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



JOHANNES G. BEDNORZ YOR919870074US5 



877 7590 09/17/2009 I 

IBM CORPORATION, T.J. WATSON RESEARCH CENTER I 

P.O. BOX 218 KOPEC, MARK T 

YORKTOWN HEIGHTS, NY 10598 I 



PAPER NUMBER 



NOTIFICATION DATE | DELIVERY MODE 
09/17/2009 ELECTRONIC 



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. 

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the 
following e-mail address(es): 
iplawy or @ u s . ibm. com 



PTOL-90A (Rev. 04/07) 



UNITED STATES PATENT AND TRADEMARK OFFICE 



BEFORE THE BOARD OF PATENT APPEALS 
AND INTERFERENCES 



Ex parte JOHANNES G. BEDNORZ and CARL A. MUELLER 



Appeal 2009-003320 
Application 08/479,810 
Technology Center 1700 



Decided: September 15, 2009 



Before BRADLEY R. G ARRIS, BEVERLY A. FRANKLIN, and 
LINDA M. GAUDETTE, Administrative Patent Judges. 

GARRIS, Administrative Patent Judge. 



DECISION ON APPEAL 

Appellants appeal under 35 U.S.C. § 134 from the Examiner's 
decision rejecting 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, 



Appeal 2009-003320 
Application 08/479,810 

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. 1 We have jurisdiction under 35 U.S.C. § 6. 

We AFFIRM-IN-P ART . 

Statement of the Case 

Based on a discovery for which they won a Nobel prize, Appellants 
claim a combination, apparatus, device, or structure comprising a material 
exhibiting a superconductive state at a temperature greater than or equal to 
26°K. This material is broadly and variously defined in the rejected claims 



1 For purposes of clarification, we make the following points. (1) The 
claims listed above are the claims we consider to be under rejection and on 
appeal since they are the claims listed by the Examiner in the sole statement 
of rejection presented in the Answer (Ans. para, bridging 5-6). (2) In this 
Opinion, as in the Answer (Ans. 2), references to the multiple dependent 
claims under rejection are limited to those claims which depend from 
rejected parent claims. (3) The record of this appeal includes the Appeal 
Brief filed 15 May 2008 as volumes 1-5 and the attachments thereto, the 
Examiner's Answer mailed 20 August 2008, the Reply Brief filed 20 
October 2008, the Reply Brief Supplement 1 filed 21 October 2008, the 
Reply Brief Supplement 2 filed 28 October 2008, the Reply Brief 
Supplement 3 filed 6 November 2008, and the Transcript of the Oral 
Hearing held 10 June 2009. (4) As presented in the Claims Appendix (App. 
Br., vol. 1), certain claims (see claims 466, 467, 476, 477, 517, 518, 522) 
contain typographical errors in the recitation directed to superconducting 
transition temperature T c . For purposes of this appeal and consistent with 
Appellants' arguments (e.g., see App. Br., vol. 3, pts. 7-8), we interpret these 
claims to require a T c of greater than or equal to 26°K. (5) Appellants 
appear to have withdrawn their request that the Board resolve an issue 
concerning claim of priority (compare Hearing Transcript 3 with App. Br., 
vol. 1, p. 55-65). Regardless, such an issue must be resolved by way of 
petition not appeal. See Manual of Patenting Examining Procedure (MPEP) 
§ 1201 (Rev. 3, August 2005) and MPEP §§ 1002-1003 (Rev. 2, May 2004). 



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Appeal 2009-003320 
Application 08/479,810 

as being, for example, an oxide, a composition, a ceramic characteristic, and 
a means. 

Rejected claims defining the above-described subject matter include 

claims 12, 88, 1 15, 1 17, 374, and 438 which read as follows: 

12. A superconducting combination, comprising a superconductive 
oxide having a transition temperature greater than or equal to 26°K, 

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

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

88. An apparatus comprising: 

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

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

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

115. A device comprising a transition metal oxide having a T c 
greater than or equal to 26°K carrying a superconducting current said 
transition metal oxide is maintained at a temperature less than said T c . 

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

374. A combination, comprised of: 

a material comprising a ceramic characteristic comprising an onset of 
superconductivity at an onset temperature greater than or equal to 26°K, 



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Appeal 2009-003320 
Application 08/479,810 



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

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

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



Many of the rejected claims define Appellants' superconductive 
material more narrowly as comprising (1) a transition metal oxide in 
combination with (2) a rare earth element or a rare earth-like element or a 
group III B element, and/or (3) an alkaline earth element or a group II A 
element. This more narrowly defined subject matter is exemplified by 
claims 163 and 268, which read as follows: 

1 63 . An apparatus comprising: 

a composition comprising copper, oxygen and any element selected from the 
group consisting of a Group II A element, a rare earth element and a Group 
III B element, where said composition is a mixed copper oxide having a 
non- stoichiometric amount of oxygen therein and exhibiting a 
superconducting state at a temperature greater than or equal to 26°K; 

a temperature controller maintaining said composition in said 
superconducting state at a temperature greater than or equal to 26°K; and 



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Appeal 2009-003320 
Application 08/479,810 

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

268. An apparatus comprising : 
a copper oxide comprising a phase therein which exhibits a superconducting 
state at a critical temperature greater than or equal to 26°K; 

a temperature controller for maintaining the temperature of said material 
[sic] at a temperature less than said critical temperature to produce said 
superconducting state in said phase; 

a source for an electrical supercurrent through said copper oxide while it is 
in said superconducting state; 

said copper oxide includes at least one element selected from group 
consisting of a Group II A element, at least one element selected from the 
group consisting of a rare earth element and at least one element selected 
from the group consisting of a Group III B element. 

The sole rejection in this appeal is based on the enablement 

requirement set forth in the first paragraph of 35 U.S.C. § 1 12. The 

statement of this rejection is expressed by the Examiner as follows: 

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. 1 12, 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 



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Appeal 2009-003320 
Application 08/479,810 

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

(Ans. 5-6). 

As support for this rejection, the Examiner relies upon an article 
entitled "A Snapshot View of High-Temperature Superconductivity 2002" 
by Schuller et al. 2 (hereafter Schuller) and an article entitled "Exploring 
Superconductivity" 3 (Ans. 4 and 21-23). The Examiner also relies on 
Appellants' Specification as support for this rejection (see, for example, 
Ans. 9). 

Appellants' basic position is that the Examiner has failed to make a 
prima facie case that the rejected claims are not enabled and in any event 
that Appellants have provided extensive evidence showing persons of 
ordinary skill in this art can determine species within the scope of the 
rejected claims without undue experimentation (see, for example, App. Br., 
vol. 3, p. 13-14 et seq.). We refer to the Appeal Brief attachments for a 
complete listing of this extensive evidence (see App. Br., vols. 4-5). 
Issue 

Have Appellants shown error in the Examiner's conclusion that the 
rejected claims fail to comply with the enablement requirement in the first 
paragraph of 35 U.S.C. § 112? 

2 Schuller et al, A Snapshot View of High-Temperature Superconductivity 
2002, in April 5-8 Workshop on High Temperature Superconductivity 1-50 
(2002). 

3 Exploring Superconductivity, Introduction, 

http://www.nobelchannel.com/learningstudio/introduction. We note that the 
web address for this article may no longer be valid. However, this 
possibility is not a concern in this appeal since Appellants do not challenge 
the availability of the article. 



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Appeal 2009-003320 
Application 08/479,810 

Summary of Decision 
The record of this appeal establishes that Appellants' Specification 
provides enabling support for the rejected claims which define the material 
exhibiting a superconductive state at a temperature greater than or equal to 
26°K as comprising: (1) a transition metal oxide in combination with (2) a 
rare earth element or a rare earth-like element or a group III B element, 
and/or (3) an alkaline earth element or a group II A element. 4 
Findings of Fact 

The Specification : 

The Specification, originally filed 22 May 1987, describes Appellants' 
invention as relating to a new class of superconducting compositions having 
high superconducting transition temperatures and more particularly to 
superconducting compositions including copper and/or other transition 
metals wherein the compositions are characterized by a superconducting 
phase and a layer-like structure (Spec. 1). 

