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IN THE UNITED STATES PATENT AND TRADEil/IARK OFFICE 



In m Patent Application of 
Applicanls: Bednorz et al 
Serial No.: 08/479,810 



Group Art Ural: 1751 
Examiner: M. Kopec 



Date; Nov, 17, 200S 



Docket; yO987074BZ 



Filed; June 7, 1995 



Appeal No. 2009-003320 

For NEW SUPERCONDUCTIVE COMPOUNDS HAVING HIGH 
TRANSITION 

TEI^PERATURE. IMtETHODS FOR THEIR USE AND 
PREPARATION 

iVlal! Stop; Appeal Brief - Patents 

Commissioner for Patents 

United Slates Patent and Trademark Office 

P.O. 80x1460 

Alexandria VA 22313-1450 



Pursuant to 37 C.F.R. § 41 .51 (a)(1) appellants request 



rehearing of the Decision on Appeal dated 09/17/2009 (Board's Decision). 



REQUEST FOR REHEORING 
UNDER 
37 C.F.R. §41.52 {a)(l) 
Of 

Decision on Appeal dated 09/17/2009 



Sir: Please consider the foilowing. 



Appeal No. 2009-003320 



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LIST OF 

ACRONYMS AND ABBREVIATIONS 
USED IN THIS PAPER 

The Foyowing acronyms or abbreviated names are used in this paper: 



1 BO or Board's Dedston for the Decision on Appeal dated 
09/17/2009; 

2, FA or Final Action for the final rejection in the Office Action dated 
10/20/2005 which is the final rejection which is being appealed; 

3, OA072S2004 for the Office Actson dated 07/28/2004, 

4. TFA or Total Final Action for the combination of the Final Action 
and OA07282004 vvhich is incorporated in the Fsnal Action at page 4. 

5, BV1 for Appellants Brief Volume 1 fiied May 1 5, 2008; 

6. BV2 for Appellants Brief Volume 1 fiied May 15, 2008; 

7. BV3 for Appellants Brief Volume 1 fiied May 15, 2008; 
BV4 for Appellants Brief Volume 1 filed May 15, 2008; 
BV6 for Appellants Brief Volume 1 fiied May 1 5, 2008; 

10. APPELLANFS BRiEF for AB1 , AB2. AB3, AOS and AB5 coHectiveiy. 
11 EA or Examiner's Answer for the Examiner's Answer mailed August 
20, 2008; 

12, RB for the Repiy Brief filed 20 October 2008; 

13- RBS1 for the Reply Brief Supplement 1 filed October 21, 2008; 

14, RBS2 for the Reply Brief Supplement 2 filed October 28. 2008; 

15, RBS3 for the Reply Brief Supplement 3 filed November 6., 2008, 

16, AR or Appellants' Replies for RB, RB1, RB2 and RB3 collectively,; 
and 

17, lOH for the Transcript of the Oral Hearing held 10 June 2009, 



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INiTIAL COMiVIENTS 

Beard's Decision page 30, lines 8-10 slates ' the claims under review are 

not limited to ceramic compositions {i.e , compositions which can be made 
using known principles of ceramic fabrication)." Appellants respectfully 
disagree The foliowing claims recite that the high Tc element of the claims 
from which these claims depend "can be made according io known 
principies of ceramic science'' or similar recitation: dependent claims 322 to 
360. 414 to 427, 436, 453 to 465, 473 to 475, and 484 to 491 and 
tndependeiit clasm 522. Of these claims the following are allowed by the 
Exarr -iiner: 330, 335, 336, 346 and 358. Most of the dependent clairr is are in 
multiple dependent form. The Board's Decisions reversed the Examiner's 
rejection of parts of the other multiple dependent claims. Others remain 
with the Examsner^s rejections not reversed. 

In addition, 

• independent claims 59 iS directed to " a ceramic Hke matehai " and 

« independent claim 374 is directed to "a material comprising a 
ceramic characteristic. " 

Dependent claim 351 depends from claim 5S and states that the "ceramic 
like material" "can be made according to known principies of ceramic 
science." 

Dependent claim 419 depends from claim 374 and states that the 'the 
material comprisincj a ceramic characteristic " can be made accordlini<| 
to known principles of ceramic science; 

Some of these claims are listed below. 



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Appeiisnts note that at this web address of the Nobel Prize websste 

the foliovving announcement of Appellants award of the 1987 Nobel Prize 
can be found 




The Nobel Prize in Physics 198? 





The Nobel Prize in Physics 1987 



Stipe? ; Cf^Cii.H' :ivsty Cf>rsiTk" ^"-ssS'^ss s" 

This states that the 1987 Nobel Prize was awarded to Appellants "for Iheir 
important break-through in the discovery of superconductivity in cerart^ic 
material," The Board's Decision does not find enabled a claim 
commensurate in scope with the conf ribution for which they were awarded 
the Nobei Prize. 



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CLA!!V1 59 A combination, comprised of: 



a ceramic-like materiai having an onset of superconductivity at an onset 
temperature greater than or equal to 26*" K, 

mear?s for passsng a superconducting electrical current through said 
ceramic-iike materiai white said material iS maintained at a temperature 
greater than or equal to 26''K and less than said onset temperature, and 

means for cooling said superconducting ceramic-lil^e material to a 
superconductive state al 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, 

CLAiiVI 351 A combination accor dincj to claim 59, wherein said 
ceramic-Hke materia} can be made according to known principles of 
ceramic sci enc©. 

CLAiiVI 374 A combination, comprised of: 

a material comprisinfj a ceramic characteristic comprising an onset of 
superconductivity at an onset temperature greater than or equal to 2&K 

means for passing a superconducting eiectrical current through said 
materia! comprising a ceramic characteristic while said material is 
maintained at a temperature greater than or equa! to 26''K and less than 
said onset temperature, and 



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means for cooling sa;d superconductsng niaterial having a ceramic 
characteristic to a superconductive slate at a temperature greater than or 
equal to 26"K and less than said onset temperature, said materiel being 
superconductive at temperatures belov^- said onset temperature and a 
ceramic at temperatures above said onset tempereture. 

CLAIM 419 A combination according to ciaim 374^ wherein said material 
can be made by known prlnclpies of ceramic science. 

♦ 

CLAilVI 522 An apparatus comprising: 

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

said superconductive current carrvlng element comprises a 
com£QsJtjon tha^ 
ceramic science. 

CLAiM 438 An apparatus comprising- a means for conducting a 
superconducting current at a temperature greater than or equai to 26''K and 
a means for providing an eiectric current to flow in said means for 
conducting a superconducting current. 

CLAIM 453 An apparatus according to anyone of ciaims 438, 439 or 440, 
wherein said means for conducting a superconducting current can be 
made according to known principies of ceramic science. 



