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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: October 20, 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 



REPLY TO EXAMINER'S ANSWER 



Dated 08/20/2008 



1 



ARGUMENT 



1 

Initial Comments 

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. 



2 



2 

Claim or Priority Under 35 U.S.C. 119 

In the Brief Applicants request the claim of priority under 35 U.S.C. 119 in paper 
submitted 04/27/1998 be granted. The Examiner denied Applicants' claim of 
priority. The Examiner did not respond to Applicants' arguments in support 
thereof in Applicants' responses of 08/02/1999, 03/01/2004, other responses and 
in the Brief. In the alternative in the Brief Applicants requested entry of a 
statement in the record that this issue does not have to be decided to resolve the 
issues in this appeal and Applicants requested the Examiner to withdraw the 
denial of priority leaving it as an issue not decided on. In paragraph 6 of page 4 
of the Examiner's Answer the Examiner states: 

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 
rejection. 

This is not a statement that the Examiner's denial of the claim of priority under 35 
U.S,C. 1 19 is an issued that does not have to be decided to resolve this appeal 
and thus the denial of priority is withdrawn and left as an issue not decided on. 
Applicants request the Board to enter into the record that since the claim of 
priority is not needed to resolve the issues of this appeal, the denial of the claim 
of priority is withdrawn and left as an issue not decided on. 



3 



3 
A 

Rejection For Lack of Enablement 
Means Plus Function Claims 

As stated in the Brief Volume 1 in Claims 438, 440 and 536 the "means for 
conducting a superconductive current" is in means plus function form. The 
Examiner has not rebutted this. 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 
directed to specific embodiments recited in Applicants Specification. As stated 
in the Brief, in the Final Action the Examiner states (and restates in the last 
paragraph of page 5 of the Examiner's Answer) these claims are 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 cannot 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. In the Examiner's 
Answer the Examiner has not commented on this nor rebutted this. 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. In view 
thereof Applicants request the Board to reverse the Examiner rejection of claims 
438, 440 and 536 as not being enabled for the reasons given in In re Donaldson 
29 USPQ2d 1845(1994). 



4 



3 
B 

Rejection For Lack of Enablement 



The Examiner's Answer is essentially verbatim copied from the Office Action 
dated 07/28/2004 and the Final Action. The Examiner's Answer from page 5, 
line 12 to page 20, line 6 is essentially copied from the Office Action of 
07/28/2004. The Examiner's Answer from page 20, line 7 to page 29, line 1 1 , is 
essentially copied from the Final Action. The Examiner has made no attempt to 
respond to the Argument presented by Applicants in the Brief. For this reason 
the Examiner's statement in the last two lines of the first page of the Examiner's 
Answer "[t]his is in response to the appeal brief filed 05/15/08 appealing from the 
Office action mailed 10/20/05" is essentially inaccurate. At page 7, lines 15-16 
the Answer states "as stated in the Final Office Action." Since the Examiner 
copied this from the Office Action dated 07/28/2004, the Examiner here is not 
referring to the Final Action which is appealed. At page 8, lines 5, the Examiner 
refer to "Appellants' argument". In copying this language from the Office Action 
of 07/28/2004 the Examiner changed "remark" to "argument." At page 8, lines 9, 
the Examiner refer to "arguments by the applicants." In copying this language 
from the Office Action of 07/28/2004 the Examiner changed "remarks" to 
arguments. As noted above the Examiner's Answer has made no attempt to 
respond to the Argument presented by Applicants in the Brief. Thus Applicants 
will present here a summary of the argument presented in the Brief. 

In the sentence bridging pages 11 to 1 2 of the Examiner's Answer the 
Examiner states "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". As noted in the 
Brief Applicant respectfully disagrees with the Examiner. All of the claims 
(except 543) require T c to be greater that of equal to 26°K. 



5 



At page 12 of the Examiner's Answer, the first sentence of the last 
paragraph states "[t]he Applicants also have submitted three affidavits attesting 
to the applicants' status as the discoverers of materials that superconduct > 
26°K." At page 15 of the Examiner's Answer, lines 14-15 states "3 affiants." As 
stated in the Brief 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 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. In the Answer the Examiner has not responded to these 
affidavits. In addition subsequent to the Office Action of 07/28/2004 Applicants 
submitted the Newns Affidavit (Brief Attachment AP) and declaration of co- 
inventor Georg Bednorz (Brief Attachment AQ). In the Answer the Examiner 
has not responded to the Newns Affidavit or the Bednorz declaration. The 
Examiner has not rebutted this evidence (including the other evidence submitted 
by Applicants) and thus has not made a prima facie case of lack of enablement. 

The Board of Appeals has stated in Issidorides et al. v. Ley at al. 4 
U.S.P.Q.2D (BNA) 1854 (1985) that is it: 

has steadfastly followed the general rule that any party 
making the assertion that a U.S. patent specification or claims 
fails, for one reason or another, to comply with § 1 12 bears the 
burden of persuasion in showing said lack of compliance. See 
In re Morehouse, 545 F.2d 162, 192 USPQ 29 (CCPA 1976); 
In re Ghiron, 58 CCPA 1207, 442 F.2d 985, 169 USPQ 723 
(1971); In re Marzocchi, 58 CCPA 1069, 439 F.2d 220, 169 
USPQ 387 (1971); In re Cook, 58 CCPA 1049, 439 F.2d 730, 



6 



169 USPQ 298 (1971); In re Moore, 58 CCPA 1043, 439 F.2d 
1232, 169 USPQ 236 (1971). 

The Examiner bears the burden of persuasion in showing lack of 
compliance with the enablement requirement of 35 U.S.C. 1 1 2, first paragraph. 

When a rejection is made for lack of enablement it is incumbent on the 
Examiner to advance acceptable reasoning or evidence which is inconsistent 
with enablement. That is, it is incumbent on the examiner to first establish a 
prima facie case of non-enablement. In re Armbruster, 512 F.2d 676, 185 USPQ 
152 (CCPA 1975); In re Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971). 