As Background Art (Spec. 1), the Specification discloses that prior art 
superconductors include transition metal compounds and compositions such 
as Nb 3 Ge which exhibits a T c of about 23°K at ambient pressure (Spec. 3). 
Prior art superconductors also include oxides such as the Li-Ti-0 system 
with superconducting onsets as high as 13.7°K (Spec. para, bridging 3-4). 
(We take official notice that Li is an alkali element and that Ti is a transition 



4 Claims 138 and 326/138 are not included in the Examiner's rejection and 
therefore are not on appeal and are not under our jurisdiction. Nevertheless, 
we observe that these claims are not limited to the subject matter described 
as enabled in the Answer (or in this Opinion). Under these circumstances, 
the Examiner's failure to include claims 138 and 326/138 in the § 112, first 
paragraph, rejection before us appears to be an inadvertent oversight. 



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Appeal 2009-003320 
Application 08/479,810 

metal.) According to the Specification, "[tjhese materials have multiple 
crystallographic phases including a spinel structure exhibiting the high T c [, 
and] [ojther metallic oxides, such as the perovskite Ba-Pb-Bi-0 system[,] 
can exhibit superconductivity due to high electron-phonon coupling in a 
mixed valent compound" (id.). 

In the Summary of the Invention section, the Specification 
characterizes Appellants' invention as relating to compositions which can 
carry supercurrents (i.e., electrical currents in a substantially zero-resistance 
state of the composition) at temperatures greater than 26°K (Spec. para, 
bridging 6-7). "In general, the compositions are characterized as mixed 
transition metal oxide systems where the transition metal oxide can exhibit 
multivalent behavior" (id.). These compositions are disclosed as having a 
layer-type crystalline structure, often perovskite-like, and can contain a rare 
earth or rare earth-like element such as a group III B element (e.g., La) (id.). 
Substitutions can be found in the rare earth (or rare earth-like) site and in the 
transition metal sites of the compositions (id.). "For example, the rare earth 
site can also include alkaline earth elements selected from group IIA of the 
periodic table, or a combination of rare earth or rare earth-like elements and 
alkaline earth elements" (id.). (We take official notice that there are 18 rare 
earth and rare earth-like elements and that there are six alkaline earth 
elements.) The Specification further discloses that "[a]n example of a 
superconductive composition having high T c is the composition represented 
by the formula RE-TM-O, where RE is a rare earth or rare earth-like 
element, TM is a non-magnetic transition metal, and O is oxygen" (Spec. 8). 
"If an alkaline earth element (AE) were also present, the composition would 
be represented by the general formula RE-AE-TM-O" (id.). The 



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Appeal 2009-003320 
Application 08/479,810 

Specification teaches that "[t]he methods by which these superconductive 

compositions can be made can use known principles of ceramic fabrication" 

(Spec. para, bridging 8-9). 

In the Description of the Preferred Embodiments section, the 

Specification again discloses that "[t]he superconductive compositions of 

this invention are transition metal oxides generally having a mixed valence 

and a layer-like crystalline structure" (Spec. 1 1). "These compositions can 

also include a rare earth site in the layer-like structure where this site can be 

occupied by rare earth and rare earth-like atoms, and also by alkaline earth 

substitutions" (id.). The Specification additionally discloses: 

An example of a superconductive compound having a 
layer-type structure in accordance with the present invention 
is an oxide of the general composition RE 2 TM0 4 where RE 
stands for the rare earths (lanthanides) or rare earth-like 
elements and TM stands for a transition metal. In these 
compounds the RE portion can be partially substituted by 
one or more members of the alkaline earth group of elements. 
In these particular compounds, the oxygen content is at a 
deficit. 

(Spec. para, bridging 11-12). 

For example, one such compound that meets this 
general description is lanthanum copper oxide La 2 Cu0 4 in 
which the lanthanum - which belongs to the IIIB group of 
elements - is in part substituted by one member of the 
neighboring IIA group of elements, viz. by one of the 
alkaline earth metals (or by a combination of the members of 
the IIA group), e.g., by barium. 

(Spec. 12). The Specification also teaches that "[b]oth La 2 Cu0 4 and 
LaCu0 3 are metallic conductors at high temperatures in the absence of 
barium" and that "the Ba-La-Cu-0 type materials are essentially ceramics, 



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Appeal 2009-003320 
Application 08/479,810 



as are the other compounds of the Re 2 TM0 4 , type, and their manufacture 
generally follows the known principles of ceramic fabrication" (Spec. para, 
bridging 15-16). Finally, in the concluding paragraph, the Specification 
discloses: "Thus, the invention broadly relates to mixed (doped) transition 
metal oxides having a layer-like structure that exhibit superconducting 
behavior at temperatures in excess of 26°K" (Spec. para, bridging 27-28). 
The Examiner's Evidence : 

The Examiner finds that the high temperature superconductor art is 
unpredictable and concludes that Appellants' Specification does not provide 
reasonable detail which would enable persons with ordinary skill in this 
unpredictable art to practice the full scope of the rejected claims without 
undue experimentation (Ans. 5-6). 

As support for the finding of unpredictability in the high temperature 

superconductor art, the Examiner relies on the Schuller article "A Snapshot 

View of High-Temperature Superconductivity 2002", which discloses: 

Thus far, the existence of a totally new superconductor has 
proven impossible to predict from first principles. Therefore, 
their discovery has been based on largely on empirical 
approaches, intuition, and even serendipity. This 
unpredictability is at the root of the excitement that the 
condensed matter community displays at the discovery of a 
new material that is superconducting at high temperature. 

(Schuller 7). 

As further support for this unpredictability, the Examiner relies on the 
article entitled "Exploring Superconductivity". With respect to the high 
temperature superconductor compounds discovered by Appellants, this 
article discloses: 



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Appeal 2009-003320 
Application 08/479,810 

It is worth noting that there is no accepted theory to 
explain the high-temperature behavior of this type of 
compound. The BCS theory , which has proven to be a useful 
tool in understanding lower-temperature materials, does not 
adequately explain how the Cooper pairs in the new 
compounds hold together at such high temperatures. 

("Exploring Superconductivity" 3). 

Unpredictability in this art also is supported by the Examiner's 
uncontested findings that the Specification discloses numerous compounds 
or compositions which fall within the compositional definitions of the 
rejected claims yet fail to exhibit superconductivity at temperatures greater 
than or equal to 26°K (Ans., first full para, at 9, para, bridging 1 1-12). 
Appellants' Evidence : 

In support of their enablement position, Appellants have provided this 
record with extensive factual evidence. This evidence includes affidavits 
under 37 C.F.R. § 1.132 by Timothy Dinger (executed 4 April 2005), by 
Thomas M. Shaw (executed 14 April 2005), and by Chang C. Tsuei 
(executed 5 April 2005) which are collectively referred to by Appellants as 
the DST Affidavits. The Shaw Affidavit (see App. Br., vol. 5, Evidence 
Appendix, Attachment AM) is representative and evidences the findings of 
fact set forth below. 

Persons of ordinary skill in this art, using principles of ceramic 
fabrication known at the time the application was initially filed, can make 
compositions encompassed by Appellants' claims without undue 
experimentation or without requiring ingenuity beyond that expected of a 
person of skill in the art of ceramic materials fabrication (Shaw Affidavit, 
para. 8). 