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• List of muttipJe-dependent oJaims reciting ismitation "made 
according to known principles of ceramic science" 

Uoderijoodl Referenced Claim Numbers - alfowed by the Examiner 

Double Underlmed Referenced Claim Numbers ~ Examiner's rejection 
reversed by the Board's Decision 

Referenced Claim numbers not underffned or double underlined 
remain rejected. 

CLAi!^ 326 An apparatus according to anyone of claims 93 to 95 or 138, 
wherein said mixed copper oxide can be made according to l<.nown 
principles of ceramic science. 

CLAIM 327 {Previously Presented) A combination accordirjg to anyorje of 
claims 64 or 135 , wherein said mixed copper oxide can be made according 
to known principles of cerarriiC science. 

CLAIM 329 A superconductive combination according to anyone of claims 
12 to 23, 110, 131, 132 or 367-370. wheresn said supercor^duciive 
composition can be made accordir-g to known principles of ceramic science. 

CLAIM 334 An apparatus according to anyone of claims 276, 276, 310 or 
31 r vi'herein said superconductive copper oxide can be made according to 
known principles of cerarnsc science. 

CLAIM 337 A devsce according to anyone of claims IM or 117, wherein 
said transition metal oxide can be made according to known principies of 
ceramic science. 



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CLA!!V1 338 An apparatus according to anyone of ciaims 24 to 26, 60 to 63, 
116, 141 to 143, 172, 187, 222, 232 to 234, 263, 278, 285, 287, 288, 313 or 
320, wherein said transition metal oxide can be made according to known 
principles of ceramic science. 

CLAIM 355 (A combination according to anyone of ciaims 77_78,. 79,..80., 
81, 186. 379 or 380 . wherein said mixed copper oxide composition can be 
made according to i<nown principles of ceramic science. 

CLAIM 356 A dev;ce according to anyone of claims 124. 125 . 126,. or 127, 
wherein said composition of matter can be made according to known 
principles of ceramic science. 

CLAIM 422 A combination according to anyone of claims 379 or 380 , 
wherein said mixed copper oxide can be made by known principles of 
ceramic science, 

CLAIM 424 A superconductive apparatus according to anyone of claims 
383, 384, 385, 386, 387 and 389, wlierein said composition can be made by 
.known principles of ceramsc science. 

CLAIM 427 A apparatus according to anyone of ciaims 402, 403. 404, 40S. 
406 . 4QLJ,QS, 409. 410. 411 412 or 41 3 . wherein said superconductive 
composition can be made by known principSes of cerainic science. 

CLAIM 549 An apparatus according to anyone of ciaims 496 to 500, §Q1, 
5Q2..503,.504,..505,.506,.5^^ 508, 5i;)a,,,SlQ, 511,.512,.5;13,.5 
wherein said superconductive element can be made according to known 
principles of ceramic science. 



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ARGUMENT 



1. SECTJON 

BD page 7 footnote 4 states 

Claims 13t5 and 326/138 are not included in the Examiners 
rejection and therefore are not on appeal and are not under our 
jurisdiction, Nevertheiess, we observe that these ciaims 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 § 1 12, first 
paragraph, rejection before us appears to be an inadvertent 
oversight. 

BD page 2 in footnote 1 acknowledges that claims 1 38 and 326/1 38 are not 
on appea! since they are not in the isst or rejected claims in the Examiners 



S;nce claims 138 and 326/138 are not finally rejected and are not 
under appeal these claims are not within the Board's jurisdiction. As stated 
in Appellant's Request to Reopen Prosecution, it is Appeliants^ 
understanding that the Board should not be making statements ;n the 
Board's Decision that cast doubt on the patentability or validity of claims that 
are not finally rejected and under appeal. !n view thereof Appellants request 
that the Request to Reopen Prosecution be granted. 



2. SECTION 



Although BD states at pages 2-4 that 

Based on a discovery for which they won a Nobel prize. 
Appellants ciaim 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 ;S broadiy and variously 
defined in the rejected claims as being, for example, an 



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o:'<ide. a co?npos!tion. a ceramic characteristic, and a 
n^eans. 

The Board's Decision leaves out another very important limitation that is 

contained in many of Appeilanf s cla;ms which is that the high T. 

superconducting element '*can be made according to known principles 

of ceramic science' or ssniilar recitation which can be found in dependent 

claims 322 to 360, 414 to 427, 436, 453 lo 465, 473 lo 475, and 484 lo 491 

and independent ciaim 522. (These claims sha!l be referred to herein as 

The Know Principles of Ceramic Science Claims.) Of these claims the 

following were allowed by the examiner: 330^ 335, 336. 346 and 358 and 

the rejection v.-as reversed by the Board's Decision for the follovvinQ ciairns 

????????? See BV1 paragraph bridging pages 45-46, BV1 page 52, lines 

1 "4 from the bottom and 8V1 , page 225, the first sentence of the last 

paragraph whsch states: 

More specifically, Applicants see no iustifiabie reason 
to reject as not enabled Applicants' claims which 
specifioaily recite, or that can be amended to recite, 
that the element having a Tc >26K "can be made 
according to known principles of cerainic science" 
since there is no evidence that such species cannot 
be made foilowing Applicants' teaching. . 



The Board s Decision states at page 3, lines 2-3: 

Rejected claims defining the above-described subject 
matter include claims 12, 68, 115, 117, 374, and 438 
which read as follows: [the full te.Kt of claims 12, 88, 115, 
1 1 7, 374, and 438 are quoted] 

The Boards* Decision has selected to highiight, as examples claims 

12, 88, 115, 117. 374, and 438 as broadly stated iiidependent claims. Of 

these independent ciairns, claims 88 ar^d 1 1 5 do have a claim depending 

from them reciting the limitation "can be made according to known 

principles of ceramic science," Claims 88, 1 1 7,374 and 438 do have 

claims depending therefrom reciting "can be made according to knov^n 

Appeal No. 2009-003320 Page 10 of 120 Serial No.: 08./47a810 



principles of ceramic science." Claim 239 depends from ciaim 12, 

Ciaim 337 depends from claim 115, Clam 419 depends from claim 374, 

Cteim 453 depends from claim 438. Dependent claims 239, 337, 419 

and 453 recite "cart be made according to known pr tnctples of 

cerar«(c sctence," 

BV1 at page 9 states; 

All rejected clasms are aopeaied. Claims 1-64, 66-72. 84. 
85. 88~Sa 1C€-102. 109-112. 115-122, 126-134. 139. 141- 
143, 146-149, 153-155. 162-166. 182-184, 187, 188, 192- 
1S5. 1S8-212, 217-219, 222, 223, 227-230. 232-2:S4, 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. 347-367, 369-374, 376 382, 383, 389, 394, 395. 
402. 407, 408, 414-419, 421-424, 426-501, 508-510 and 
515-543. Each rejected claim is appealed individualiy. 
None of these ciaims are appealed in a group except as 
Indicated in Preliminary Comment A in Volume 3. 