As stated in the brief in In re Armbruster the CCPA states: 

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 § 112 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. In re Armbruster. 512 F.2d 676. 677 (CCPA 1975) 
185U.S.P.Q. (BNA)152 

The Examiner has not made out a prima facie case of lack of enablement of 
the claims rejected under 35 USC 1 1 2, first paragraph, for lack of enablement, 
because the Examiner has given no "reason to doubt the objective truth of the 
statements contained [in applicants' specification] which must be relied on for 
enabling support." Notwithstanding, Applicants have submitted extensive 
evidence of enablement. 



7 



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 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 as 
shown by Applicants actually supports Applicants' position that their rejected 
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 T c 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 T c 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 190 USPQ 219 



8 



(CCPA 1976), Amgen v. Chugai Pharmaceutical Co. 18 USPQ2d 1016 (Fed. 
Cir.) and In re Wands 8 USPQ2d 1400 (CAFC 1988). Applicants' claims do not 
include such materials. Applicant's claims include no inoperable species. 
Applicants have provided extensive evidence in support of their view that their 
claims are enabled: The Examiner has rebutted non of this evidence. 

For example the following evidence was submitted: 

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; 

3. Poole 1 988 (Brief Attachment AW) 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 (See the 
Pool 1988 Enablement Statement of Brief Volume 3); 

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 (See the Rao Enablement Statement of Brief 
Volume 3, page 9); 

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 (See the DST 
Affidavits Brief Attachments AM, AN and AO); 



9 



6. Poole 1995 (Brief Attachment W) which states that the high T c 
materials are layered perovskites as Applicants states they were 
in their initial publication for which they received the 1987 Nobel 
Prize (See the Pool 1995 Enablement Statement of Brief Volume 
3, page 7); and 

7. Poole 1996 (Brief Attachment AG) which shows that the physical 
properties of the high T c superconductors are consistent with the 
description in Applicants' specification. (See the Pool 1996 
Enablement Statement of Brief Volume 3, page 7.) 

In addition Applicants have cited the Examiner's First through Fourth 
Enablement Statements (See Brief Volume 3, pages 2- 6) and the Schuller 
Enablement Statement (See Brief Volume 3, pages 8-9.) 

Many of the species in items 4 and 5 above, the Rao Article and the 
Handbook of Chemistry and Physics, respectively, (and in other submitted 
evidence) are not specifically recited in Applicants' specification, but they come 
within the genus of many 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 (supra) and In re Wards (supra) it is the 
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 



10 



obvious over the Asahi Shinbum article under 35 USC 1 02 and 1 03. 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. See the 
ExaminersVs Second Enablement Statement of Brief Volume 3, page 3. 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' earliest 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 1 03 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. See the 
Examiner's Third Enablement Statement in Brief Volume 3, page 4. 

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." See the Examiner's First Enablement Statement in Brief Volume 



11 



3, page 2. 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 
full scope. When species are determinable without undue experimentation, the 
art is a predictable art. Even though a high T c 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 
the CCPA recognized that all chemical reactions are not unpredictable. 
Applicants' evidence shows that the chemistry involved in formation of high T c 
materials does not have to be understood to fabricate them which is one reason 
for why species are readily determinable. See for example the Poole 1988 
Enablement Statement in Brief Volume 3, page 6. If the chemistry does not have 
to be understood to fabricate species, it is improper to refer to the art of high T c 
super-conductivity as unpredictable. Applicants' claims are directed to an 
apparatus, device, structure, etc. using the high T c material and not to a 
composition of matter. 

Applicants discovered that ceramic materials are superconductors. Their work 
lead and leads others to look for other species. 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." (166 USPQ 18, 24) (The CAFC referred to this statement as 
dictum in Plant Genetic Sys. v. DeKalb Genetics Corp., 315 F.3d 1335, 1340 
(Fed. Cir. 2003), 65 U.S.P.Q.2D (BNA) 1452.) 



12 



As stated in the Brief the claimed invention considered by the CCPA in In 

re Cook was directed to a four-member zoom lenses involving a complex set of 

design parameters. The CCPA in In re Cook 169 USPQ 298, 300 states: 

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 the patent application's teaching it would take a person 
of skill in the art a long time to design other embodiments within the scope of the 
claims that were not 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 not enabled 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" 



13 



referred to in the Affidavit of Newns (Brief Attachment AP). In the present 
application by analogy once a particular composition having a high T c is 
conceived 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. Also, none of 
Applicants claims include inoperative species within their scope. 



In re Cook some claims were found not enabled. This is the reason given 
by the court: 

However, appellants' arguments do not reach the heart of the 
board's second rationale, which, as we understand it, is that 
appellants, having been challenged to do so by the examiner, failed 
to demonstrate that the ranges of parameters and parametric 
relationships recited in the claims reasonably bound the area within 
which satisfactory zoom lenses could be produced by ordinary 
design skill. The examiner in effect, and reasonably in our 
estimation, challenged appellants to prove that there were 
embodiments to be found, not only near the six specifically 
disclosed examples, but at various points throughout the broader 
claimed ranges, which would be operative. Appellants asserted that 
they had made "calculations which resulted in the definition of the 
ranges set forth in the specification," but they never produced those 
calculations to substantiate the truthfulness of the teaching in their 
specification which the examiner challenged. Section 112 requires 
not that the specifications merely say how to use the claimed 
invention, but that such teaching be true, i.e., in fact enabling. 
Appellants having failed to establish the truthfulness of their 
assertions about the validity of their ranges when reasonably 
challenged to do so by the examiner. 
In re Cook, 58 C.C.P.A. 1049, 1058 (C.C.P.A. 1971) 



14 



Following In re Cook, to the extent that the Applicants can be properly viewed as 
having been challenged by the Examiner's reasons for rejection to demonstrate 
that the limitation recited in the claims reasonably bound the area within which 
satisfactory high T c devices, apparatus, structures etc could be produced by 
ordinary design skill, Applicants have provided extensive documentary evidence 
of many species that come within the scope of Applicants' claims. Many of these 
species were made by persons other than Applicants. But, as show by 
Applicants' extensive documentary evidence and affidavits (in particular the DST 
Affidavits) those other species were made following Applicant's teaching. The 
Examiner has not rebutted this. Thus Applicants have shown that their claims 
are enabled. The Examiner in In re Cook requested confirmation that examples 
within the scope of the In re Cook claims other than those recited in the 
application could be found. The inventor in In re Cook did not provide the 
requested confirmation. In the present application under appeal to the extent 
that the Examiner can be viewed as having made a similar request for 
confirmation that examples within the scope of Applicants' claims could be found 
other than the specific examples provided in Applicant's specification, Applicants 
have provide extensive evidence that other species were found following 
Applicants' teaching. 