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Appeal 2009-003320 
Application 08/479,810 

The composition La 2 Cu0 4 disclosed in Appellants' Specification 
(Shaw Affidavit, paras. 16-21) falls within the formula Re 2 TM0 4 disclosed 
in Appellants' Specification (id.), and exhibits superconductivity within 
Appellants' claimed range (i.e., at 39°K) (id.; see also App. Br., vol. 5, 
Attachment AB, Rao article of record). 

The high temperature copper oxide superconductors disclosed by 
Appellants are not difficult to synthesize, and Appellants' disclosed 
characteristics of the superconductors (e.g., layered, perovskite-like, mixed- 
valence) have been confirmed by subsequent work (Shaw Affidavit, paras. 
46-49; see also App. Br., vols. 4-5, Attachments AF, Z, and AG, the Poole 
1988, Poole 1995, and Poole 1996 Pubs, of record). 

Shaw states: 

I have personally made many samples of high Tc 
[sic,T c ] superconductors following the teaching[s] of 
Bednorz and Mueller as found in their patent applications. In 
making these materials it was not necessary to use starting 
materials in stoichiometric proportions to produce a high T c 
superconductor with insignificant secondary phases or multi- 
phase compositions, having a superconducting portion and a 
non- superconducting portion, where the composite was a 
high Tc [sic, T c ] superconductor. Consequently, following 
the teaching[s] of Bednorz and Mueller and principles of 
ceramic science known prior to their discovery, I made, and 
persons of skill in the ceramic arts were able to make, high 
T c superconductors without exerting extreme care in 
preparing the composition. Thus I made and persons of skill 
in the ceramic arts were able to make high T c 
superconductors following the teaching[s] of Bednorz and 
Mueller, without experimentation beyond what was well 
known to a person of ordinary skill in the ceramic arts prior 
to the discovery by Bednorz and Mueller. 



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Appeal 2009-003320 
Application 08/479,810 

(Shaw Affidavit, para. 50). Corresponding statements are made at paragraph 

50 of the Dinger and Tsuei affidavits. 

Principles of Law 

"Although not explicitly stated in section 1 12, to be enabling, the 

specification of a patent [application] must teach those skilled in the art how 

to make and use the full scope of the claimed invention without 'undue 

experimentation.'" In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). 

"Nothing more than objective enablement is required, and therefore it is 

irrelevant whether this teaching is provided through broad terminology or 

illustrative examples." Id. 

When rejecting a claim under the enablement 
requirement of section 112, the PTO bears an initial burden 
of setting forth a reasonable explanation as to why it believes 
that the scope of protection provided by that claim is not 
adequately enabled by the description of the invention 
provided in the specification of the application; this includes, 
of course, providing sufficient reasons for doubting any 
assertions in the specification as to the scope of the 
enablement. If the PTO meets this burden, the burden then 
shifts to the applicant to provide suitable proofs indicating 
that the specification is indeed enabling. 

Id. at 1561-62. In order to carry this burden, the applicant must establish by 
evidence or arguments that, on the application filing date, a person of 
ordinary skill in the art would have believed reasonably that applicants' 
success with a particular species could be extrapolated with a reasonable 
expectation of success to other species. Id. at 1564 ("Wright has failed to 
establish by evidence or arguments that, in February of 1983, a skilled 
scientist would have believed reasonably that Wright's success with a 



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Appeal 2009-003320 
Application 08/479,810 

particular strain of an avian RNA virus could be extrapolated with a 

reasonable expectation of success to other avian RNA viruses"). 

[Ajrguments, focused almost exclusively on the level of skill 
in the art, ignore the essence of the enablement requirement. 
Patent protection is granted in return for an enabling 
disclosure of an invention, not for vague intimations of 
general ideas that may or may not be workable. See Brenner 
v. Manson, 383 U.S. 519, [535-]36, 86 S. Ct. 1033, 1042-43, 
16 L.Ed 2d 69, 148 USPQ 689, 696 (1966) (stating, in 
context of the utility requirement, that "a patent is not a 
hunting license. It is not a reward for the search, but 
compensation for its successful conclusion."). Tossing out 
the mere germ of an idea does not constitute enabling 
disclosure. While every aspect of a generic claim certainly 
need not have been carried out by an inventor, or exemplified 
in the Specification, reasonable detail must be provided in 
order to enable members of the public to understand and 
carry out the invention. 

Genentech, Inc. v. Novo NordiskA/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). 

It is true . . . that a specification need not disclose what 
is well known in the art. . . . However, that general, oft- 
repeated statement is merely a rule of supplementation, not a 
substitute for a basic enabling disclosure. It means that the 
omission of minor details does not cause a specification to 
fail to meet the enablement requirement. However, when 
there is no disclosure of any specific starting material or any 
of the conditions under which a process can be carried out, 
undue experimentation is required; there is a failure to meet 
the enablement requirement that cannot be rectified by 
asserting that all the disclosure related to the process is 
within the skill of the art. It is the specification, not the 
knowledge of one skilled in the art, that must supply the 
novel aspects of an invention in order to constitute adequate 
enablement. 

Id. "Where, as here, the claimed invention is the application of an 



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Appeal 2009-003320 
Application 08/479,810 

unpredictable technology in the early stages of development, an enabling 
description in the specification must provide those skilled in the art with a 
specific and useful teaching." Id. at 1367-68. 

"Enablement is not precluded by the necessity for some 
experimentation such as routine screening. However, experimentation 
needed to practice the invention must not be undue experimentation. 'The 
key word is 'undue' not 'experimentation'". In re Wands, 858 F.2d 731, 
736-37 (Fed. Cir. 1988), quoting In re Angstadt, 537 F.2d 498, 504 (CCPA 
1976). 

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

Id. at 737 (Citations omitted). 

Factors to be considered in determining whether a 
disclosure would require undue experimentation . . . include 
(1) the quantity of experimentation necessary, (2) the amount 
of direction or guidance presented, (3) the presence or 
absence of working examples, (4) the nature of the invention, 
(5) the state of the prior art, (6) the relative skill of those in 
the art, (7) the predictability or unpredictability of the art, 
and (8) the breadth of the claims. 

Id. (Citations omitted). 



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Appeal 2009-003320 
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Analysis 

Subsection I : Claims which define the high temperature superconductive 
material as comprising (1) a transition metal oxide in combination with (2) a 
rare earth element or a rare earth-like element or a group III B element, and 
(3) an alkaline earth element or a group II A element. 

With respect to all appealed claims, Appellants argue that the 
Examiner has failed to establish a prima facie case for lack of enablement 
(see App. Br., vol. 3, pts. 1-8, for example para, bridging 143-144 regarding 
claim 72). 

Appellants' argument is persuasive with regard to the claims under 
consideration identified in the subsection I heading above. This is because 
these claims define the subject matter which the Examiner has identified as 
enabled by Appellants' Specification (Ans. para, bridging 5-6; see also first 
full para, at 7). Therefore, the Examiner not only has failed to establish or 
even assert non-enablement for these claims but has expressly stated that the 
subject matter of the claims is enabled. On the record before us, the 
Examiner's rejection of such claims appears to have been an inadvertent 
oversight. 

Our study of the appealed claims as presented by Appellants in the 
Appeal Brief (i.e., the claims as reproduced in the Claims Appendix of App. 
Br., vol. 1, and as in reproduced in App. Br., vol. 3, pts. 1-8) reflects that the 
following rejected claims define subject matter which the Examiner 
considers to be enabled: claims 72, 134, 268, 290-292, 376, 421, 497, and 
499. These claims also define subject matter which this panel of the Board 
considers to be enabled as explained more fully below. 



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Appeal 2009-003320 
Application 08/479,810 

For these reasons, we will not sustain the Examiner's §112, first 
paragraph, rejection of these claims. 

Subsection II : Claims which define the high temperature superconductor 
material as comprising (1) a transition metal oxide in combination with 
either (2) a rare earth element or a rare earth-like element or a group III B 
element, or (3) an alkaline earth element or a group II A element. 

