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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 



JOHANNES G. BEDNORZ YOR919870074US5 



877 7590 08/20/2008 I 

IBM CORPORATION, T.J. WATSON RESEARCH CENTER I 

P.O. BOX 218 KOPEC, MARKT 

YORKTOWN HEIGHTS, NY 10598 I 



PAPER NUMBER 



MAIL DATE | DELIVERY MODE 

08/20/2008 PAPER 



Please find below and/or attached an Office communication concerning this application or proceeding. 

The time period for reply, if any, is set in the attached communication. 



PTOL-90A (Rev. 04/07) 



United States Patent and Trademark Office 



Commissioner for Patents 
United States Patent and Trademark Office 
P.O. Box 1450 
Alexandria, VA 22313-1450 



BEFORE THE BOARD OF PATENT APPEALS 
AND INTERFERENCES 



Application Number: 08/479,810 
Filing Date: June 07, 1995 
Appellant (s) : BEDNORZ ET AL . 



Dr. Daniel P. Morris 
For Appellant 



EXAMINER'S ANSWER 



This is in response to the appeal brief filed 05/15/08 appealing 
from the Office action mailed 10/20/05. 



Application/Control Number: 08/479,810 
Art Unit: 1796 



Page 2 



(1) Real Party in Interest 

A statement identifying by name the real party in interest 
is contained in the brief. 

(2) Related Appeals and Interferences 

The examiner is not aware of any related appeals, 
interferences, or judicial proceedings which will directly 
affect or be directly affected by or have a bearing on the 
Board's decision in the pending appeal. Note Appellant's 
remarks regarding copending (suspended) S.N. 303,561. 

(3) Status of Claims 

The statement of the status of claims contained in the 
brief is correct. 

Note Appellant's statement regarding multiple dependent 
claims 323, 326, 327, 328, 334, 337, 338, 348, 353, 354, 355, 
356, 357, 422, 424, 426, 427 and 495. These multiple dependent 
claims have been listed as "Rejected" as dependent upon rejected 
base claims. However, as indicated by Appellant, these multiple 
dependent claims also depend from base claims indicated as 
allowed . 



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Art Unit: 1796 

(4) Status of Amendments After Final 

The appellant's statement of the status of amendments after 
final rejection contained in the brief is correct. 

The Examiner notes the following two after-final 
amendment /remarks were not addressed in the "Status of 
Amendments" (accompanying the Notice of Non-Compliant Appeal 
Brief mailed 11/15/07) . The status of the amendment (s) is as 
follows : 

16 th Supplementary Response (filed 01/31/08) is ENTERED. No 

claim amendments accompany this response. As stated by 
Appellant in the remarks, the attachment (Cryrogentic 
Engineering) is to provide background information to the Board 
of Appeals and no remarks from the Examiner are necessary. 

17 th Supplementary Response (filed 03/20/08) is ENTERED. No 

claim amendments accompany this response. As stated by 
Appellant in the remarks, the attachment (Wikipedia) is to 
provide background information to the Board of Appeals and no 
remarks from the Examiner are necessary. 



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(5) Summary of Claimed Subject Matter 

The summary of claimed subject matter contained in the 
brief (pages 18-37 of Vol 1) is correct. 

(6) Grounds of Rejection to be Reviewed on Appeal 

The appellant's statement of the grounds of rejection to be 
reviewed on appeal is correct. 

Appellant's claim for priority under 35 U.S.C. 119 in this 
section of the Brief is noted. As stated by Appellant, no prior 
art rejection (s) are pending, and the priority date of the 
foreign application is not required to overcome any prior art 
re j ection . 

(7) Claims Appendix 

The copy of the appealed claims contained in the Appendix 
to the brief is correct. 

(8) Evidence Relied Upon 

Schuller et al, "A Snapshot View of High-Temperature 
Superconductivity 2002", Workshop on High Temperature 
Superconductivity April 5-8, 2002 pp 1-50. 

"Exploring Superconductivity", 
www.nobelchannel.com/learningstudio/introduction, no pub date. 



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Page 5 



Copies of these articles were provided to applicant (PTO- 
892) accompanying the Final Rejection mailed 10/20/05. 

(9) Grounds of Rejection 

The following ground (s) of rejection are applicable to the 
appealed claims: 

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 516-543 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 IIA element and b) a rare-earth element or Group IIIB 
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 



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is most nearly connected, to make the invention commensurate in 
scope with these claims. 

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 IIIB element. The art of high temperature (above 30/K) 
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. 1 Claims broad enough to 
cover a large number of compositions that do not exhibit the 
desired properties fail to satisfy the requirements of 35 U.S.C. 
112. 2 Merely reciting a desired result does not overcome this 
failure. 3 In particular, the question arises: Will any layered 
perovskite material exhibit superconductivity? 

It should be noted that at the time the invention was made, 
the theoretical mechanism of superconductivity in these 

1 See In re Fisher , 166 USPQ 18, 24; and In re Angstadt and 
Grif fen , 190 USPQ 214, 218. See also, In re Colianni , 195 USPQ 
150, 153, 154 (CCPA 1977) (J. Rich) . 