In In re Cook the CCPA found claims not enabled saying: 

Appellants having failed to establish the truthfulness of their 
assertions about the validity of their ranges when reasonably 
challenged to do so by the examiner, we hold that the Patent 
Office properly rejected the appealed claims. The decision of the 
board is affirmed. In re Cook, 58 C.C.P.A. 1049, 1058 (C.C.P.A. 
1971)169 USPQ 298 



Applicants have established the truthfulness of their assertion by abundant 
unrebutted factual evidence. For these reasons the Examiner's rejection for lack 
of enablement should be reversed. 



15 



The Examiner has cited the Board's precedential decision Ex parte 

Jackson 217 U.S.P.Q. 804, 806 (1982) which is directed to a biotechnology 

invention in which the applicants discovered three bacteria strains which 

produced a new antibiotic. The appealed claims were directed to a process for 

producing the antibiotic by a new species, claimed generically by a created 

species name, having the ability to produce the antibiotic in a certain media. The 

Board in the decision states that the issue is: 

whether a verbal description of a new species would 
enable one of ordinary skill in the relevant art to obtain 
strains of that species over and above the specific strains 
made available through deposit in one of the recognized 
culture depositories. 217 U.S.P.Q. 804, 806 (1982) 



relates to the amount of experimentation required to find 
additional strains over and above the deposited cultures, as 
distinguished from the presumably routine experimentation 
involved in determining whether a given strain once isolated 
produces the desired antibiotic. 217 U.S.P.Q. 804, 807 (1982) 

The policy reasons for requiring deposit in biotechnology inventions is that 
inventors " because of the particular area of technology involved, cannot 
sufficiently disclose by written word how to obtain the microorganism starting 
material from nature." 217 U.S.P.Q. 804, 807 (1982). 

In Ex parte Jackson the Board held "Classification by [the inventor] of the 
three strains under consideration as variant strains of a new species adds 
nothing material to the disclosure. As recognized in essentially all microbiology 
textbooks, bacterial classification is to a very great extent arbitrary. " 217 
U.S.P.Q. 804, 808 (1982). 

As stated in the Brief the Board further stated in Ex parte Jackson: 
the problems of enablement of processes carried out by microorganisms 
were uniquely different from those involved in 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 inapposite to this case. 



16 



The experimentation involved in the ordinary chemical case, including the 
two cited directly above, usually arises in testing to establish whether a 
particular species within the generic claim language will be operable in the 
claimed process. As already indicated above, cases of the type before us 
are distinguished by the fact that the experimentation is associated with 
obtaining the species from nature before it can be tested.... [T]he degree 
of experimentation involved in locating new microorganisms apart from 
deposited cultures is undue in light of the enablement requirement of 35 
U.S.C. 112. 217 U.S.P.Q. 804, 808 (1982). 

Thus the Board quoting In re Argoudelis, 168 U.S.P.Q. 99 (1970) stated that in 

the field of the claimed invention in Ex parte Jackson a claimed genus created by 

the patent applicant was not enabled where a person of ordinary skill in the art 

did not know how to make other species that came with in the scope of the claim 

but could only find them in nature by "an experimental screening program 

similar to the screening program followed in discovering the microorganisms in 

the first instance." 21 7 U.S.P.Q. 804, 808 (1 982). This does not satisfy the how 

to make requirement of 35 U.S.C. 112, first paragraph, since in the 

microorganism invention, in finding other species within the scope of the claim 

"the experimentation is associated with obtaining the species from nature before 

it can be tested." 217 U.S.P.Q. 804, 808 (1982). The Board in Ex parte Jackson 

quotes form In re Argoudes 168 USPQ 99, 101 (1970) which states "a unique 

aspect of using microorganisms as starting materials is that a sufficient 

description of how to obtain the microorganism from nature cannot be given. "Ex 

parte Jackson 217 USPQ 804, 807 (1982). There is no teaching on how to make 

these species in the Ex parte Jackson application. The Board in Ex parte 

Jackson 217 U.S.Q. 804, 807 further quotes from In re Argoudes 168 USPQ 99, 

102(1970) stating : 

If the microorganism involved were of very common 
occurrence, it might be found in a relatively short time, but if it 
were not of common occurrence, it might not be found for a 
very long time, if found at all. The microorganism involved 
here, of course, was not known and available to the workers in 
the art since it was newly discovered by appellants. 

In contradistinction, in Applicants' claimed inventions on appeal in the 
present application persons or ordinary skill in the art know how to make species 



17 



that come within the scope of the claims rejected as not enabled. The Poole 
1988 Enablement Statement (See Brief Volume 3, page 6) states that species 
within the scope of Applicants' claims were not difficult to synthesize, that is, 
unlike in the microorganism situation of Ex parte Jackson, they were not difficult 
to find. The Examiner has not rebutted this in the Final Action or in the 
Examiner's Answer. In fact as stated in the Brief and above the Examiner's 
evidence and First to Fourth Enablement Statements support Applicants' position 
that their claims are enabled.. See Brief Volume 3, pages 2-6. 

In particular, the Examiner's statement at page 8 of the Final Action, which 
is repeated in the Examiner's Answer in the sentence bridging page 23 and 24, 
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. (Emphasis in the 
original.) 

This referred to as the Examiners' First Enablement Statement in Brief Volume 3, 
page 2. 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 superconducting systems." This is referred to as 
the Schuller Enablement Statement. See Brief Volume 3, page 8. See the 
Affidavit of Newns submitted 04/12/2006 U 18. The DST AFFIDAVITS (Brief 
Attachments AM, AN and AO) which 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 



18 



Applicant's claims are predictable within the meaning of 35 U.S.C. 112, first 
paragraph, and thus enabled. 