BV3 at page 3 states under heading Preliminary Comments A statesla]!! 
the ciaims are individualiy appealed. " BV3 pages 13-1769 provides reasons 
for why each rejected claims is enabled by Appellants^ teaching and why the 
Examiner's reasons for rejecting those ciaims as not being enabled is legal 
erfor. The Board's Decision has not directly addressed those arguments. 



3. SECTION 

The Board's Decision slates at page 6, iine 1 0-1 4 

Appellants' basic position is that the Examiner has 
failed to make a primia facie case that the rejected 
ciaims are not enabled and in any event that Appeiiants 
have provided extensive evidence showing persons of 
ordinary skil! in this an can determine species within the 
scope of the rejected ciaims without undue 
experimentation (see, for example 

Although the statement is correct it is incompiete; 



Appeal No. 2009-003320 



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Appeiiants' posstion is more conipieteiy summarized at BV1 in the 

paragraph bridging pages 44-45 wS^ich stales; 

Since the known methods disciosed by Applicants sre used to 
fabricate species within the scope of Applicants ciaims, it is 
Applicants' position ti^at persons of sk;ii \n the art can determine 
those species without undue experimentetson and consequently, 
Appiicants have enabled their ciaims to their full scope. Wlien 
species are determinable without undue experii-nentation^ the art 
iS a predictable ait Even though a high To materia! is a chcmicai 
composition, ail aspects of chemistry are not unpredictable. That 
chemistry is not per se unpredictabie is generally recognized by 
decisions of the Board and the Courts, for example at 427 F.2d 
S33, 83S the CCPA in in re Fisher states ■'in cases invoiving 
unpredictable factors such as most chemical reactions Thus ai! 
chemical reactions are [nol] [slc]unpred!Ctab!e [.] [sic] Applicants' 
evidence shows that the ctiemistry involved in formation of .high 
To i-naterials does not have to be understood to fabricate them 
which is one reason for why species are readily determinable !f 
the chemistry does not have to be understood to fabricate 
species, it is iiiiproper to refer to the art of high To super- 
conductivity as unpredictabie. Applicants' claims are directed to 
an apparatus using the high Tc materia! and not to a composition 
of matter. 

Appeiiants address the issue of the patent iegal term "predictable versus 
non-predictable' meaning '^determinable versus non-determinabie' in 
many piaced in Appellants' Brief and Appellants' Repiies. Appellants 
support this based on legal authorities. See BV1 at page47, iines 12-23 
whict^ states: 

in In re V^'ands 858 F.2d 731 , 742 (Fed Cir, 1988); 8 U.S.P,Q.2D 
1400, 1408 Judge Newman concurring in part, dissentiiig in part 
stated "[T he inventor] must provide sufficient data or authority to 
show that his results are reasonably predictable within the scope 
of the claimed generic invention, based on experimer^t and/or 
scientific theory. " Thus experimeiit or theory is sufficient to 
establish predictability. And as stated above by the Examiner ^'a 
person of skili in the art, using the techniques described in the 
application, which included all principles of ceramic fabrication 
known at the time the application was initially filed, can make the 
known superconductive compositions." There is no requirement 
to know in advance all examples enabled by their teaching. Thus 
the field of High Tc superconductivity is predictable withir? the 
tneaning of in re Wands. Species within the scope of Applicants' 



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claims are deterrnsnabie wsthout undue experimentation and by 
wel! known testing. 

Thus 'experiment and/or scientific theory" is sufficient io establish 
enablement 



See BV1 paragraph bridging page 47-48 which states- 

The Examiners reference to "subsequentiy discovered BSCCO or 
Ti-syst.ems " suggests that it is the Examiners vievv- that for 
Applicants to be allowed a generic claim. Applicants must know in 
advance ail materials that can be used to practice Applicant's 
claims. The CAFC iias stated in Sri Int'l v. Matsushita Eiec. Corp., 
775 F.2d 1107, 1121 (Fed, Cir. 1985), 227 USPQ 577, 586 that 
this is not necessary: 

The law does not require the imposslbie. Hence, it 
does not require that an applicant describe in his 
specification every conceivable and possible 
future embodiment of his invention. The iaw 
recognizes that patent specifications are written 
for those skilled in the art, and requires only that 
the inventor describe the "best mode" known at 
the time to him of making and using the liiveiition. 
35 u s e. §112. 



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

The CAFC has further stated: 

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



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This iS exactly what appNc-ants have done. Thus Applicants' c!a:ms are 
enabled. 

The CAFC further states In regards to future deveiopments; 

Enabiement does not require the ;nventor to foresee 
every ?neans of implementing an invention at pains of 
losing his pateni franchise. Were it otherwise, claimed 
inventions would not irvolude improved modes of 
practicing those Inventions, Such narrow patent rights 
would rapidiy become worthless as new modes of 
practicing the invention deveioped, and the inventor 
Vv'ould lose the benefit of the patent bargain, hivitrogen 
Corp. V, Ciontech Labs., Inc, 429 F.3d 1052. 1071 (Fed. 
CIr. 2005)' And, "Our case iaw \s dear iha\ an appiicant 
is not required to describe in the specification every 
conceivabie and possibie future embodiment of his 
inveiition.' Rexnord Corp v. Laitram Corp. 274 F.3d 
1336. 1344. 60 U.S.P.q".2D (BNA) 1851 (Fed. Cir. 
2001). 

The Examiner's position in regards to the enablement of Appiicants^ 
claims iS inconsistent with the CAFC's position that '|e|nablement 
does not requii-e the inventor to foresee every means of 
impiementing an invention." Thus Applicants' ciaims are enabled and 
the rejection should be reversed The Examiner uses the term 
predictable with the meaning of "foresee." The correct meaning of 
the term predictable" for enablement purposes iS '^determinable" 
without undue experimentation. 

Thus the patent legal term "predictable" does not means Knovviedge In 
advance of all species that cam with in the scope of Appellants' clatms, 
but means determsinable without undue experimentation. The Board's 
Decision ignores this legal authority and is thus an error of law. 



BV1 paragraph bridging pages 51-52 states: 

The Board in E.x parte Jackson 217 USPQ 804 and 807 
states 'a considerable amount of experimentation iS 
permissible if It is merely routine." As stated by the 
Examiner the experimentation to find other species is merely 
routliie The Board in Ex parte Jackson goes on to state if 
the experimsentation is not merely routine there is 
enablemerH "if the specification in question provides 



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8xcess3bie amount of guidance with respect to the direction 
in which fhe experimentation should proceed f.o enable the 
deterTnination of how to produce a desired ernbodirnent of 
the invention claimed, " 217 USPQ 804. 807. Thus guidance 
is needed vv'hen the experimentation is not merely routine. 
Since there is no evidence in the present appiication that 
anything other t.h3t routine experimentation Is needed to 
determine other species, than specificaily described by 
Applicants', the guidance provided by Applicants' teaching is 
sufficient to satisfy enablemesit. 