With respect to all appealed claims, including those defining subject 
matter identified in the subsection II heading above, Appellants argue that 
the Examiner has failed to establish a prima facie case for lack of 
enablement and that, in any event, they have provided extensive evidence 
showing these claims are enabled {see App. Br., vol. 3, pts. 1-8, for example 
para, bridging 67-68 and para, bridging 69-70 regarding claims 28 and 29). 

The Examiner has not explained why this evidence fails to show 
enablement for the specific claims under review (Ans. 8-27). Instead, the 
Examiner characterizes Appellants' evidence as failing to establish that the 
Specification enables the full scope of the rejected claims generally {id.). 
The Examiner explicitly criticizes Appellants' affidavit evidence as 
"conclusory only" (Ans. 15) although no specific reasons are given for 
considering the affidavits to be "conclusory only" with respect to the claims 
discussed in this subsection. 

Our review of the arguments and evidence presented by the Examiner 
and Appellants leads us to conclude that the claim subject matter under 
consideration is enabled by Appellants' Specification. Our reasons follow. 

As noted in our Findings of Fact above, Appellants' Specification 
expressly discloses that their superconductor compositions are mixed 



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Appeal 2009-003320 
Application 08/479,810 

transition metal oxides (Spec. para, bridging 6-7, first para, at 1 1, para, 
bridging 27-28). Moreover, the Specification expressly discloses that these 
mixed transition metal oxides can contain a rare earth or rare earth-like 
element (i.e., a group III B element) (id. at para, bridging 6-7, first para, at 8, 
first para, at 1 1, para, bridging 1 1-12, para, bridging 15-16, para, bridging 
26-27). Significantly, the combination of a transition metal oxide and a 
group III B element in the form of La 2 Cu0 4 is explicitly disclosed (Spec, 
para, bridging 15-16), and this compound possesses a superconductivity T c 
of 39°K (i.e., within Appellants' claimed range) as previously noted in the 
Findings of Fact. 

We recognize that the 39°K superconductivity of La 2 Cu0 4 is not 
disclosed in the Specification. However, it is undisputed in this record that 
the fabrication and superconductivity testing of this compound would have 
been within the skill of an artisan. In addition, the artisan would have 
reasonably expected the compound to possess high temperature 
superconductivity since it is a member of a class of compounds which is 
expressly disclosed in the Specification as possessing this superconductivity 
characteristic. For these reasons, we conclude that Appellants' Specification 
teaches an artisan how to make and use La 2 Cu0 4 as a high temperature 
superconductor without undue experimentation. That is, La 2 Cu0 4 is enabled 
by the Specification as a high temperature superconductor of the type 
required by the claims under review. 

As also noted in the Findings of Fact, the Specification expressly 
discloses modifications of the above-discussed combination of transition 
metal oxides and rare earth or rare earth-like elements wherein elements at 
the rare earth site are substituted with alkaline earth elements selected from 



18 



Appeal 2009-003320 
Application 08/479,810 

group II A (Spec. para, bridging 6-7). When these substitutions are partial, 
the results are high temperature superconductor compositions comprising 
transition metal oxides in combination with rare earth (or rare earth-like) 
elements and alkaline earth (or group II A) elements which the Examiner has 
concluded are enabled. However, the Specification also discloses with 
reasonable detail high temperature superconductor compositions wherein the 
rare earth (or rare earth-like) elements are completely substituted with 
alkaline earth elements. 

Specifically, the Specification teaches that "[t]he rare earth site can 
also include alkaline earth elements selected from group IIA of the periodic 
table, or a combination of rare earth or rare earth-like elements and alkaline 
earth elements" (id.). The first clause of this sentence does not expressly 
state that the rare earth site can include only alkaline earth elements (i.e., 
wherein the rare earth or rare earth-like elements are completely substituted 
with alkaline earth elements). Nevertheless, an artisan would reasonably 
interpret the first clause in this manner since the alternative second clause 
explicitly teaches that the rare earth site can include "a combination of rare 
earth or rare earth-like elements and alkaline earth elements" (id.). That is, 
it would be unreasonable to interpret both of these alternative clauses as 
disclosing only partial substitution embodiments (i.e., wherein the rare earth 
site includes a combination of rare earth or rare earth-like elements and 
alkaline earth elements). 

These circumstances support a determination that Appellants' 
Specification discloses with reasonable detail high temperature 
superconductors of the type defined by the claims under review as mixed 
transition metal oxides comprising (1) transition metal oxides in 



19 



Appeal 2009-003320 
Application 08/479,810 

combination with either (2) rare earth or rare earth-like or group III B 
elements, or (3) alkaline earth or group II A elements. The question to now 
be considered is whether enablement of such superconductors is precluded 
because the Specification disclosure would require undue experimentation in 
order to practice the claimed invention directed to these superconductors. 
Factors to be considered in assessing this question include (1) the quantity of 
experimentation necessary, (2) the amount of direction or guidance 
presented, (3) the presence or absence of working examples, (4) the nature 
of the invention, (5) the state of the prior art, (6) the relative skill of those in 
the art, (7) the predictability or unpredictability of the art, and (8) the breadth 
of the claims. Wands, 858 F.2d at 737. 

Our consideration of these factors leads to a conclusion that the claims 
under review are enabled for the following reasons. 

Factor (1) the quantity of experimentation necessary: 
The quantity of experimentation is limited to transition metal oxides 
in combination with only 1 8 rare earth and rare earth-like elements or in 
combination with only six alkaline earth elements. Further, the record 
before us establishes that the experimentation needed to make and test the 
compositions under consideration is merely routine, and the Examiner does 
not contend otherwise. For these reasons, Factor (1) supports an enablement 
conclusion. 

Factor (2) the amount of direction or guidance presented: 
As explained above, Appellants' Specification provides a reasonable 
amount of direction or guidance in identifying the compositions in question 
as possessing high temperature superconductive characteristics. 
Accordingly, this Factor also supports enablement. 



20 



Appeal 2009-003320 
Application 08/479,810 



Factor (3) the presence or absence of working examples: 
While the working examples of Appellants' Specification are limited 
to mixed transition metal oxides having both rare earth or rare earth-like 
elements and alkaline earth elements, these working examples in 
combination with Appellants' previously noted guidance militate for the 
presumption of enablement and against the Examiner's conclusion of non- 
enablement. 

Factors (4)-(6) the nature of the invention, the state of the prior art, 
and the relative skill of those in the art: 

On this record, there is no dispute that Appellants' claimed invention 
relates to materials exhibiting superconductivity at high temperatures never 
before achieved, that the prior art provided no teaching or suggestion of such 
high temperature superconductors, and that the skill in this art is extremely 
high. Likewise, there is no dispute on this record that publication of 
Appellants' discovery (i.e., that certain mixed transition metal oxides exhibit 
superconductivity at temperatures equal to or greater than 26°K) led within a 
short period of time to the discovery by others in this art of numerous other 
high temperature superconductor materials falling within the scope of the 
claims under review. These circumstances on balance favor a conclusion of 
enablement for the claims under review. 

Factors (7)-(8) the predictability or unpredictability of the art and the 
breadth of the claims: 

For reasons detailed below, the art of high temperature 
superconductivity is generally unpredictable in that there is generally no 



21 



Appeal 2009-003320 
Application 08/479,810 

reasonable expectation of successfully achieving high temperature 
superconductivity. Nevertheless, this general unpredictability is tempered 
by the claims under consideration which limit the high temperature 
superconductor materials to classes of compositions expressly identified 
with reasonable detail in Appellants' Specification. This circumstance in 
combination with the other factors under consideration, including the limited 
and routine experimentation necessary to make and test such materials, 
support a conclusion that the Specification provides a reasonable expectation 
that materials of the type defined by the claims of this subsection would 
exhibit the claimed characteristic of high temperature superconductivity. 