Thus unlike the invention in Ex parte Jackson where there was no 
teaching on how to make examples of microorganisms, other than those explicitly 
described, that came within the scope of the claimed species of microorganism 
rejected as not enabled, in the present invention the Examiner's own evidence 
explicitly stats "[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 superconducting systems." In regards to 
enablement the situation presented by the present invention is substantially 
different than the situation in Ex parte Jackson. In Exparte Jackson a person of 
ordinary skill in the art would have to randomly search for other examples that 
occur in nature without guidance on how to do that search. In contradistinction, 
as stated by the article to Schuller "'enlightened' empirical searches either guided 
by chemical and materials intuition or systematic searches using well-defined 
strategies ... in the oxides gave rise to many superconducting systems." 
Moreover, Schuller states that such "'enlightened' empirical searches either 
guided by chemical and materials intuition or systematic searches using well- 
defined strategies may prove to be fruitful" to find other examples. Thus Schuller 
states that persons or ordinary skill in the art have found and know how to find 
other examples of high T c materials that come with in the scope of Applicants' 
claimed invention by techniques that they know. This was not the case in Ex 
parte Jackson. That is why the rejected claim was not enabled in Ex parte 
Jackson, but is enabled in the present application. This is why such other 
examples are "predicable"within the meaning of the enablement requirement of 
35 U.S.C. 1 12 in the present application.. 

As argued in the Brief in regards to a rejection for insufficient disclosure 
under 35 USC 1 1 2 the CCPA in In re Fisher states that: 



19 



the issue thus presented is whether an inventor who is 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). 

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 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 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, oxides, 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 ceramic superconductors 
that have come to be known as the class of "high T c superconductors" are based 
on Applicants' teaching. 



The Court in In re Fisher clearly states that the later "improvements [of 
others], while unobvious from [a prior patent applicant's] teachings, are still within 



20 



[the prior patent applicant's] contribution, since the improvement was made 
possible by [the prior patent applicant's] work." Thus the Applicants of the 
present invention are entitled to a claim that includes within its scope what is not 
obvious from their teaching. The Examiner's rejections for lack of enablement 
appear to require that all species that come within the scope of Applicants' 
rejected claims be obvious from Applicants' teaching which is directly contrary to 
the holding of In re Fisher. 

It is clear that when the statement of In re Fisher quoted above "while 
unobvious from [a prior patent applicant's] teachings" is juxtaposed against the 
statement later in the paragraph "[i]n 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" that 
"predictability" does not mean self-evident theoretical predictability. A species 
which is self-evidently theoretically predictable from a generic teaching would be 
obvious in view of that teaching and could not be a "patentable invention" in view 
of the prior generic teaching. The Examiner's reasons for rejecting Applicants' 
claims as not being enabled appear to be significantly based on the Examiner's 
statement from the Final Action repeated the sentence bridging page 6 and 7 of 
the Examiner's Answer that "[i]t should be noted that at the time the invention was 
made, the theoretical mechanism of superconductivity in these materials was not 
well understood." This apparent reliance is inconsistent with the holding of In re 
Fisher as noted in detail in the Brief. If according to In re Fisher a latter species 
that is not obvious can come within the scope of an earlier generic claim and be 
enabled by the teaching supporting that generic claim, a well understood 
theoretical mechanism is not necessary to support enablement of the generic 
claim. As argued in the Brief, which the Examiner has not rebutted, the term 
"predictable" as used in In re Fisher means determinable without undue 
experimentation following the teaching supporting the generic claim. The 
Examiner has presented no rebuttal to the argument in the Brief that the Examiner 
has not made out a prima facie case of lack of enablement since the Examiner 



21 



has not shown why a person of ordinary skill in the art cannot determine without 
undue experimentation following Applicants' teaching other species that come 
within the scope of Applicants' claims rejected for lack of enablement. Thus In re 
Fisher supports the enablement of these rejected claims. 

Once Applicants published their discovery for which they received the 
1987 Nobel Prize in Physics, it was obvious to try all materials that could be 
made without undue experimentation according to the general principals of 
ceramic science know at the time of Applicants' earliest filing date following 
Applicants' teaching to determine those species by techniques known at the time 
of Applicants' invention that have a T c greater than or equal to 26°K. More 
specifically it would be obvious to try materials with the specific attributes in each 
of Applicants' claims and listed in the summary of the invention of the Brief. Thus 
in response to the Examiner's inquiry at the bottom of page 6 of the Examiner's 
Answer "In particular, the question arises: Will any layered perovskite material 
exhibit superconductivity?" it is clear that it is obvious to try any of these and there 
is no evidence that a person of skill in the art cannot make and test any of these 
species without undue experimentation. All layered perovskite materials do not 
have to work for Applicants' claims to be enabled." It is Applicants' position that 
the Examiners question is not relevant to the issue of enablement. The correct 
inquiry is can species that come within the scope of Applicants' claims be found 
and tested without undue experimentation. Applicants have presented abundant 
evidence to show that such species can be found and tested without undue 
experimentation. The examiner has not rebutted that evidence. As argued above 
in In re Cooper the Examiner raised implied doubt that the applicant there did not 
respond to. The Examiner has not shown that such doubt exists in the present 
application. The Examiner has not shown that there are any perovskites that 
cannot be made following Applicants' teaching or that any perovskite can be 
determined to have or not have the high T c property without undue 
experimentation. Moreover, it would be obvious to try any of them. Whether a 
particular perovskite has the high T c property may be a nonobvious unexpected 



22 



result, but that does not mean that it is not enabled by Applicants teaching. 
Species that are obvious to try are species that can be made and tested by 
known principals, that is they are enabled, but such enabled species can have 
nonobvious unexpected results. 

Serendipity does not establish nonenablement but is an unexpected result 
establishing nonobvousness. Such a discovery although not obvious is enabled 
by applicants' teaching. 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. 

In Ex parte Jackson it was not know how to make microorganisms and it 
was not obvious where to look for other examples within the described 
microorganism species. In the present application it is obvious to try to make any 
species that can be made according to know principal of ceramic science and it 
is know how to make them and how to test them. 

That a later discovered species has an unexpected result does not render 
a generic claim, within which scope the species comes, not enabled when that 
species is made according to the teaching supporting the generic claim. 
Something that is obvious to try is something that can be made and is thus 
enabled. 