Thus the Board's own precedent Ex parte Jackson states "a 
considerable amount of experimentation is permissible if it is merely 
routine." 



BV1 paragraph bridging pages 87-88 states: 

The CAFG in !n re Wright 27 USPQ2d 1610 (1993) supports 
Applicants' view that a predictable art is one in which species 
within the scope of a ciaim under examination are deteri-ninabie 
svhether or not a theory of the invention is known as of the filing 
date of the application under examination. The claims under 
examiiiation in !n re Wright are dii-ected to a recombinant vaccine 
which confers immunity to chickens against a certain type of RNA 
tumor virus These claims include in their scope vaccines against 
the AIDS Virus The CAFC states- 
Wright seeks allowance, however, of clairris which 
would provide, in varyir?g degrees, a much broader 
scooe of protection than the allowed claims. 27 
USPQ2d'l50, 1511 

The CAFC further states: 

The Examiner made reference to the difficulty that the 
scientific coi-iim unity Is having in developing generally 
successful AIDS virus vaccines merely to illustrate that 
the art was not even today as predictable as Wright 
suggested It was back in 1983! 

No mention iS made of the presence or absence of a theory. 
Thus In re \A./nght shows that an art Is unpredictable when 
persons of skill In the art do not "kr^ow how to make" species that 



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come vv'sthin the scope of the claims and ;s predictable when 
people of skill in the art i<now how to make species within the 
scope of the claims based on the teaching of the application 
under examination. 
Thus the patent legal ter?T) "predictabie" Is not synonymous with the 

existence or a theory, but is synonynious with determ inability without 

undue experimentation, 

8V1 paragraph bridgiiig pages 94-95 states in regards to non- 

prcedential Board decision Ex parte Chen. 

in Ex part.e Chen, an unpublished decision repoited at 61 USPQ 
1025, 1028, the Board of Patent Appeals and Interferences held 
ciaims to transgenic carp not unpatentable for iack of 
enablement stating- 

in respoiiding to appellants* arguments, 
the examiner urges that the leve! of 
experimentation is undue and points to 
the success rate 1 % or 20 out of 1 746 
attempts for the integration of the gene 
into the embryos described in the 
specification, (Answer, pages 6 and 14). 
However, the examiner offers no evidence 
which Vi,'Ouid reasonably support a 
conciusion that one skilled in thss art 
would regard this rate of success for the 
integration of the rtGH gene as evidencing 
undue experii-iientation. We i'emind the 
examiner that some experirrientation fr^ay 
be requii-ed as !oiio as it iS not undue in 
re Vaeck 941 F 2d^488, 496, 20 USPQ2d 
1438, 1445 (Fed. Cir. 1991), Appellants' 
disclosure e,Kplicitly describes the 
methodology to be used to arrive at the 
claimed transgenic carp. As the record 
now stands, the numbers emphasized by 
the examiner would reasonably appear to 
reflect the need for a repetitive procedure, 
rather than un-due experii-nentation by 
those wishing to practice the invention. 



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



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some experirnentation may be needed to determine which 
examples work and which do not. The claims were found 
enabled since the experimentation was not undue. The need 
for a repetitive procedure to determine whioh examples have 
the desired result does not render the claims not enabled. 
That iS, there was 'how-to-mai<e-and-use predictability" in the 
E.X parte Chen Invention even though there appeared to have 
been no "theoretical predictability" and even though the Ex 
parte Chen appi leant could not foresee in advance, predict In 
advance or specifically teach in advance of experimentation 
which species had the desired result. Thus, that Applicants' 
specification describes examples that either do not show a Tc 
greater than or equal to 7.26 K or examples that have phases 
with and without a Tc greater than or equal io 26 K does not 
mean that they have not enabled their genus claliiis. 

Hius a low success rate, 1%, Is not fatal to enablement when the 
experimentation is i'outine, I.e. species ai'e determinable by routine 
experimentation. F^outlne repetitive procedures are sufficient to provide 
enablement 

BV1 page 95, last 1 7 lines, further states- 

That the species within this genus which have the desired high 
Tc property may be determined experiiTientally and not by a 
theoretical means according to the Board's decision in Ex parte 
Chen, does not mean that Applicants genus claims are not 
enabled. The CCPA agrees with this when It states. 
What the dissent seem to be obsessed with is 
the thought of catalysts which won't work to 
produce the intended result. Applicants have 
enabled those in the art to see that this is a real 
possibility, which is commendable frankness In a 
disclosure. Without undue experimentation or 
effort or expense the combinations which do not 
work will readily be discovered and, of course, 
nobody will use them and the claims do not 
cover them. The dissent wants appellants to 
make everything predictable in advance, which is 
impracticable and unreasonable. !n re Angstadt. 
190 USPQ 214, 219. 

From thiS It is clear that 35 U S C. 112, first paragraph, does not 
require everything to be predictable in advance and permits the 



Appeal No. 2009-003320 



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determination of the cofribinations that will and wHI not work by 
experimentation that is not undue. 

BV1 page 95, lines 1-18, states 

The USPTO Board of Patent Appeals and interferences in Ex 
parte Jackson 217 USPQ 804 (Bd. Apo. 19x52) states at 217 
USPQ 804 806-807; 

The first paragraph of 35 U.S. C. 112 requii'es that the 
disclosure of an invention be "In such a fuli, ciear, 
concise and exact terms as to enable any person 
skilled in the art to which it pertains or with which it is 
most nearly connected, to make and use the same ... 
Decisiona! law has interpreted the statutory requiremerit 
as dictating thai sufficient information be given in the 
appiication so that one of ordinary skili in the art can 
practice the invention without undue experimeniation, ,,, 

The determination of what constitutes umue 
experimentation in a give case requires the appiication 
of a standard or reasonableness, having due regard for 
the nature of the invention and the state of the art. . . 
The lest is not merely quaiitilalive, since a consldei'abie 
amount of experimentation is permissible if it is merely 
routine, or if the specification in question provides a 
reasonable amount of guidance with respect to the 
direction in which the experimentation should proceed 
to enable the determination of hovv' to practice a desired 
efribodifrieni of the invention claimed. 

BV1 page S8. iines 19-24 states 

The Court in in re Geerdes further states at ISO USPQ 9S3 
"The Board expressed concern that 'experimentation' iS 
involved in the selection of proportions and particle sizes, but 
this is r^ot determinative of the question of scope of 
enablement. It is only undue experimentation that iS fata! " 
There is no evidence that undue expehmentation is needed "to 
make'' materials to practice Applicants' claims The Examirw 
refers to none. 