In light of the foregoing, we conclude that the Specification disclosure 
would not require undue experimentation for and thereby enables the 
practice of Appellants' high temperature superconductor invention as limited 
to mixed transition metal oxides comprising (1) transition metal oxides in 
combination with either (2) rare earth or rare earth-like or group III B 
elements, or (3) alkaline earth or group II A elements. Based on the claim 
reproductions in Appellants' Appeal Brief, we identify the following claims 
as defining such mixed transition metal oxides: claims 28-30, 33, 35 5 , 37, 



5 Dependent claim 35 further defines "the composition" of parent 
independent claim 34. The claim 34 phrase "the composition" lacks strict 
antecedent basis due to an apparent oversight by Appellants. Consistent 
with the record before us (e.g., see independent claim 33), a person with 
ordinary skill in this art would regard claim 34 as providing strict antecedent 
basis for the phrase "the composition" by interpreting the claim 34 preamble 
"A superconducting apparatus having a superconducting onset temperature" 
as though it reads "A superconducting apparatus comprising a composition 
having a superconducting onset temperature". This is the interpretation we 
have given to parent claim 34 in assessing the enablement of dependent 
claim 35. 



22 



Appeal 2009-003320 
Application 08/479,810 

51, 52, 68, 71, 133, 163-166, 192, 193, 199-201, 205-210, 212, 227, 228, 
253-257, 283, 284, 303, 318, 319, 323/163+164+254+255, 324/37, 
325/33+35+68, 328/51+52+199-201+371, 339/28-30, 348/253+268, 
352/71+134, 353/205-210+212, 354/165+166+290-292, 
357/192+193+227+228+256+257+283+284+318+319+407, 371, 394, 395, 
407, 408, 416/371, 426/394+395, 501, 509, and 510. 

Accordingly, we will not sustain the Examiner's § 1 12, first 
paragraph, rejection of these claims as being non-enabled. 

Subsection III : The remaining claims on appeal wherein the high 
temperature superconductor material is not limited to the above-discussed 
mixed transition metal oxides comprising (1) transition metal oxides in 
combination with (2) rare earth or rare earth-like or group III B elements, 
and/or (3) alkaline earth or group II A elements. 

Initially, we address Appellants' argument that the Examiner's 
rejection of claims 438, 440, and 536 should be reversed because these 
claims recite "means for conducting a superconductive current", and 
therefore, "since the Examiner has allowed claims to specific examples in 
the specification, the claims in means plus function form can not be rejected 
as not being enabled" (App. Br., vol. 1, para, bridging 43-44). This 
argument is based on the proposition that claims 438, 440, and 536, because 
of their means plus function form, have the same scope as the claims which 
are considered to be enabled by the Examiner (i.e., claims in which the 
superconductor materials comprise (1) transition metal oxides in 
combination with (2) rare earth or rare earth-like or group III B elements, 
and (3) alkaline earth or group II A elements). 



23 



Appeal 2009-003320 
Application 08/479,810 

This argument is unconvincing. As Appellants acknowledged during 
the Oral Hearing of 10 June 2009, the sixth paragraph of 35 U.S.C. § 1 12 
requires that the means plus function language of the claims under review 
cover not only the corresponding structure or material described in the 
Specification but also the equivalents thereof whereby these claims are 
broader than those considered to be enabled by the Examiner {see Hearing 
Transcript 3-5). Therefore, the mere fact that the Examiner considers more 
narrow claims to be enabled is an inadequate reason to consider broader 
claims 438, 440, and 536 to be enabled. It follows that this argument reveals 
no error in the Examiner's rejection of these claims. 

Appellants' other arguments concerning the claims in this subsection 
correspond to the arguments presented for claim 12 which arguments are 
reproduced below: 

Claim 12 recites: 

CLAIM 12 A superconducting combination, 
comprising a superconductive oxide having a 
transition temperature greater than or equal to 

26°K, 

A current siurce [sic] for passing a 
superconducting electrical current through said 
composition while said composition is at a 
temperature greater than or equal to 26°K and less 
than said transition temperature, and 

a temperature controller for cooling said 
composition to a superconducting state at a 
temperature greater than or equal to 26°K. 

The Examiner has not made as to this claim a prima facie 
case of lack of enablement for the reasons given in all 



24 



Appeal 2009-003320 
Application 08/479,810 

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

(App. Br., vol. 3, para, bridging 35-36). 

We are not persuaded by Appellants' argument that the Examiner has 
failed to establish a prima facie case of non-enablement for the claims under 
consideration. 

The Examiner's non-enablement position is expressed in the Answer 
as follows: 

The examiner does not deny that the instant application 
includes "all know [sic] 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 



25 



Appeal 2009-003320 
Application 08/479,810 

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 [sic] 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. 

(Ans. 23-24). 

As support for the proposition that the high temperature 
superconductor art is unpredictable, the Examiner relies on the Schuller 
article and the article entitled "Exploring Superconductivity". This 
unpredictability also is supported by the examples disclosed in Appellants' 
Specification of compounds or compositions which fall within the 
compound or composition formulae defined by the appealed claims but 
which nevertheless fail to exhibit the claimed high temperature 
superconductivity (e.g., the non-conducting CuO phase at Specification 14 
and the non-superconductive La 2 -xBa x Cu0 4 . y when X equals 0.02 at 
Specification 18). 

Appellants contend that the high temperature superconductor art is 
predictable rather than unpredictable. According to Appellants, "since the 
Examiner agrees that in view of Applicants' teaching other embodiments 
can be made without difficulty and since testing such embodiments for the 
presence of superconductivity is well know [sic] and routine, the art of high 
Tc superconductivity is predictable or determinable and thus enabled by 
Applicants' teaching" (App. Br., vol. 1, p. 84). We do not share Appellants' 



26 



Appeal 2009-003320 
Application 08/479,810 



premise that the capability of an artisan to make and test embodiments other 

than those allowed by the Examiner establishes predictability in the art of 

high temperature superconductivity. On this record, Appellants have not 

shown the asserted correlation between capability and predictability. 

Moreover, this premise is contrary to the Schuller article which states: 

Thus far, the existence of a totally new superconductor has 
proven impossible to predict from first principles. Therefore 
their discovery has been based largely on empirical 
approaches, intuition, and even serendipity. This 
unpredictability is at the root of the excitement that the 
condensed matter community displays at the discovery of a 
new material that is superconducting at high temperature. 

(Schuller 7). 

Appellants argue that the Schuller article actually supports their 
predictability position and cite the Newns affidavit of record (App. Br., vol. 
5, Evidence Appendix, Attachment AP) as support for this argument (App. 
Br., vol. l,p. 195-208). Specifically, Appellants urge that their 
predictability position is supported by Schuller' s reference to new 
superconductor discoveries as based largely on empirical approaches, 
intuition, and serendipity since these bases are typically used by scientists 
during the discovery process as evidenced by the Newns affidavit (id.). 
However, Appellants have not established their proposition that 
predictability is indicated by the use of empirical approaches, intuition, and 
serendipity in the research and discovery methodology of scientists. 
Contrary to this proposition, we regard predictability in the context of 
enablement as involving a reasonable expectation of success. See Wright, 
999 F.2d at 1564 ("Wright has failed to establish by evidence or arguments 
that ... a skilled scientist would have believed reasonably that Wright's 



27 



Appeal 2009-003320 
Application 08/479,810 

success with a particular strain of an avian RNA virus could be extrapolated 
with a reasonable expectation of success to other avian RNA viruses"). 