An unexpected result is a consequence of an underlying scientific 
principle. The unexpected result is not made by the inventor so that when 112 
refers to "make and use," it is not referring to the result - here a T c greater than 
of equal to 26 deg K. An inventor cannot make a law of nature. An inventor can 
discover that a species has this property and a use for it. Applicants of the 
present Application have taught how to make and test and thereby find species 
of high T c materials without undue experimentation. 



23 



The Examiner has not made out a prima facie case of lack of enablement 
since the Examiner has given no reason to doubt that persons of ordinary skill in 
the art can make and use species other than those disclosed by Applicants, 
within the meaning of the enablement requirement, 



The CCPA dealt with an issue related to the enablement issue in the 

present Application in In re Bowen in which: 

The invention relates to the removal of agglomerates of 
delusterants and other finely-divided solid powders, referred 
to as "pigment," from polymers by filtration at the optimum 
time. 

In re Bowen, 492 F.2d 859 (C.C.P.A. 1974) 492 F.2d 859; 
1974 CCPA LEXIS 191; 181 U.S.P.Q. (BNA) 48, 49 

In In re Bowen 181 U.S.P.Q. 48, 49 quoting from the appealed decision 
the CCPA states that claims were rejected by the USPTO as not enabled "on the 
grounds that the term 'polymerizable material' is not disclosed in such full, clear, 
concise and exact terms as to enable any person skilled in the art to which it 
pertains to make and use the same (35 U.S.C. 112, paragraph one)." The CCPA 
reversed this rejection pointing out: 



And, on reconsideration, the board, apparently agreeing with appellant's 
observation "that there is nothing of record to indicate that one skilled in 
the art could not use appellant's process in polymerizing any polymer," 
stated that: 

However, neither is there any evidence that polymerizable 
materials other than nylon intermediates will be operable in the 
claimed process. In our opinion, the situation here is readily 
distinguishable from the facts of the Burke, [25 CCPA 795, 93 
F.2d 50, 36 USPQ 64 (1937),] Roberts, [113 USPQ 205 (Pat. Off. 
Bd. App., 1956),] Donahey, [126 USPQ 61 (Pat. Off. Bd. App., 
1959),] and Marzocchi [, 58 CCPA 1069, 439 F.2d 220, 169 
USPQ 367 (1971)] cases cited by the appellant. The properties of 
"polymerizable materials" can vary over a wide range, rendering it 
quite uncertain as to whether or not the claimed process is 
broadly applicable to all such materials. In the absence of such a 



24 



teaching, we must agree with the examiner's rejection in this 
instance. 

in re Bowen, 492 F.2d 659. 660-861 (C.C.P.A. 1974) 
181 U.S.P.Q. (BNA)48, 49 

The CCPA commenting on this states: 

It is clear from the decision of the board that the unpredictability 
which it noted was in the admittedly chemical fact that the 
"properties of 'polymerizable materials' can vary over a wide range," 
but no reasons were given to appellant by the Patent Office for the 
alleged failure - or at least uncertainty - of the class of 
"polymerizable materials" to work in the claimed process to 
controvert the statement in appellant's application that his invention, 
in its broader aspects, is applicable to other polymers. See In re 
Nguyen Dinh-Nguyen, Patent Appeal No. 9134, decided 
concurrently herewith. It is clear that even in cases involving the 
unpredictable world of chemistry such reasons are required. As we 
stated in In re Marzocchi, 58 CCPA at 1073, 439 F.2d at 223-24, 
169 USPQ at 369-70: 

In re Bowen, 492 F.2d 859. 862 (C.C.P.A. 1974) 
181 U.S.P.Q. (BNA)48, 50-51 

In the present Application the Examiner has provided not reason for why 

species that come within the scope of the claims rejected for lack of enablement 

cannot be made and used. In the concurrent decision referred to by the CCPA In 

re Nguyen Dinh-Nguyen, 181 U.S.P.Q. 46 the claimed invention was described by 

the CCPA as follows: 

The application is directed to the improvement of the process of 
exchanging the heavy isotope deuterium for hydrogen in organic 
compounds by the use of deuterium peroxide as a promoter. It is 
stated in the specification that the presence of this promoter 
permits the replacement of hydrogen in a "great many organic 
compounds including compounds of high molecular weight" 
whereas the earlier methods were only effective with compounds 
of low molecular weight. 

In re Dinh-Nguyen, 492 F.2d 856 (CCPA 1974), 181 U.S.P.Q. 
46 



25 



The CCPA states that "The examiner's rejection under 35 USC 1 12 was based 
on the conclusion that the specification failed to 'effectively support the scope' of 
the claims. It was his position that the claims encompassed the use of a broad 
range of organic compounds in the deuteration process, many of which might 
'properly be expected to undergo interfering reactions.'" In re Dinh-Nguyen, 492 
F.2d 856 (CCPA 1974), 181 U.S.P.Q. 46 



The CCPA disagreed stating: 

Accordingly, the touchstone is that which is claimed. Deuteration 
by the general method recited in the preamble of appellants' 
claims is a known process. Although, as acknowledged in 
appellants' specification, the applicability of that process was 
limited to certain classes of organic compounds, the basic 
procedure was a part of the prior art. Appellants' contribution lies 
in extending the effectiveness of the process by the addition of a 
particular promoter. The process may still be characterized as 
"deuterating an organic compound containing hydrogen atoms 
replaceable by deuteration," even though the scope of deuterable 
compounds has been widened. Thus the accompanying 
disclosure in the specification need only be sufficient to enable 
those skilled in the art to achieve deuteration of potentially 
deuterable compounds in the presence of deuterium peroxide. 

Looking to appellants' specification, we find not only a general 
discussion of the procedure to be followed but also three specific 
examples outlining the preparation of the Adams catalyst, the 
alkali catalyst, and the promoter as well as the exchange reaction 
with stearic acid, camphor, and anthracene. All the "deuteratable" 
compounds are of high molecular weight and all are deuterated 
by appellants' improved process. The obvious general 
applicability of the procedure so demonstrated fully satisfies the 
enabling disclosure requirement of 35 USC 1 12. 

