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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 



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



Group Art Unit: 1751 
Examiner: M. Kopec 



Date: October 20, 2008 



Docket: YO987-074BZ 



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

Mail Stop: Appeal Brief - Patents 

Commissioner for Patents 

United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1450 



REPLY TO EXAMINER'S ANSWER 



Dated 08/20/2008 



Supplement 1 



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ARGUMENT 



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



Please charge any fee necessary to enter this paper and any previous 
paper to deposit account 09-0468. 

Respectfully submitted, 



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



IBM CORPORATION 
Intellectual Property Law Dept. 
P.O. Box 218 

Yorktown Heights, New York 10598 



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APPENDIX TO REPLY 



Correction to 
Typographical Errors in the Brief 

In the Brief Volume 1 at page 124. lines 6 - 7. 
make the following change. 

THE CAFC DECISION, ENZO BIO CHEM v. CALGENE 
SUPPORTS APPLICANTS 1 POSI[[D]]ON THAT CLAIMS ARE ENABLED 

In the Brief Volume 1 at page 127. lines 3 -4 from the bottom, 
make the following change. 

There is no evidence that anything other than routine experimentation is needed 
to identify species within the scope of Applicants 1 claims as of Applicants' 
earlie[[r]]st filing or priority date. 

In the Brief Volume 1 at page 130. Iines19-2Q. 
make the following change. 

Applicant respectfully disagrees with the Examiner. All of the claims (except 543) 
require T c to be greater that of equal to 26°K. Notwithstanding, species with a 
Tc less thatn 26 K is not evidence of lack of enablement of claims directed 
to Tc graeater than or equal to 26 K. Enablement does not reguire 
Applicant to know in advance what the Tc is, it only rquires that Applicant 
teaches how "to make and use" the claimed invention which applicants 
have done and which the Examiner has not denied. 

In the Brief Volume 1 at page 134. lines 9-11. 



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make the following change, 



The affidavits of Shaw, Dinger, Tsuei, Mitzi and Duncombe (Brief Attachments 
AH, Al, AJ, AK and AL) cites numerous books and articles which provide the 
general teaching of ceramic science [[at the]] prior to Applicants 1 discovery. 



In the Brief Volume 1 at page 134, lines 17*19. 
make the following change. 

Mr. Duncombe's affidavit list some of the compounds prepared using the general 
principles of ceramic science: Yi Ba 2 Cu 3 O x ; Yi Ba 2 Cu 3 O3; Bi 2 .is Sn^Cau 
Cu 2 Oe+8; Ca( 2 . x) Sr x Cu O x and Bi 2 Sr 2 Cu O x . Applicants note that Bi 2 is Sn 99 
Cai 7 Cu? Oft +ft is a BSCCO compound. 

In the Brief Volume 1 at page 136, lines 18 - 19. 
make the following change. 

Examiner's conclusion "that disclosure is not fully enabling for the scope of the 
present claims" has not been supported. 



In the Brief Volume 1 at page 146. lines 3 - 6. 
make the following change. 

As stated in In re Angstadt there is no requirement for Applicants to prove that 
the experimentation to make compositions to practice Applicants' claimed 



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invention is not undue just because some experimentation is needed to select 
compositions that come within the scope of the Applicants claims. 

In the Brief Volume 1 at page 157, lines 3-6 from the bottom, 
make the following change. 

By the Examiner stating that claim 123 was allowed because it showed criticality 
of the formula recited, the Examiner is stating that this is a patentably distinct 
species A because of unexpected results A of the genius of the Ashai Shinbum 
Article. 

In the Brief Volume 1 at page 157, lines 3-8 from the bottom, 
make the following change. 

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



In the Brief Volume 1 at page 169, lines 23 - 26. 
make the following change. 



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As stated in [[the application's]] Applicants' prior responses, the CCPA in In re 
Angstadt has stated that if the experimentation needed to identify compositions 
that do not come with the scope of a claim is not "undue experimentation", then 
the claim is enabled. 

In the Brief Volume 1 at page 169. last line to page 170, line 4. 
make the following change. 

Guidance is needed "with respect to the direction in which the experimentation 
should proceed" (Ex parte Jackson 217 USPQ 804, 807) when more than 
undue experimentation is needed to make such other species. There is no 
evidence in the current application that anything other than [[undue]] routine 
experimentation is needed to determine species that come within the scope of 
Applicants' claims. 

In the Brief Volume 1 at page 173, last 2 lines, 
make the following change. 

Thus Applicants have [[thought]] taught "how to use" their claimed invention 
satisfying this requirement of 35 USC 1 12, first paragraph. 

In the Brief Volume 1 at page 177, lines 6-7, 
make the following change. 

For example, it can be an alkaline earth, but is not limited to an alkaline earth 
element. 



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