BV1 paragraph bridging pages 101- 102 states: 



Appeal No. 2009-003320 



Page 18 of 120 Serial No.; 08/479,810 



The CCPA in re Angstadt and Griffin further states that: 



we cannot agree with the Board thai AppeiSants' 
disciosure is not sufficient to enable one of 
ordinary sklli In the art to practice the invention 
svithout undue experimentation. We note that 
many chemical processes and catalytic processes 
partlculariy, are unpredictable, , , , and the scope 
of enabienient varies inverseiy with the degree of 
unpredictability involved... The question, then, 
whether In an unpredictable art, section 1 12 
requires the disclosure of a test with every species 
covered by a cialm. To require such a complete 
disciosure wdi apparently necessitate a patent 
application or applications with 'thousands ' of 
examples... , More importantiy, such a 
requirement would force an inventor to seek 
adequate patent protection to carry out a 
prohibited number of natural experiments. Th;s 
would tend to dsscourage inventors \n filsng patent 
applications in an unpredictable area since the 
paient claim would have to be limited those 
embodimenls which are expressly disclosed. A 
potential infringer could readily avoid 'infringement 
of such claims* by mereiy finding another 
analogous (example) which could be used 190 
USPQ 124, 218. 

Thus Applicants do not have to specifically Identify in the 
specihcatior? aii spec;es thai come vvlth;n the scope of their claims, 

BV1 page102, line 6-10, states; 

The CCPA In re Angstadt further goes on to say 



havsng decided that appeilants are not required to disclose 
every species encompassed by the claims even In an 
unpredictable art such as the present record presents, each 
case must be determined on its own facts. 1$}0 USPQ 214, 218. 
(emphasis in the original). 

BV1 Page 103. ilnes7-i5, states; 
In re Angstadt further states at 190 USPQ 21 S: 



Appeal No. 2009-003320 



Page 19 of 120 Serial No.; 08./47a810 



We note that the PTO has the burden of giving reasons, 
supported by the record as a whole, why the specification is 
not enabling. In re Armbruster, 612 F.2d 676, 185 USPQ 152 
(CCPA 1975). Showing that the disdosure entaiis undue 
e,xpenfnentation is part of the PTO's initia! burden under 
Arn-bruster, this court has never held that evidence of the 
necessity fora.'7ye.xpenmentat!on, however slight, ss sufficient 
to require the appiicant to prove that the type and amount of 
experimentation needed is not undue. 

{{{note I stopped al page 1 06}|| 

As wiH be gone over in detaii beiow the Board's Decision ignores th:s 
support in legal authority and merely states that they are unconvinced. 

4. SECHON 

DB1 pages 7-10 under heading "Finding of Fact ' and under 
subheading "The Specification" quotes selected sections of the 
Specification. As noted in Section 3 of Appellants' Request To Reopen 
Prosecution submitted herewith the Board s Decision specifically identifies 
facts that were not specificaiiy identified in the Totai Final Rejection of in the 
Examiners Answer, Thus as agued in the Request to Reopen Prosecution 
the Board's Decision's reliance on facts not relied on by the Examiner result 
in the Board's Decision being more in the nature of an action on the ,merits 
than a decision on appeal 

Appellants note that each of Appeliaiits' claims has support in the 
Specification as shown in BV2 This is undisputed by the Total Finai Action, 
the Exatniner's Answer or the Board's Decision. 

5. SECHON 

D81 pageslO- 1 1 under heading "Finding of Fact" and under 
subheading "The Examiner's Evidence" quotes selected sections of the 
Examiner s Evidence which were for the first time introduced into the 
prosecution of this application in the Final Action and rei'erred io in the 
Examiner's Answer. That evidence is- 

Appeal No. 2009-003320 Page 20 of 120 Seriai No.: Oa/479,810 



!. the Schuller articte "A Snapshot View of High-Temperature 
Superconduciivity 2002," BD footnote 2 at page 6, and 

IL the articie entitled "ExpSoring Superconductivity." (Appellants 

note that this is an article that appears to have only appeared 

on the internet and ;S not currently 3va;lab!e on tlie internet, ) 

BD footnote 3 at page 6 

BD pagel ilnes 8-12, state- 

Unpredictabiiity in this art also is supported by the 
Examiner's uncontested findings that the Specification 
discloses numerous compounds or compositions 
which faii within the compositional definitions of the 
rejected ciaims yet fail to exhibit superconductivity at 
temperatures greater than or equal to 26''K (Ans., first 
fu!l para, at 9, para, bridging 1 1-12). 
(EmphasiS added.) 

This is an error of fact .Appellants' Specifications does not "discloses 

numerous compounds or compositions which fall within the corrspositlonai 

definitio.ns of the rejected claims yet fail to exhibit superconductivity at 

temperatures greater than or equal to 26 "K.' (Emphasis added ) Appeilants 

have never agreed to or acknowledged there are such 'numerous 

compounds or compositioiis' disclosed in their Specification. Neither the 

Total Finai Action, the Examiners Answer nor the Board^s Decision 

specifioaily ider?tify such hiurnerous corrspourids or cor -i posit lorss" disclosed 

in their Specification, The paragraph quoted above from the Board^s 

Decision refers to the first full paragraph of page 9 of the Examiners 

answer. Appellants beiieve that the correct paragraph is the second full 

paragraph of pare S which states: 

The present specification actually shows that known 
forms of "a transition metal oxide", "a composition", and "a 
copper-ox ide compound" do not show the onset of 
superconduciivity at above 26,/K. At p. 3, line 20, through 
p. 4, iine 9, of their disclosure, the applicants state that 
the prior art includes a 'li-Ti-0 system with 
superconducting onsets as high as 13.7/K." Official Notice 
is tai<en of the well- known fact that Tl is a transition rneta! 



Appeal No. 2009-003320 



Page 21 of 120 Seriai No.: 0a/47a810 



That dssclosure also refers to "a second, non-conducting 
CuO phase" at p. 14, Sine 18. Accordingiy. the present 
disclosure is not deemed to have been fully er^abling with 
respect to the '■transition metal oxide" of claim 24, the 
^oo?T)position" of claim 88, or the "copper-oxide 
compound" of claim 96. 

This paragraph only refers to one material, Li-Tr-O^ that has a Tc- less 
than 26 K and refers to "a second, non-conducting CuO phase" at p. 14, isne 
18. of the Specification. This is only two examples. The second example is 
a mixed phase materia! that ;S superconducting with Jc greater than or equa! 
26 K. Thus this second example is not an example of a material that i"ail[s] 
to exhibit superconductivity at temperatures greater than or equal to 25^K," 
See 8V1 page 118. lines 2-3. Appellants' claims are not directed to 100% 
superconductive material. 