In re Dinh-Nguyen, 492 F.2d 856. 858 (CCPA 1974), 181 
U.S.P.Q. 46,47 

Similarly in present Application the basic process to make compositions 
that come within the scope of Applicants' claims is known. The present 
Applicants' contribution is discovering that ceramic materials are high T c 
superconductors. The present Applicants' specification provided a general 
discussion of how to make these materials by known processes and a number of 



26 



specific examples. As stated by the CCPA above "The obvious general 
applicability of the procedure [to make other species that come within the scope 
of Applicants' claims] so demonstrated fully satisfies the enabling disclosure 
requirement of 35 USC 1 12." 



The CCPA also confirms in the passage quoted above that all species that 
come within he scope of Applicants claims do not have to be disclosed in 
advance when the court states: "Thus the accompanying disclosure in the 
specification need only be sufficient to enable those skilled in the art to achieve 
deuteration of potentially deuterable compounds in the presence of deuterium 
peroxide." (Emphasis added.) Correspondingly, the present Applicants' 
"specification need only be sufficient to enable those skilled in the art to achieve 
. . . potentially . . . compounds [having a Tc greater than or equal to 26K ]" for 
their claims to be enabled. It is clear that by using "potentially" those compounds 
can be determined later and do not have to be disclosed in the specification for 
the claims to be enabled. 



Returning to the CCPA decision in In re Bowen the court states: 



In the field of chemistry generally, there may be times when the 
well-known unpredictability of chemical reactions will alone be 
enough to create a reasonable doubt as to the accuracy of a 
particular broad statement put forward as enabling support for a 
claim. This will especially be the case where the statement is, on its 
face, contrary to generally accepted scientific principles. Most often, 
additional factors, such as the teachings in pertinent references, will 
be available to substantiate any doubts that the asserted scope of 
objective enablement is in fact commensurate with the scope of 
protection sought and to support any demands based thereon for 
proof. In any event, 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. 



27 



In re Bowen, 492 F,2d 859, 863 (C.C.P.A. 1974), 492 F.2d 859; 
1 974 CCPA LEXIS 1 91 ; 1 81 U.S.P.Q. (BNA) 51 

The Examiner has referred to no "statement [of the Applicants that] 
is, on its face, contrary to generally accepted scientific principles." 
The Examiner has identified no "references, to substantiate any 
doubts that the asserted scope of objective enablement is in fact 
commensurate with the scope of protection sought" by Applicants. 
Notwithstanding Applicants have submitted extensive evidentiary 
support for the enablement of the rejected claims that has not been 
rebutted by the Examiner. As argued in the Brief the article of 
Schuller provide by the Examiner in support of the Examiner's 
rejection in fact supports Applicants' assertion that their claims are 
enabled. Also as argued in the Brief the internet article submitted 
by the Examiner containing a statement of inventor Georg Bednorz, 
when properly understood ,does not support the Examiner's 
assertion of lack of enablement. 



The CCPA concluded in In re Bowen 

Accordingly, there appears to be no basis for the non-enablement 
rejection on the theory that claims read on undisclosed polymers. 
While the claims literally comprehend numerous polymers in 
addition to the one specifically described in appellant's 
specification, nylon 66, no persuasive reason has been given by 
the Patent Office why the specification does not realistically enable 
one skilled in the art to practice the invention as broadly as it is 
claimed. 

In re Bowen, 492 F.2d 659. 663 (C.C.P.A. 1974), 492 F.2d 859; 
1 974 CCPA LEXIS 1 91 ; 1 81 U.S.P.Q. (BNA) 51 -52 

From this passage it is clear that he CCPA found that in In re Bowen one 
example, nylon 66, was sufficient to enable a claim directed to the genus, a 
"polymer," which includes many species not disclosed in the Bowen specification. 
Thus in a chemical application a single disclosed species enabled a genus 
dominant to many undisclosed species. Correspondingly, in the present 
Application "[wjhile the claims literally comprehend numerous [materials] in 
addition to the [ones] specifically described in [Applicants'] specification no 
persuasive reason has been given by the Patent Office why the specification 
does not realistically enable one skilled in the art to practice the invention as 



28 



broadly as it is claimed.' 



The CCPA in In re Bowen further states. 

Perhaps appellant's specific illustrative disclosure of an embodiment of 
his invention is limited to polymerizable materials "that are in fact fiber- 
forming polymers." However, that is no basis for a lack of enablement 
rejection. While appellant's pre-filtering invention undoubtedly is for the 
stated purpose of removing pigment agglomerates from fiber-forming 
polymers, appellant's statement of utility does not thereby mean that he 
is unable to claim his filtering process more broadly. The first paragraph 
of § 1 1 2 requires only that the specification enable any person skilled in 
the art to which the invention pertains to make and use the invention. 
There has been no contention by the Patent Office that any person 
skilled in the art, if he wanted to filter a polymer which was not fiber- 
forming, would have any trouble doing so. 

In re Bowen, 492 F.2d 859, 864 (CCPA 1974), 492 F.2d 859; 1974 
CCPA LEXIS 191; 181 U.S.P.Q. (BNA) 52 

Following this rational, in the present Application, if it is true as the 
Examiner states that Applicants' specific embodiments are directed to flowing a 
superconducting current in "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'" (having a T c greater than or equal to 
26 K) (See bottom of page 5 of the Examiner's answer.) this "is no basis for a 
lack of enablement rejection." Following the CCPA "[t]he first paragraph of § 
112 requires only that the specification enable any person skilled in the art to 
which the invention pertains to make and use the invention. There has been no 
contention by the Patent Office that any person skilled in the art, if he wanted to 
[make other species that come with the scope of Applicants' rejected claims] 
would have any trouble doing so." Thus the Examiner has not made a prima 
facie case of lack of enablement of the rejected claims. 



The Examiner states at page 4 of the Final Office Action and at the bottom 
of page 5 of the Examiner's Answer that the claims rejected for lack of enable 
enablement have been rejected: 



29 



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. 

In this statement the Examiner is not giving a reason for why a person or 
ordinary skill in the art cannot make species that come within the scope of the 
rejected claims. This comment sounds more like the Examiner is of the view 
that Applicants are claiming their invention too broadly. Such a comment is at 
times interpreted be a reason for rejection under 35 U.S.C. 112, second 
paragraph. 



