus comprising: 

a means for carrying a superconductive current 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 means for carrying a superconductive current 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 537 An apparatus comprising: 

a metallic, oxygen-deficient, perovskite-like, mixed valent transition metal 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 



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

CLAIM 538 The apparatus of claim 537, where said means for carrying a 
superconductive current is comprised of a metal oxide. 

CLAIM 539 The apparatus of claim 537, where said means for carrying a 
superconductive current is comprised of a transition metal oxide. 

CLAIM 540 An apparatus comprising: 

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

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

CLAIM 541 An apparatus according to claim 540, where said composition is comprised 
of a metal oxide. 

CLAIM 542 An apparatus according to claim 541 , where said composition is comprised 
of a transition metal oxide. 

CLAIM 543 A combination, comprising: 

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



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



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Part IX 
Evidence Appendix 



The evidence relied in are: 

Brief Attachments A to and AA which are in the record as Attachments A to Z and AA 
of Applicants' paper entitled "First Supplemental 
Amendment" dated March 1 , 2005 in response to 
Office Action dated July 28, 2004 was entered by the 
Office Action dated October 10, 2005. 



Brief Attachments AB to AG 



which are in the record as Attachments AB to AG of 
Applicants' paper entitled "Third Supplemental 
Amendment" dated March 14, 2005 in response to 
Office Action dated July 28, 2004 was entered by the 
Office Action dated October 10, 2005. 



Brief Attachment AH is in the record as Attachment 1 6 of Applicants' paper 

entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 which was entered by Office Action 
dated July 28, 2004. 



Brief Attachment Al 



is in the record as Attachment 17 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 which was entered by Office Action 
dated July 28, 2004. 



Brief Attachment AJ 



is in the record as Attachment 18 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 



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March 1 , 2004 in response to the Office Action dated 
February 4, 2000 which was entered by Office Action 
dated July 28, 2004. 



Brief Attachment AK 



is in the record as Attachment 19 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 which was entered by Office Action 
dated July 28, 2004. 



Brief Attachment AL 



is in the record as Attachment 20 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 which was entered by Office Action 
dated July 28, 2004. 



Brief Attachment AM 



is in the record as an Attachment of Applicants' paper 
entitled "Sixth Supplemental Amendment" dated April 
14, 2005 in response to the Office Action dated 
October 20, 2005. 



Brief Attachment AN is in the record as an Attachment of Applicants' paper 

entitled "Sixth Supplemental Amendment" dated April 
5, 2005 in response to the Office Action dated July 
28, 2004 was entered by Office Action dated October 
20, 2005. 



Brief Attachment AO is in the record as an Attachment of Applicants' paper 

entitled "Sixth Supplemental Amendment" dated April 
5, 2005 in response to the Office Action dated July 



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28, 2004 was entered by Office Action dated October 
20, 2005. 



Brief Attachment AP 



is in the record as an Attachment of Applicants' paper 
entitled "Second Amendment After Final Rejection" 
dated April 1 2, 2006 in response to the Office Action 
dated October 20, 2005 was entered by Advisory 
Action dated May 19, 2006. 



Brief Attachment AQ is in the record as an Attachment of Applicants' paper 

entitled "Second Amendment After Final Rejection" 
dated April 1 2, 2006 in response to the Office Action 
dated October 20, 2005 was entered by Advisory 
Action dated May 19, 2006. 



Brief Attachment AR 



is in the record as Attachment 57 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment AS 



is in the record as Attachment 37 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment AT 



is in the record as Attachment 42 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 



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February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment AU 



is a copy of Applicants' first Ancestral Application U.S. 
Application Serial No.: 07/053,307, filed May 22, 
1987. 



Brief Attachment AV 



is in the record as Attachment 6 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment AW 



is in the record as Attachment 23 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment AX 



is in the record as Attachment 73 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment AY 



is a reference cited by the Examiner with Office 
Action dated October 20, 2005. 



Brief Attachment AZ 



is a reference cited by the Examiner with Office 
Action dated October 20, 2005. 