2 See In re Cook , 169 USPQ 298, 302; and Cosden Oil v. 
American Hoechst , 214 USPQ 244, 262. 

3 See In re Corkill , 226 USPQ 105, 1009. 



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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". 4 

Upon careful consideration of the evidence as a whole, 
including the specification teachings and examples, and 
applicants 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 IIIB element (as opposed to 
only compositions comprising Ba x La5-xCu 5 O y . 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 IIIB element result in 
superconductive compounds which may in turn be utilized in the 
instantly claimed apparatus. 



4 See Brenner v. Manson , 383 US 519, 148 USPQ 689. 



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Page 8 



(10) Response to Argument 

Appellant's remarks have been carefully considered. The 
following remarks are believed to address each of the issues 
raised by Appellant. 

Appellants' 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 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. 

Appellants 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 0 is oxygen", and list several species 
such as "La2- x Ba x Cu04- y " which they indicate are found in the 
present disclosure. 



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Art Unit: 1796 

Notwithstanding that argument, it still does not follow 
that the invention is fully enabled for the scope presently 
claimed. The claims include formulae 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 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. 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. 

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 



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application which claimed a fermentative method using 
microorganisms belonging to a species. Appellants 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) . 

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 



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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 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 



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temperature (T c ) to be "in excess of 26/K" or "greater 
than 26/K". 

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 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. " . 

The appellants 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 



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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. 5 



5 See In re Lindner , 173 USPQ 356, 358 (CCPA 1972) . 



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Art Unit: 1796 

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. 

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 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. 

The applicants quote a statement from part of the previous 
Office Action and assert that the Examiner does not support this 
statement with any case law citations. That assertion is 



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Art Unit: 1796 

incorrect. Seven decisions have been cited as providing the 
legal basis for this determination of non-enablement . 

The appellants 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 appellants assert that (b) y the examiner's statement 
that these (statements in the affidavits) are conlusionary (sic) 
the Examiner appears to be placing himself up as an expert in 
the field of superconductivity and 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 appellants argue that the Examiner has provided no 
substantial evidence to support this assertion (of non-enabling 

6 See footnotes 1-4 in the April 15, 1996 Office Action, 
paper no. 54. See also, the corresponding sections of this 
Office Action. 



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Art Unit: 1796 

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 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 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 . 

The appellants 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 



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Art Unit: 1796 

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

The applicants point to Copper Oxide Superconductors= by 
Charles P. Poole, 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. 



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Art Unit: 1796 

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 . . .= 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 Meuller article was 

published. 

Appellants 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 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 



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Art Unit: 1796 

(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 26K, but the affidavits do not establish the existence of 
that knowledge on the filing date of the present application. 

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 1971), made clear that if the practice of a method 



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Page 2 0 



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) . 

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. 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 withdrawn 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 provided no evidence to support the 
statement x 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) . 



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Listed in Section (8) of this Answer 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 
reference states: 



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At pages 5-6, the reference states: 



Page 22 



At page 7, the reference 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. 



In a published article entitled "Exploring 
Superconductivity" published at 

( http : //www . nobel channel . com/ learnings tudio/ 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 



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Art Unit: 1796 

temperatures. When Bednorz was asked how high- 
temperature s up e r c o n du c 1 1 v i t y works, he replied, "If I 
could tell you, many of the theorists working on the 
problem would be very surprised." 

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. 

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". 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. 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 



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Art Unit: 1796 

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. 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. 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 
committed to achieve this dominance be claims which 
are insufficiently supported and hence, not in 



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Art Unit: 1796 

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... 

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. 
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 IIIB element (pages 5-8 of Rejection mailed 2/28/04) . 
The fact that other subsequently discovered superconductive 
systems (such as BSCCO) 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 



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Art Unit: 1796 

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. 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. In re Wright, 

999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). 

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 



Application/Control Number: 08/479,810 Page 27 

Art Unit: 1796 

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. 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 IIIB element (pages 5-8 of 
Rejection mailed 2/28/04) . 

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 enabled". The 
examiner respectfully disagrees. A careful review of the 
article discloses "an oxide compound of La and Cu with Barium 



Application/Control Number: 08/479,810 Page 28 

Art Unit: 1796 

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) . 

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

In view of the foregoing, the above claims have failed to 
patentably distinguish over the applied art. 

(11) Related Proceeding (s) Appendix 

No decision rendered by a court or the Board is identified 
by the examiner in the Related Appeals and Interferences section 
of this examiner's answer. 

For the above reasons, it is believed that the rejections 
should be sustained. 



Application/Control Number: 08/479,810 
Art Unit: 1796 



Page 2 9 



Respectfully submitted, 
/Mark Kopec/ 

Primary Examiner TC 1700 

Conferees : 
/Harold Y Pyon/ 

Supervisory Patent Examiner, Art Unit 1796 
/Gregory L Mills/ 

Supervisory Patent Examiner, Art Unit 1700