In In re Fuetterer the CCPA considered a rejection for "undue breath" 
under 35 U.S.C. 112, second paragraph. The CCCP's rational for reversing the 
rejection may be applied the present rejection for lack of enablement. The court 



The rejection of the claims for "undue breadth" places particular 
emphasis on (1) an alleged "undue burden upon the public to 
determine what salts are suitable for obtaining the desired results" 
(emphasis ours), and (2) an alleged "undue [amount of] 
experimentation" required of those skilled in the art to determine 
those salts possessing the "function asserted" by the instant claims. 
The undue breadth rejection phase of the instant case appears in 
the following posture. Appellant has described his invention as 
comprehending the use therein of any inorganic salt capable of 
performing a specific function in a specific combination and he has 
disclosed specifically four such salts which are capable of 
performing this function. The examiner and the board, believing that 
not all inorganic salts are capable of performing this function and 
that one skilled in the art would not know offhand which inorganic 
salts are capable of so functioning, have rejected the claims as 
"unduly broad." 

It is clear that the instant claims do not comprehend a class of 
inorganic salts of any greater breadth than is comprehended by the 
invention description. n12 It is equally clear from this description 
and appellant's brief that, in the words of the second paragraph of 



30 



section 112, "applicant regards as his invention" the combination 
with his other tread ingredients of any inorganic salt capable of 
"maintaining the carbohydrate, the protein, or mixture thereof, in 
colloidal suspension * * *." It is exactly this combination which 
appellant has particularly pointed out and distinctly claimed in 
compliance with the second paragraph of section 112. If, therefore, 
as the examiner alleges, many an "inorganic salt * * * would not be 
operative for appellant's purpose," this criticism bears only on the 
sufficiency of the invention description. But its adequacy under the 
first paragraph of section 112 has not been questioned. 

In re FueUerer. SO C.C.P.A. 1453. 1462 (C.C.P.A. 1963) 
138 U.S.P.Q. (BNA) 217, 222-223. 



The CCPA further states: 

We find the arguments of the board and the examiner relating to 
experimentation necessary to determine the suitability of 
undisclosed salts to operate in appellant's claimed combination 
beside the point. Appellant's invention is the combination claimed 
and not the discovery that certain inorganic salts have colloid 
suspending properties. We see nothing in patent law which requires 
appellant to discover which of all those salts have such properties 
and which will function properly in his combination. The invention 
description clearly indicates that any inorganic salt which has such 
properties is usable in his combination. If others in the future 
discover what inorganic salts additional to those enumerated do 
have such properties, it is clear appellant will have no control over 
them per se, and equally clear his claims should not be so 
restricted that they can be avoided merely by using some inorganic 
salt not named by appellant in his disclosure. The only "undue 
burden" which is apparent to us in the instant case is that 
which the Patent Office has attempted to place on the 
appellant . The Patent Office would require him to do research on 
the "literally thousands" of inorganic salts and determine which of 
these are suitable for incorporation into his claimed combination, 
apparently forgetting that he has not invented, and is not claiming, 
colloid suspending agents but tire tread stock composed of a 
combination of rubber and other ingredients. 

We are not persuaded that our conclusion on this point is wrong by 
decisions of this and other courts relating to the sufficiency of 
invention disclosures in cases wherein the applicant is claiming 
chemical compounds per se. 
(Emphasis added.) 



31 



In re Fuetferer. 50 C.C.P.A. 1453. 1462 (C.C.P.A. 1963) 
138 U.S.P.Q. (BNA)217 

In rejecting Applicants' claims as not enabled the Examiner is subjecting 
Applicants to "undue burden" referred to by the CCPA in the passage above. The 
Examiner "would require [Applicants] to do research on the 'literally thousands' of 
[compositions made according to Applicants' teaching] and determine which of 
these are suitable for incorporation into his claimed combination [i.e., an 
apparatus, device, structure etc.], apparently forgetting that [Applicants have] not 
invented, and is not claiming, [a composition or matter] but [an apparatus, 
device, structure etc.] composed of a combination of [a material having a T c 
greater than or equal to 26K] and other [elements, e.g., a source of current, 
current flowing , etc.]" The Board has made a similar statement in Ex parte 
Jackson. 

As stated by Applicants at page 91 of Brief Volume 1 the Board in Ex 
parte Jackson states at 217 USPQ 804, 808 "[t]he problem of enablement of 
processes carried out by microorganisms were uniquely different from the field of 
chemistry generally." 



As stated by Applicants at page 91 of this 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 Board here states that enablement is applied relative to the field or 
the claimed invention. Applicants' are not claiming a composition of matter but a 
device, apparatus, structure, etc. incorporating a material with a Tc greater than 
or equal to 26 K as an element. A claim to a chemical composition includes 



32 



within its scope all uses of that composition. Applicants' claims are narrower in 
scope being limited to device, apparatus, structure, etc. wherein the material 
element of the claim must satisfy the limitations of the claim as a whole. 



The CCPA in In re Goffe, citing In re Fuetterer states in reversing a 

rejection for lack or enablement states: 

For all practical purposes, the board would limit appellant to 
claims involving the specific materials disclosed in the examples, 
so that a competitor seeking to avoid infringing the claims would 
merely have to follow the disclosure in the subsequently-issued 
patent to find a substitute. However, to provide effective 
incentives, claims must adequately protect inventors. To demand 
that the first to disclose shall limit his claims to what he has found 
will work or to materials which meet the guidelines specified for 
"preferred" materials in a process such as the one herein involved 
would not serve the constitutional purpose of promoting progress 
in the useful arts. See In re Fuetterer, 50 CCPA 1453, 1462, 319 
F.2d 259, 265, 138 USPQ 217, 223 (1963). 

In re Goffe. 542 F.2d 564, 567 (CCPA 1976) 
191 U.S.P.Q. (BNA)429 

Following In re Goffe Applicants were the first to discover materials that 
are superconductors having a T c greater than or equal to 26 K. They were 
awarded the 1987 Nobel Prize for this work. "To demand that the [they as the] 
first to disclose [high T c superconductors] shall limit [their] claims to what [they 
have] found will work or to materials which meet the guidelines specified for 
"preferred" materials in [an apparatus, device, structure, etc.] such as the one 
herein involved would not serve the constitutional purpose of promoting progress 
in the useful arts." As stated the Examiner has not made out a prima facie case 
of lack of enablement for the claims rejected as not enabled. Applicants 
respectfully request the Board to reverse these rejections since not to do so 
"would not serve the constitutional purpose of promoting progress in the useful 



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4 

MISCELANEOUS 

The Appendix to this Reply lists typographical errors in the Brief. The corrected 
text is listed with deletions in bold between bold double brackets, i.e, [[text]] , 
and additions in bold underlined , i.e., . text. 