The paragraph bridging pages 11-12 of the Examiner's 
Answer states: 

\m-\ a 1 :1 ratio of (Ba, La) to Cu and an x value of 0,02, the 
La--Ba-Cu-0 form; (re,, "RE-AE-TM-0'\ per p, 8. line 11) 
shows "no superconductivity" \^/;th a 2;1 ratio of (Ba. La) to 
Cu and an x value of 0.15, the La-Ba-Cu-0 form shows an 
onset of superconductivity at - 26./K". it should be noted, 
however, thai all of the claims in this application require the 
critical temsperature ( T,.) to be "m excess of 26/K" or "greater 
than 26/K" 



There iS only one example of a material ni this quoted language from the 
Examiners Answer that is not superconductive. 

Thus the sections of the Examiner's Answer referred to by the 
Board's Decision in the paragraph quoted above refers to at most tvv-o 
materials that are r^ot superconductors, one of which is a previously know 
materia! that is metallic. Thus the Examiner's Answer does not show that 
Appellant's Specification discloses numerous compounds or compositions 
m^hich fall within the compositional definitions of the rejected claims" as 



Appeal No. 2009-003320 



Page 22 of 120 Serial No.; 08/479,810 



stated by the Board's Decision quoted above. AppeSlant's do not beNeve two 
is numerous, 

6, Section 

The Summ3r\' if Appeilanf s Evidence 3t BD pages 1 1 -13 highiight oniy 
selected portions of Appellants" evidence 

7, Section 

BD pages 13- 15 lists the ^^Principles of Law" applied in the Board's 
Decision. Appellants disagree that the quoted passages from the cited 
CAFC decisions 

Genentech: Inc. v. Novo NotxtiskA'S, 108 F,3d 1361 (Fed. Cvc. 1S97) 

in re Wnght, 999 F.2d 1557 (Fed. Cir. 1993) 

//■! re Wands, 858 F.2d 731 (Fed. Cir. 1988) 
iisted at these pages accurately ref lect the law of enablement as it should 
be applied to the claims for which the Board s Decision has not reversed the 
Examiner's rejections for lack of enablement under 35 U S C. 1 12. first 
paragraph. Each of these three CAFC decisions are direct to enablement of 
biotechnology inventions. For each of these CAFC decisions the Board's 
Decision ■'divorces the court's holding from the facts upon which ii was 
rendered." 

118} 

in addition the Board's Decision is contrary to its own precedent Ex parte 

Jackson 217 USPQ 804 (8d App, 1982) 8V1 , page 97. Isnes 1-7, states 

The Board in Ex parte Jackson further stales at 217 USPQ 
808 'The problem of enablenient of processes carried out 
by microorganisms were uniquely different from the field of 
chemsstry generally. Thus, we are convinced that such 
recent cases as in re Angstadt 637 F 2d 498, 1 90 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 



Appeal No. 2009-003320 



Page 23 of 120 Serial No.; 08/479,810 



Ex parte Jackson does not apply, but In re Angstadt and in 
re Geerdes do apply. 

The Board's Decision has esseniiaiiy ignored !n re Angstadi and !n re 
Geerdes wh;ch the Board's precedent Ex parte Jackson says shouSd appSy. 
Appeiiant's Brief and Appellants Replies are primarily focused on In re 
Angstadt and the decisions which rely on it and apply it, . The Board's 
Decision ss primarily based on Genentech: inc. v. Novo Nordlsk which is not 
reiied on by the Total Final Action or the Examiners Answer. The Board's 
Decision secondariiy relies on in re Wrigiit -^hlch the Examiners Answer 
only cursorily cites at page 26, lines 9-15, but does not explicitly apply. Also 
the Total Final Action only cursorily cites /V) re Wright which it does not apply 
The Board s Decision thirdly relies on !n re Wands which is not relied on by 
the Total Final Action or the Examir^er's Ansv.'er, Each of these three 
decisions is a biotechnology decisson. For the reasons given in Appellants 
Request that Prosecution be Reopened submsiited with this Request for 
Rehearing, Appellants' request that pi'osecution be reopened so that 
Appellants' vM not be responding to arguments presented for the first time in 
the Board's Decision in this Request for Rehearing. 

U s Appellants position that the decision that should be applied to the 
facts and technology of the claiin on appeal is the United States Supreme 
Court decision i\/1inera!S Separation: Lid. v. Hyde, 242 U.S. 261 (1916) which 
In re .Angstadt. 537 F.2d 498, 503-5C!4 (C.C P A 1S76) 190 USPQ 214 
relies on for its holding. (BV1 page 228 last full paragraph) . iWnerais 
Separation: Ltd. v. Hyde is the most recent United States Supreme Court 
decision on enablement. The applicability of Minerals Separation.. Ltd. v 
Hyde Minerais Separation, Ltd. v. Hyde to the rejected claim is explained in 
detail at BV1 pages 228--237. The Board' Decision has made no comment 
on Minerais Separation, Ltd. v. Hyde, This has resulted in errors of law in 
the Board's Decision, The Board's application of. Genentech, !nc. v. Novo 
Nordisk/VS.. 108 F.3d 1361, In re Wriglit and In re Wands to the claims of 
the present application is inconsistent with the Supreme Courts' decision 
Appeal No. 2009-003320 Page 24 of 120 Serial No.: 0a/47a810 



in Minerals Separation, Ltd v. Hyde. Thus the manner in which the Board 
has applied these CAFC decisions is an error of iaw, 

S. Section 
In re Wrtght, 999 F.2cl 1567 

The Board's Decisior^ at BO page 13, isne 3 to 8D page 14, !:ne 2 
quotes and paraphrase passage from in re Wright. These quote passages 
and paraphrases are accurate, but leave out substantial parts of the /,'? re 
Wright decision that has resulted in the Board^s application of in re Wright 
being an error of law. The Board's Decision inappropriately "divorces the 
court's holding fron^ the facts upon which it was rendered." Rscoh Co.. Ltd. 
V. Quanta Computer irK:., 550 F.3d l325, 1339 (Fed. Cir 2008) resuiting in 
the errors of !aw. 

in re Wright states " [t]he claims on appeal are directed io processes 
for producing live, non-pathogenic vaccines against pathogenic RNA viruses 
vaccines produced by these processes .,. and methods of using certain of 
these claimed vaccines to protect living organisms against F^NA viruses ... 
Wright's specification provides a general description of these processes, 
vaccines, and methods of use, but only a Singie working example." in re 

in re Wright hmher states '|t|ne Exairnner argued that Wrights single 
wori^ing example merely evidenced that Wright had obtained successfuiiy a 
particular recombinant virus vaccine, and that this single success did not 
provide Sufficient likeiihood' that other recombinant RNA viruses could be 
constructed without undue experiinentation." In re VVright, 999 2d 1SS7. 
lMQ..i!:;ML..CiL..lS93} in contradistinction, Appellants' specification is not 
limited to one example and is not directed io living organisms. Applicants 
note that the Board s precedential decision in Ex parte Jackson supra 
recognizes that enablement Is applied differently in different conte.xts when 
it says at 217 USPQ 808 "itjhe problem of enablement of processes carried 