With respect to the Examiner's reliance on the "Exploring 
Superconductivity" article as evidencing predictability, Appellants attempt 
to undermine this evidence via the Bednorz affidavit of record (App. Br., 
vol. 5, Evidence Appendix, Attachment AQ) which addresses the Bednorz 
quotation in this article (App. Br., vol. 1, p. 209). Significantly, the Bednorz 
affidavit fails to address the article disclosure which states that "there is no 
accepted theory to explain the high-temperature [superconductivity] 
behavior of this type of compound" ("Exploring Superconductivity", last 
para.). The absence of such a theory supports the Examiner's 
unpredictability position. 

In summary, the Schuller article and the "Exploring 
Superconductivity" article support the Examiner's position that the high 
temperature superconductor art is unpredictable. This position also is 
supported by the above-noted disclosure in Appellants' Specification of 
compounds or compositions which fall within the compound and 
composition formulae of the appealed claims but which nevertheless fail to 
exhibit high temperature superconductivity. On the other hand, Appellants' 
arguments and evidence in support of their opposing view are deficient for 
the reasons detailed earlier. Based on the record before us, therefore, we 
agree with the Examiner that the art of high temperature superconductivity is 
unpredictable. 

This unpredictability supports a prima facie case of non-enablement. 
The scope of the claims in this subsection also supports prima facie non- 
enablement. While Appellants' Specification provides reasonable guidance 



28 



Appeal 2009-003320 
Application 08/479,810 

for the mixed transition metal oxides discussed previously, there is 
insufficient if any guidance in the Specification for the other materials 
embraced by the claims under review as correctly indicated by the Examiner 
(see Ans. 23-24). For example, the Specification provides 23 pages of 
disclosure concerning these mixed transition metal oxides and their 
constituent elements (i.e., transition metals, rare earth and rare earth-like 
elements, and alkaline earths) but does not provide any disclosure at all of 
making high temperature superconductors from any other specifically 
identified elements. See Genentech, 108 F.3d at 1366 ("[W]hen there is no 
disclosure of any specific starting material or any of the conditions under 
which a process can be carried out, undue experimentation is required"). 
Under these circumstances, we are unconvinced by Appellants' argument 
that the Examiner has failed to establish a prima facie case of non- 
enablement for the claims discussed in this subsection. 

As rebuttal to a prima facie case of non-enablement, Appellants argue 
that they "have shown extensive evidence that persons of skill in the art can 
determine species within the scope of [the claims in this subsection] without 
undue experimentation" (App. Br., vol. 3, p. 35; see generally App. Br., vol. 
3, pts. 1-8). These arguments and evidence are unpersuasive for two 
fundamental reasons. First, they do not carry Appellants' burden of showing 
enablement with respect to "the full scope of the claimed invention" as 
defined by the claims under consideration. Wright, 999 F.2d at 1561. 
Second, Appellants' arguments and evidence that these claims are enabled 
inappropriately rely on the knowledge and skill of the artisan, whereas "[i]t 
is the Specification, not the knowledge of one skilled in the art, that must 
supply the novel aspects of an invention in order to constitute adequate 



29 



Appeal 2009-003320 
Application 08/479,810 

enablement". Genentech, 108 F.3d at 1366. The following discussion is a 
more detailed exposition of the deficiencies of Appellants' arguments and 
evidence. 

Appellants do not establish enablement via the so-called Examiner's 
First through Fourth Enablement Statements (App. Br., vol. 3, p. 2-6). 

The First Statement involves the Examiner's acknowledgement that 
artisans using known principles of ceramic fabrication would be able to 
make known superconductive compositions. However, the claims under 
review are not limited to ceramic compositions (i.e., compositions which can 
be made using known principles of ceramic fabrication). More importantly, 
it is Appellants' Specification, not the knowledge of one skilled in the art, 
that must supply the novel aspects of an invention in order to constitute 
adequate enablement. Genentech, 108 F.3d at 1366. 

The Examiner's Second Enablement Statement involves a now- 
dropped § 103 rejection based on the Asahi Shibum article of record. 
According to Appellants, "for the Examiner to have rejected Applicants' 
claim over the Asahi Shibum article under 35 USC 103, the Examiner 
necessarily had to find that Applicants' article [i.e., the Asahi Shibum article 
and therefore Appellants' Specification] fully enabled their claims" (App. 
Br., vol. 3, p. 4; holding deleted). Contrary to Appellants' presumption, a 
reference such as the Asahi Shibum article need not be enabled in order to 
qualify as prior art for the purpose of determining obviousness under § 103. 
Symbol Techs., Inc. v. Opticom, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991). 

The Third Enablement Statement also relates to a now-dropped prior 
art rejection which Appellants state was based on inherency. Appellants 
argue that 



30 



Appeal 2009-003320 
Application 08/479,810 

the rejection for inherency necessarily requires that a person 
of skill in the art be able to make the compositions of matter 
described in the prior art which necessarily means that it was 
and is the Examiner's position that a person of skill in the art 
is enabled to make high Tc compositions of matter 

(App. Br., vol. 3, p. 5). We perceive no merit in this argument for reasons 

analogous to those expressed above with respect to the Examiner's First 

Enablement Statement. 

The Fourth Enablement Statement involves a remark said by 

Appellants to have been made by the Examiner "at page 6 of Office Action 

dated 07/28/2004: 

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

(App. Br., vol. 3, para, bridging 5-6). Appellants contend: 

By stating that "[sjmall changes in composition can result in 
dramatic changes in or loss of superconducting properties" 
the Examiner is, in fact, acknowledging that the 
compositions can be made and tested to determine whether 
the composition has the desired superconducting property. 
This is all that enablement requires. 

{Id.). We do not agree with Appellants that the Examiner's statement 
constitutes the above-quoted acknowledgement. Further, we do not agree 
with Appellants that the mere capability to make and test compositions 
encompassed by the claims under review satisfies the enablement 
requirement. Rather, enablement requires the Specification to teach those 
skilled in the art how to make and use the full scope of the claimed invention 
without undue experimentation wherein it is the Specification, not the 
knowledge of one skilled in the art, that must supply the novel aspects of an 



31 



Appeal 2009-003320 
Application 08/479,810 

invention in order to constitute adequate enablement. Genentech, 108 F.3d 
at 1365-1366. 

Appellants also argue that enablement is evidenced by the so-called 
Poole 1988, 1995, and 1996 enablement statements (App. Br., vol. 3, p. 6-8). 
We cannot agree. 

The Poole 1988 statement merely indicates that fabrication of copper 
oxide superconductors is within the skill of this art. As explained earlier, the 
capability of an artisan to fabricate such materials is by itself inadequate to 
establish enablement. Moreover, this capability relates to the knowledge 
and skill of an artisan rather than to the requirement that a Specification 
supply the novel aspects of a claimed invention in order to provide 
enablement. Genentech, 108 F.3d at 1366. 

The Poole 1995 and 1996 enablement statements involve confirmation 
that high temperature superconductors possess characteristics disclosed in 
Appellants' Specification such as metallic, perovskite-like, mixed- valence, 
and layered structure characteristics. While it is true that the Specification 
associates these characteristics with Appellants' invention of mixed 
transition metal oxide superconductors, the Specification also associates 
these same characteristics with prior art superconductors. See the 
Background Art section of the Specification wherein prior art 
superconductors are described as metallic (Spec. para, bridging 1-2), 
perovskite-like (Spec. para, bridging 3-4) which includes a layered structure, 
and mixed- valence (id.). We do not see and Appellants do not explain why 
enablement is evidenced by the fact that the same characteristics are 
exhibited by superconductors known in the prior art and the superconductors 
discovered by Appellants. In any event, we again remind Appellants that it 



32 



Appeal 2009-003320 
Application 08/479,810 

is the Specification, not the knowledge of one skilled in the art, that must 
supply the novel aspects of an invention in order to constitute enablement. 
Genentech, 108 F.3d at 1366. 