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Brief Attachment BA is in the record as Attachment 43 of Applicants' paper 

entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 

Brief Attachment BB is in the record as Attachment 49 of Applicants' paper 

entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 

Brief Attachment BC is in the record as Attachment 50 of Applicants' paper 

entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 

Brief Attachment BD is in the record as Attachment 51 of Applicants' paper 

entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 

Brief Attachment BE is in the record as Attachment 52 of Applicants' paper 

entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



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Brief Attachment BF is in the record as Attachment 53 of Applicants' paper 

entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment BG 



is in the record as Attachment 54 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment BH is in the record as Attachment 55 of Applicants' paper 

entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment Bl 



is in the record as Attachment 56 of Applicants' paper 
entitled "Fifth Supplemental Amendment" dated 
March 1 , 2004 in response to the Office Action dated 
February 4, 2000 was entered by Office Action dated 
July 28, 2004. 



Brief Attachment BJ 



is in the record as an Attachment to Applicants' paper 
entitled "Eleventh Supplemental Amendment" dated 
November 14, 2006 in response to the Office Action 
dated October 20, 2005 this is not entered as of the 
submission of this brief. 



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Brief Attachment BK is in the record as an Attachment to Applicants' paper 

entitled "Fourteenth Supplemental Response" dated 
November 25, 2006 in response to the Office Action 
dated October 20, 2005 this is not entered as of the 
submission of this brief. 



Brief Attachment BL is in the record as an Attachment to Applicants' paper 

entitled "Fourteenth Supplemental Response" dated 
November 25, 2006 in response to the Office Action 
dated October 20, 2005 this is not entered as of the 
submission of this brief. 



Brief Attachments A to Z are in a separate paper entitled: 



PART IX 
CFR 37 §41 .37(c) (1) (ix) 
SECTION 1 
BRIEF ATTACHMENTS A TO Z 



Brief Attachments AA to AZ and BA to BJ are in a separate paper entitled: 



PART IX 
CFR 37 §41 .37(c) (1) (ix) 
SECTION 1 

BRIEF ATTACHMENTS AA TO AZ; BB TO Bl 



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PartX 

Related Proceeding Appendix 



There are no prior or pending appeals, interferences or related proceedings related to 
this application to Appellant's knowledge. Copending parent Application Serial Number 
08/303,561 filed 09-Sep-1994 has been suspended pending the outcome of this appeal 
since essentially the same issues are presented therein. The present Application Serial 
Number 08/479,810 is a Continuation of Application Serial 08/303,561 filed 09/09/94 
which is a Continuation of Application Serial Number 08/060,470 filed 05//1 1/93 which is 
a Continuation of Application Serial Number 08/875,003 filed 04/25/92 which is a 
Division of Application Serial Number 07/053,307 filed 05/22/87 (all referred to herein as 
The Ancestral Applications of the present application.) 



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CONCLUSION 



All rejected claims are appealed. Claims 1-64, 66-72, 84, 85, 88-96, 100-102, 109-112, 
115-122, 126-134, 139, 141-143, 146-149, 153-155, 162-166, 182-184, 187, 188, 192- 
195, 198-212, 217-219, 222, 223, 227-230, 232-234, 237-240, 244-246, 253-257, 268, 
273-275, 278, 279, 283-286, 289-295, 302, 303, 308-310, 313, 314, 318-329, 331-334, 
337-345, 347-357, 359-374, 376, 382, 383, 389, 394, 395, 402, 407, 408, 414-419, 421- 
424, 426-501 , 508-51 0, 51 5-543.as not enabled under 35 USC 1 1 2, first paragraph. 

In view of the arguments herein Applicants respectfully request that the Board 
grant Applicants' claim of priority to the Priority Document or to enter into the record a 
statement that Applicants' claim of priority does not have to be decided on to decide the 
issues raised by this appeal. 

Please charge any fee necessary to enter this paper and any previous paper to 
deposit account 09-0468. 

Respectfully submitted, 



/Daniel P Morris/ 

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



IBM CORPORATION 
Intellectual Property Law Dept. 
P.O. Box 218 

Yorktown Heights, New York 10598 



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