Appeal No. 2009-003320 Page 25 of 120 Serial No.: 08,/47a810 



out by microorganisms were uniquely different from the field of chemistry 
generaiiy," (BVIsentece bridging pages 141-142. ) 

in re Wnght further states "that msny of the appealed claims 
encompass vaccines aga;nst AIDS viruses and that, because of the high 
degree of genetic, antigenic verietions in such viruses, no one has yet. 
years after hss invention, deveioped a generally successful AIDS virus 
vaccine." 

is undisputed that within a very short time after Appellants' discovery it was 
duplicated and other species within the scope of their claims were found :n a 
sfiort time: as corroborated by Poole 1988 (Brief Attachments AF and AW) 
which states that the chemistry involved In mailing high Tc superconductors 
does not have to be understood to make these superconductors (BV1 page 
134, lines 16-20 ) 

in re Wright further states in regards to an article published 5 years 
after the Wright patent application was filed that the article showed that '•' the 
physloiogical activity of RNA viruses was sufficiently unpredictable that 
Wright's success in developing his specific avian recombinant virus vaccme 
would not have led one of ordinary skill in the art to belseve reasonably that 
aii living organisms could be immunized against infection by any pathogenic 
RNA virus by inoculating them vvith a iive virus containing the antigenic code 
but not the pathogenic code of that RNA virus. The general description 
and the single example in Wright's specification, directed to a uniquely 
tailored sn vitro method of producing m chscken C/0 ceiSs a vaccine agamst 
the PrASV avian tumor virus containing iive RAV-Ac virus particles, did 
nothing more in February of 1983 than invite e.xpehmentation to determine 
whether other vaccines having in vivo immunoprotective activity could be 
constructed for other RNA viruses.'ln re VWiqhl. 393 F,2d 1S5?. 1562 sFed. 
.C.L[.....lSi.3j. (EmphasiS added.) in contradistinction, there is no 
corresponding publicstion \n the present eppeal and in contradistinction the 
Poole 1888 Enablement Statement (BV3 pages 6-7), the Poole 1985 

Appeal No. 2009-003320 Page 26 of 120 Seriai No.: 08./479,810 



Enabiement Statement (BV3 page 7) and the Poole 1996 Enablement 
Statement (BV3 pages 7-8) state direciiy io the contrary. 

in re Wnght further states "[tlhe Examiner made reference to the 
difficuSty that the scsentmc community is having in developing generally 
successfu! AIDS virus vaccines merely to illustrate that the art is not even 
today [years after the initial filing date] as predictable as Wright has 
suggested that it was back sn 1S83 " in re Wr-qht 999 F 2d 1557. 1563 
l£MJ}JlJJ.;i3l in contradistinclion there is no evidence in the present 
record that persons or ordinary skill In the art have any difficulty making and 
testing samples that come within the scope of Appellants' claims 

in re Wright further stales "Wright has failed to establish by evidence 
or arguments that, in February of 1983 [Wrights filing date], a skilled 
scientist xvould have believed reasonably that Wright's success with a 
particular strain of an av;an RNA virus could be extrapolated Vi,'ith a 
reasorjable expectation of success to other avian RNA viruses. Indeed, 
Wr:ght has failed to point out with any pailicularity the scientific literature 
existing in February of 1983 that supports his position," .[[)..!§.. W?:igi}i..393 
F.2d 1557, 1564 (Fed. Gir 1993) In contradistinction, .Appellants extensive 
evidence shovv's thai the methods of making high Tc superconductors 
deschbed in thesr application where the same methods used to make 
materials prior to the earnest filing date and that other materials were made 
shortly after their discovery by the same methods and in addition Appellants^ 
have pointed out with extensive and specific particularity scientific literature 
existing prior to their earliest fillliig date which supports this position. See 
affidavits in Brief Attachments AH, Al AJ, AK AL AM, AN and AO (the last 
three of which are referred to as the OST Affidavits) referred to throughout 
Appellants' Brief and in Appellant s Replies all of which are based on 
methods of making materials known phor to Appellant's earliest filing 
date. (See for example RB page 6, lines 7-10 } And, see the Poole 1988 
Enablement Statement {BV3 pages 6-7). the Poole 1995 Enablement 
Statement (BV3 page 7) and the Poole 1S96 Enablement Statement (8V3 

Appeal No. 2009-003320 Page 27 of 120 Serial No.: 08./479<810 



pages 7-8) which refer to materials made after Appeiiants' discover/: but 
which expiicilly show thai known methods were used to make those 
materiais. It is unrebutted in the persecution of the present appiication, 
including in the Board's Decision, that only method know prior to Appeiiants' 
discovery and describe m their Specification are used to make and test 
species that corne within the scope of Appellant's claims Thus persons of 
ordinary skill in the art as of Appellants' earliest filing date had a reasonable 
expectation of success of making and testing species that come within the 
scope of Appellant's claims, 

. Appellant's Brief argue why In re Wright support Appellants" argument for 
why their claims are enabled at BV pages 87, 88, 90, 108, 129, 146, 208 
and 218, These arguments are unrebutted in the Board's Decision 

9. Section 

GertBntech, Inc. v. Novo NordiskA/S, 108 F.3d 1361 

The Board's Decision at BD page 14, line 3 to BD page 15, line 3 quotes 
passage from Genentech: inc. v. Novo Norcli$kA/S. (Gerjerjtech) These 
quoted passages are accurate, but leave out substantial parts of the 
Genentecii decision that has resulted in the Board's application of 
Genentecii being an error of law. The Board s Decision inappropriately 
"divorces the court's holding from the facts upon which it was rendered." 
BAcgiiCa,.Ltd.v,Quanla.C 
2008) resulting in the errors of law. 

In Genetech the claim found not enabled was directed to a method of 
producing an encoded protein consisting essentially of amiiio acids of 
human growth hormone "reciting that the encoded protein has an amino 
acid sequence and includes the step of cleaving this conjugate protein. This 
process of expressing a DMA encoding a conjugate protein and using an 
enzyme to cleave off an undesired portion of that protein iS generally known 
as cieavable fusion expression. " Ge[Mnte(:i;i„jrK;,y...N 



Appeal No. 2009-003320 



Page 28 of 120 Serial No.: 08./47a810 



F.3d 1361, 1363 (Fed. Cir 1997) 

The first paragraph quoted at DB page 14 from Geneniech leaves out 

the beginning of the first sentence 't^l© agree with Novo' Genentech. inc. 

v.Novg.NDrdi5k A/S,J.C)8.^ Thus this 

quoted paragraph is in response to an argument made by Novo which is. 