Appellants also rely on the so-called Schuller enablement statement as 
evidence of enablement (App. Br., vol. 3, p. 8-9). This statement concerns 
Schuller' s above-discussed disclosure that the process of superconductor 
discovery includes, for example, the use of intuition. We have previously 
explained why this disclosure does not establish predictability in the high 
temperature superconductor art. For analogous reasons, Schuller' s 
disclosure fails to evince enablement for the claims in this subsection. 

As support for their enablement position, Appellants additionally rely 
on the affidavits of record by Mitzi, Dinger, Tsuei, Shaw, Duncombe, 
Newns, and Bednorz {See App. Br., vol. 5, Evidence Appendix, Attachments 
AH to AR). The Newns and Bednorz affidavits do not support Appellants' 
enablement position for the same previously-given reasons that they do not 
support Appellants' predictability position. The remaining affidavits share 
common deficiencies. The Shaw affidavit (App. Br., vol. 5, Evidence 
Appendix, Attachment AM) is illustrative. In this affidavit, Shaw states that 
persons of ordinary skill in this art are capable of fabricating ceramic 
materials exhibiting high temperature superconductivity by using principles 
of ceramic fabrication known in the prior art {see e.g., paras. 8, 1 1, 49, 50). 
Such statements do not evince enablement for reasons explained earlier. 
That is, all the claims under consideration are not limited to high 
temperature superconductive ceramic materials. Moreover, it is the 
Specification, not the knowledge of one skilled in the art, that must supply 
the novel aspects of an invention in order to constitute adequate enablement. 



33 



Appeal 2009-003320 
Application 08/479,810 

Genentech, 108 F.3d at 1366. The affidavits relied upon by Appellants do 
not explain how the Specification supplies novel aspects of Appellants' 
invention to thereby enable the full scope of the claims under consideration. 

In light of the foregoing, the arguments and evidence presented by 
Appellants in this appeal have little if any value in establishing that, on the 
original application filing date of 22 May 1987, a skilled scientist in this art 
would have believed reasonably that Appellants' high temperature 
superconductivity success with the mixed transition metal oxide materials 
discussed above could be extrapolated with a reasonable expectation of 
success to other materials. See Wright, 999 F.2d at 1564 ("Wright has failed 
to establish by evidence or arguments that, in February of 1983, a skilled 
scientist would have believed reasonably that Wright's success with a 
particular strain of avian RNA virus could be extrapolated with a reasonable 
expectation of success to other avian RNA viruses"). 

Appellants rely on numerous legal authorities in support of their 
enablement viewpoint. For the most part, however, these authorities and 
Appellants' arguments regarding them are not concerned with the pivotal 
question of why Appellants' Specification would have led an artisan to 
reasonably believe that Appellants' success with the previously noted mixed 
transition metal oxides could be extrapolated with a reasonable expectation 
of success to the other materials embraced by the claims of this subsection. 
Nevertheless, it is important that we clarify misimpressions created by 
Appellants' arguments regarding certain legal authorities. 

Appellants quote the following statement from In re Fischer, All F.2d 
833, 839 (CCPA 1970): 



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Appeal 2009-003320 
Application 08/479,810 

It is apparent 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. 

Appellants present the following argument regarding this quoted statement: 

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

(App. Br., vol. l,p. 77). 

For purposes of record clarification, we point out that our reviewing 
court has specifically characterized Appellants' quoted statement from 
Fischer as 

dictum [which] only sets the context for Fischer's holding 
that "[i]t is equally apparent, however, that [the inventor] 
must not be permitted to achieve this dominance by claims 
which are insufficiently supported and hence not in 
compliance with the first paragraph of 35 U.S.C. § 1 12." 
[Fischer, 127 F.2d at 839]. 

Plant Genetic Sys. v. DeKalb Genetics Corp., 315 F.3d 1335, 1340 (Fed. 
Cir. 2003). Further, the Plant Genetic decision affirms that pioneering 
inventions (e.g., Appellants' Nobel prize winning discovery of high 
temperature superconductors) are not entitled to a lower standard of 
enablement. Id. at 1341-42. 

In support of their enablement view, Appellants also present their 
analysis of the factors identified in Wands, 858 F.2d at 737 as relevant to 
determining whether their Specification disclosure enables the claims under 



35 



Appeal 2009-003320 
Application 08/479,810 

consideration without undue experimentation (App. Br., vol. 1, p. 125-129). 
In the discussion below, we apply these factors to the legal and factual issues 
of this appeal in order to obtain benefit of the analysis and in order to clarify 
certain incorrect aspects of Appellants' analysis. 

The Wands factors include (1) the quantity of experimentation 
necessary, (2) the amount of direction or guidance presented, (3) the 
presence or absence of working examples, (4) the nature of the invention, (5) 
the state of the prior art, (6) the relative skill of those in the art, (7) the 
predictability or unpredictability of the art, and (8) the breadth of the claims. 
Wands, 858 F.2d at 737. 

Factor (1) the quantity of experimentation necessary: 
There is no meaningful limit to the quantity of experimentation 
required by the claims in this subsection. This is because these claims 
define the recited high temperature superconductor with a broad scope 
which includes, for example, any oxide (claim 12) or any composition 
(claim 88). According to Appellants, "Applicants have shown that the 
quantity of experimentation needed to make samples to use the invention 
based on the content of the disclosure in the specification is routine 
experimentation" (App. Br., vol. l,p. 128). This statement is inaccurate. As 
previously explained, Appellants' evidentiary showing is essentially limited 
to the fabrication of mixed transition metal oxides as defined by the claims 
in subsections I and II above. On this record, Appellants have presented no 
showing which is commensurate in scope with the claims under review in 
this subsection III. It follows that Factor (1) supports a conclusion of non- 
enablement. 



36 



Appeal 2009-003320 
Application 08/479,810 

Factor (2) the amount of direction or guidance presented: 
We have explained earlier that Appellants' Specification gives no 
direction or guidance for making and using any high temperature 
superconductor material other than the mixed transition metal oxides 
discussed in subsections I and II. Appellants state that they "have provided 
extensive direction to make materials to practice their claimed invention 
[and that] [t]hey have included all known principles of ceramic science" 
(App. Br., vol. 1, p. 127). This is not correct in two respects. First, the 
Specification contains no direction for making high temperature 
superconductors (e.g., see claims 12 and 88) other than the mixed transition 
metal oxides. Second, the Specification disclosure concerning known 
principles of ceramic science relates to direction provided by the prior art, 
not by Appellants. Therefore, Factor (2) also evinces non-enablement. 

Factor (3) the presence or absence of working examples: 
The Specification contains no working examples at all of high temperature 
superconductors other than mixed transition oxide materials, and none of the 
claims under consideration are limited to such materials. According to 
Appellants, they "have provided sufficient working examples and examples 
of compositions that have T c > 26°K for a person of skill in the art to 
fabricate materials that can be used to practice Applicants' claimed 
invention" (App. Br., vol. 1, p. 127). This statement is inconsistent with the 
fact that the Specification examples are limited to the mixed transition metal 
oxides discussed in subsection I. Under these circumstances, a non- 
enablement conclusion is supported by Factor (3). 



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Appeal 2009-003320 
Application 08/479,810 

Factor (4) the nature of the invention: 

The nature of the invention defined by the claims in this subsection is 
unique for two reasons. First, prior to Appellants' discovery, there were no 
superconductors known to exhibit superconductivity at a temperature greater 
than or equal to 26°K. Second, the claims of this subsection encompass a 
broad scope of materials exhibiting this superconductivity (e.g., all oxides 
per claim 12 and all compositions per claim 88) which far exceeds the mixed 
transition metal oxide materials defined by the claims in subsections I and II. 
With respect to this factor, Appellants state "[t]he invention is easily 
practiced by a person of skill in the art" (App. Br., vol. 1, p. 126). We do 
not see the relevance of this statement to the factor under review. 
Furthermore, for reasons explained above, the arguments and evidence of 
record do not support the proposition that the full scope of the invention 
defined by the claims of this subsection "is easily practiced by a person of 
skill in the art" (id.). As a consequence, this Factor supports non- 
enablement. 