34 



5 

CONCLUSION 

Applicant requests the Board to reverse the rejection of claims'! -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, 1 41 -1 43, 1 46-1 49, 
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 as not enabled under 35 U.S.C. 112, 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 



35 



APPENDIX TO REPLY 



Correction to 
Typographical Errors in the Brief 



In the Brief Volume 1 at page 45, lines 7-9, 
make the following change. 

Thus all chemical reactions are not 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. 

In the Brief Volume 1 at page 50, line 3-4 from the bottom, 
make the following change 

In a precedential decision of the Board of Patent Appeals and Interferences in Ex 
parte Jackson 217 USPQ 804, 806 the Board states... 

In the Brief Volume 1 at page 55 in the last sentence 
make the following change. 

This will leave the record clear that Applicants have not conceded to the 
Examiner's objection to [[a]]Applicantsl claim of priority which will be available to 
Applicants' for decision, if needed, at a future date. 



36 



In the Brief Volume 1 at page 56, lines 14-15, 



make the following change. 



Applicants respectfully disagree with the Examiner that support is not found in 
[[that]] the priority document. 

In the Brief Volume 1 at page 59, lines 7-8, 
make the following change. 

The documents in Brief Attachment AS support [[a]]Applicantsl position that the 
priority document teaches nonstochiometric amounts or oxygen. 

In the Brief Volume 1 at page 71, lines 5-8, 
make the following change. 

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 [[a]] Applicants' rejected claims. [["]] 

In the Brief Volume 1 at page 73, last paragraph, 
make the following change. 

The claims under appeal In re Fisher are directed to increasing the potency of 
substances containing ACTH hormones for injection into human beings. In 



37 



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]] who is 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). 



In the Brief Volume 1 at page 74, lines 5-8, 
make the following change. 

Applicants' documentary, declaration and affidavit evidence has shown that 
examples 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. 



In the Brief Volume 1 at page 75, lines 4-6, 
make the following change. 

Thus later [[discussed]] discovered species do not have to be foreseeable from 
Applicants' teaching to be enabled by Applicants' teaching since they were 
enabled by Applicants' teaching. 



38 



In the Brief Volume 1 at page 75, lines 12-17, 



make the following change- 



According to rr nithe affidavits of Mitzi (Brief Attachment AH), Dinger (Brief 
Attachment AG), Tsuei (Brief Attachment AJ), Shaw (Brief Attachment AK), 
Duncombe (Brief Attachment AL) 4 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. 

In the Brief Volume 1 at page 77, last line, 
make the following change. 

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

In the Brief Volume 1 at page 83, lines 9-12, 
make the following change. 

Dr. Newns states at paragraph 9 "Moreover, that a theoretical computation is a 
[["]]ltheoretical experiments"]]^ is in the conceptual sense not different than a 
physical experiment." 

In the Brief Volume 1 at page 84, lines 4-8 from the bottom, 
make the following change. 

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 

39 



evidence in the record that a person of skill in the art knew [[haw]] how to make 
ACTH with anything but 39 amino acids. 

In the Brief Volume 1 at page 85, lines 14-18, 
make the following change. 

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 the Brief Volume 1 at page 89, lines 1-4, 
make the following change. 

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. 

In the Brief Volume 1 at page 94 
make the following change. 

The Brief at page 94 refers to "Ex parte Chen, an unpublished decision reported 
at 61 USPQ 1025, 1028" this should state "Ex parte Chen, an unpublished 
decision reported at 61 USPQ 2d 1025, 1028 (2000) " 



40 



In the Brief Volume 1 at page 95, lines 8-11 



make the following change. 



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. 

In the Brief Volume 1 at page 100, last 5 lines, 
make the following change. 

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]] Board to [[withdraw]] reverse 
the rejection of Applicants' claims under 35 USC 112, first paragraph, for lack of 
enablement. 



In the Brief Volume 1 at page 109, lines 13-17, 
make the following change. 

Since Applicants' claims are directed to an apparatus [[of]] using compositions, 
Applicants' claims read on only those layered perovskite materials which exhibit 
superconductivity with aT c > 26K and do not read on an apparatus usITellinq 
£[of ]] compositions which are not superconductive. Thus the Examiner's queries 
[[is]] are not relevant to Applicants' claims. 



41 



In the Brief Volume 1 at page 112, last 2 lines. 



make the following change- 



As stated above the Brenner v. Mason case has nothing to do with §112 
enablement. 



In the Brief Volume 1 at page 112, line 4 from the bottom, 
make the following change. 

The Examiner further states on pages 8-9 of the Office Action dated 
07/28/2004 : 



In the Brief Volume 1 at page 117, lines 2-3, 
make the following change- 
As agrued above m il the present specification and priority document (Brief 
Attachment AE) are not limited to this formula. 



In the Brief Volume 3 at page 12, lines 6-8 
make the following change. 

The Examiner has provided no reason to doubt that a person of skill in the art as 
of Applicants earliest priority date can not practice any of Applicants' claims 
rejected as not enabled. 



42 



In the Brief Volume 3 at page 59, lines 15-16, 



make the following change. 



The Examiner has given no specific reasons for rejecting this claim as not 
enabled other than the comments at page 9 of the Office Action dated 
07/28/2004 which is commented on in Brief Volume 1, page 116 and 118. 



In the Brief Volume 3 at page 155, lines 14-15, 
make the following change. 



The Examiner has given no specific reasons for rejecting this claim as not 
enabled other than the comments at page 9 of the Office Action dated 
07/28/2004 which is commented on in Brief Volume 1, page 116 and 118 . 



In the Brief Volume 3 at page 169, lines 18-19, 
make the following change. 

The Examiner has given no specific reasons for rejecting this claim as not 
enabled other than the comments at page 9 of the Office Action dated 
07/28/2004 which is commented on in Brief Volume 1, page 116 and 118 . 



43