Factor (5) the state of the prior art: 

Based on the record before us, there is no prior art relating to high 
temperature superconductors of the type defined by the claims under 
consideration. According to Appellants, "[t]he state of the prior art clearly 
shows how to fabricate materials which can be used to practice Applicants' 
invention" (App. Br., vol. 1, p. 126). Appellants' statement is not correct. 
The prior art of record in this appeal is limited to fabrication of mixed 
transition metal oxide materials of the type discussed in subsections I and II. 
None of the claims in this subsection III are limited to such materials. The 
absence of prior art indicates non-enablement for the high temperature 



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Appeal 2009-003320 
Application 08/479,810 

superconductors defined by the claims of this subsection which comprise 

materials other than the above-noted mixed transition metal oxides. 

Factor (6) the relative skill of those in the art: 

This factor is addressed in the affidavits of record provided by 

Appellants. The Shaw affidavit (App. Br., vol. 5, Evidence Appendix, 

Attachment AM) is representative and contains the following statements 

regarding the relative skill of those in this art: 

Prior to 1986 a person of ordinary skill in the art of 
fabricating a composition according to the teaching of 
Bednorz-Mueller application would have: a) a Ph.D degree 
in solid state chemistry, applied physics, material science, 
metallurgy, physics or a related discipline and have done 
thesis research including work in the fabrication of ceramic 
materials; or b) have a Ph.D degree in these same fields 
having done experimental thesis research plus one to two 
years post-Ph.D work in the fabrication of ceramic materials; 
or c) have a masters degree in these same fields and have had 
five years of materials experience at least some of which is in 
the fabrication of ceramic materials. Such a person is 
referred to herein as a person of ordinary skill in the ceramic 
fabrication art. 

(Shaw Affidavit, para. 11). With regard to testing a material for 

superconductivity, the Shaw affidavit states: 

Prior to 1986 a person having a bachelor's degree in an 
engineering discipline, applied science, chemistry, physics or 
a related discipline could have been trained within one year 
to reliably test a material for the presence of 
superconductivity and to flow a superconductive current in a 
superconductive composition. 

(Shaw Affidavit, para. 10). We adopt these affidavit statements as defining 
a high level of skill in this art. In addition, we consider these affidavit 



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Appeal 2009-003320 
Application 08/479,810 

statements as generally corresponding to Appellants' characterization of this 
factor (App. Br., vol. 1, para, bridging 126-127). Importantly, this skill is 
concentrated in the ceramic materials art whereas the claims under 
consideration are not all so limited. These circumstances lead to a 
determination that Factor (6) neither militates for nor against enablement of 
the full scope of protection sought by the claims in this subsection. 
Factor (7) the predictability or unpredictability of the art: 
For the reasons fully detailed above, we consider the high temperature 
superconductor art to be unpredictable and disagree with Appellants' 
contrary view (App. Br., vol. 1, p. 127). This is especially so with respect to 
the claims under consideration since Appellants' Specification provides no 
direction or guidance for making the claimed high temperature 
superconductors other than the mixed transition metal oxides previously 
discussed. Accordingly, this Factor supports non-enablement. 
Factor (8) the breadth of the claims: 

We have already explained that the claims in this subsection 
encompass broadly claimed high temperature superconductors such as 
oxides (claim 12) and compositions (claim 88) whose scope far exceeds the 
mixed transition metal oxides of subsections I and II. According to 
Appellants, "[t]heir claims are as broad as their discovery which is that 
compounds, such as ceramics, more particularly, oxides, metal oxides, 
transition metal, etc. can carry a superconductive current for a T c > 26 K [sic, 
26 °K]" (App. Br., vol. 1, p. 126). However, it is important to clarify that 
the record of this appeal does not support Appellants' implication that the 
Specification discloses their discovery with sufficient detail to enable those 
skilled in this art to make and use the full scope of the invention defined by 



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Appeal 2009-003320 
Application 08/479,810 

the claims under consideration. As discussed above, Appellants' arguments 
and evidence of record have little if any value establishing that an artisan 
would have reasonably believed that Appellants' high temperature 
superconductivity success with mixed transition metal oxides could be 
extrapolated with a reasonable expectation of success to the other materials 
encompassed by the claims of this subsection. For these reasons, Factor (8) 
evinces non-enablement. 

Our analysis of these factors leads us to conclude that a reasonable 
basis exists for believing that the scope of protection provided by the claims 
under review is not adequately enabled by the Specification description of 
the invention and that Appellants have failed to carry their burden to provide 
suitable proofs that their Specification, in fact, teaches those skilled in the art 
how to make and use the full scope of the claimed invention without undue 
experimentation. Therefore, we will sustain the Examiner's § 1 12, first 
paragraph, rejection for lack of enablement of the claims addressed in this 
subsection III (i.e., all rejected claims except for the claims identified in 
subsections I and II). 

Conclusions of Law 

Appellants have shown error in the Examiner's conclusion that the 
rejected claims fail to comply with the enablement requirement in the first 
paragraph of 35 U.S.C. § 1 12 with respect to claims 72, 134, 268, 290-292, 
376, 421, 497, and 499. 

Accordingly, we do not sustain the Examiner's § 1 12, first paragraph, 
rejection of these claims as being non-enabled. 

Appellants have shown error in the Examiner's conclusion that the 
rejected claims fail to comply with the enablement requirement in the first 



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Appeal 2009-003320 
Application 08/479,810 

paragraph of 35 U.S.C. § 112 with respect to claims 28-30, 33, 35, 37, 51, 
52, 68, 71, 133, 163-166, 192, 193, 199-201, 205-210, 212, 227, 228, 253- 
257, 283, 284, 303, 318, 319, 323/163+164+254+255, 324/37, 
325/33+35+68, 328/51+52+199-201+371, 339/28-30, 348/253+268, 
352/71+134, 353/205-210+212, 354/165+166+290-292, 
357/192+193+227+228+256+257+283+284+318+319+407, 371, 394, 395, 
407, 408, 416/371, 426/394+395, 501, 509, and 510. 

For this reason, we also do not sustain the § 112, first paragraph, 
rejection of the above-noted claims as being non-enabled. 

Appellants have not shown error in the Examiner's conclusion that the 
remaining rejected claims fail to comply with the enablement requirement in 
the first paragraph of 35 U.S.C. § 1 12. 

It follows that we sustain the § 1 12, first paragraph, rejection of these 
remaining claims as being non-enabled. 

Order 

The decision of the Examiner is affirmed-in-part. 

Notice Regarding Any Request for Rehearing 

Any request for rehearing of this decision under 37 C.F.R. § 41 .52 
must be limited to points of fact and/or law which Appellants believe were 
overlooked or misapprehended in rendering this Decision. "Arguments not 
raised in the briefs before the Board and evidence not previously relied upon 
in the brief and any reply brief(s) are not permitted in the request for 
rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this 
section." 37 C.F.R. § 41.52(a)(1) (2007). In any request for rehearing, 



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Appeal 2009-003320 
Application 08/479,810 

Appellants must state with particularity each point of law or fact they 
believe was overlooked or misapprehended, must argue in support of each 
point, and must refer with particularity to where the argument was made 
originally in the appeal brief or reply brief (s). 

No time period for taking any subsequent action in connection with 
this appeal may be extended under 37 C.F.R. § 1.136(a). 

AFFIRMED-IN-PART 



ssl 

IBM CORPORATION, T.J. WATSON RESEARCH CENTER 
P.O. BOX 218 

YORKTOWN HEIGHTS, NY 10598 



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