Novo asserts that at the time of fiiing, trypsin and other 
like enzymes were used only to digest proteins, not to 
specificaily and precisely cleave conjugate proteins to 
yield intact, useful proteins, and that the British patent 
explicitly indicates that trypsin would not be useful for the 
cleavabie fusion expression of arginine-containing 
proteins such as hGH. Novo further argues that neither 
the specification nor the references cited by Genentech 
suggest a single amino acid sequence, out of the virtually 
infinite range of possibilities, that would yield hGH in a 
usefu! form when cleaved from the coniugate protein. 
This process of expressing a DNA encoding a conjugate 
protein and using an enzyme to cleave off an undesired 
portion of that protein is generally known as cleavabie 
fusion expression This process of expressing a DNA 
encoding a conjugate protein and using an enzyme to 
cleave off an undesired portion of that protein is generally 
known as cleavabie fusion expression 

Genentech. Inc. v. Novo Noi-disk A/S, IPS F.3d 1361. 
.l^^S6iFed.,..Cjr...lS9/J. 

In redacted form this states "Novo asserts thai at the tirrie of filing, 
trypsin [was] used only to digest proteins, not to . cleave 
coniugate proteins to yield intact, useful proteins, and that the 
British patent explicitly indicates that tr^-psin would not be useful for 
the cleavabie fusion expression of arginine-containing proteins ... 
Novo further argues that neither the specification nor the 
references cited by Genentech sutjqest a sSncjie amino acid 
sequence, ..that wouid yieid hGH in a usefui form when cleaved 
from the conjugate protein ... using an enzyme to cleave off an 
undesired portion of that protein is generally known as cleavabie 



Appeal No. 2009-003320 



Page 29 of 120 Serial No.; 08/479,810 



fusion expression ." Genented'v ;nc v. Novo Nor d;sk A/S, 108 



E:3o.l361,.1163.(Fe^^^ (Emphasis added.) 

5n regards to the evidence presented by the piaintiff 
Genetetoh states "ftlhere is no dispute that the ponion of the 
specification chsefiy relied upon by Genenteoh ... does not describe 
in any detaii whatsoever how to tnake hGH using cleavabie fusion 
expression. For example, no reaction conditions for the steps 
needed to produce hGH are provided, no description of any specific 
cleavabie conjugate protein appears. The reievant portion of the 
specification merely describes ihi'ee (or perhaps four) appilcalions 
for which cleavabie fusion expression iS generaily vveil-suited and 
then naines an enzyme that i-iiighf be used as a cieavage agent 
(trypsin), along with sites at \A/hich it cleaves ... Thus, the 
specification does not describe a specific matenal to be cleaved or 
any reaction conditioiis under which cleavabie fusion expt'ession 
would work,' Ger|enjeci:i..lr?c,..v.^ 
1 565 (Fed Csr. 1S97) 

G&netech states in regards to the patent in dispute "the 
specification . . does not provide a specific enabling disciosure 
concerning what the new ciairn recites, viz., obtaining hGH by 
cleaving an hGH-containing conjugate protein . . Genenteoh is 
attempting to bootstrap a vague statement of a problem into an 
enabling disclosure sufficient to dominate someone else's solution 
of the problem. This it cannot do." Genen_i,ech,_ k 
A/S. 108 F 3d 1361, 1366 (Fed. Csr. 1997) 



Thus in Gmetech the patent did not have any working 
examples what it was purporting to be "new", i.e., what they 



Appeal No. 2009-003320 



Page 30 of 120 Serial No.; 08/479,810 



invented a process "obtaining hGH by cieaving an iiGH-contasning 
conjugate protein." 

There is no corresponding evidence in the prosecution of the 
present application, in contradistinction Appeliants' Specification 
teaches specific working examples that are species within the 
scope of every claim rejected as not enabled including those for 
which the Board's Decision did not revoi'es the Exatniner's 
rejection. This is undisputed in the present appiication. Those 
species were made and tested by methods know prior to 
AppeSiants' earliest tiling date. This iS undisputed, it is also 
undisputed that nothing more is needed than these know methods 
to make and test other species Vv'ithin the scope of Appellant s 
claims. What is new in Appellants' invention is not a method of 
making and testing species iha\ come within the scope of their 
claims, but that ceramic materials which were not kncAv to be 
superconductors were in fact superconductors having a Tc greater 
than of equal to 26 K, There is no evlder^ce that there are species 
Within the scope of Appeiiant's claims for which the Board's 
Decision did not reverse the Examiner's rejection that can not be 
made and tested by the methods described in Appellants' 
Specification. 

Genetech further states that the evidence showed that ^no 
one had been able to produce any humsan protein via cieavabie 
fusion expression as of the appSication date. !f, as Genentech 
argues, one skilled in the art, armed oniy with what the patent 
specification discloses... could have used cieavabie fusion 
expression to make a human protein without undue 
experimentation, it is rem;arkab!e that this msettiod was not used to 
make any human protein for nearly a year . . . , or to make hGH for 
five years. .. . This failure of skilled scientists, who were suppiied 
With the teachings that Genentech asserts were sufficient and who 

Appeal No. 2009-003320 Page 31 of 120 Serial No.: 08/479,810 



were clearly motivated to produce human proteins, sndioates that 
producing hGH via cleavabie fusion expression was not ihen within 
the skii! of the art.' Genentech. inc. v. Novo Nordisk A/S. 108 F,3d 
j..S6L..13S]lJlL§d;..illL..19^^^^^ "f'^^^s In Genetech v/hat Genetech was 
claiming was new the method of "cleavabie fusion e.xpression'^ was 
not used prior to filing their patera applications and what their 
.method claifned as being made "hGh" was not used to make hGh 
until 5 years after their filing date. It is clear from Genetech that the 
Genetech patent did inot show that the inventors understood how to 
praclice "cleavabie fusion expression'^ but were alleging in the 
iiligalion that persons of skill in the art could practice "cleavable 
fusion expression' from their teaching without undue 
experimentation, Genetech holds that since 'cleavable fusion 
expression ' is the new feature of the invention how to do this had 
to be described. In contradistinction, the methods used in 
Appellants' Specification to make and test species were know prior 
to Appellants' earliest filing date and were applied quickly after their 
discovery by others following their teaching to i-nake and test other 
species as stated by Poole 1988, Poole 1995 and Poole 1996 ( See 
the Poole 1988 Enablement StateiTient (BV3 pages 6-7). the Poole 
1995 Enablement Statement (BV3 page 7) and the Poole 1996 
Enablement Stateinent (BV3 pages 7-8) The evidence in the 
present application indicates exactly contrary to what the evidence 
indicates in Genetech. Wnat Appellants' evidence shows iS 
undisputed. Appellants' evidence shows that all that was needed to 
make and test other species is what Appeilaiits' Specification 
teaches about the method to make and test other species. This is 
undisputed. 

Genetech further states- "it stands to reason that if the 
disclosure of a useful conjugate protein and the method for its 
cleavage were so clearly within the skill of the art, it would have 

Appeal No. 2009-003320 Page 32 of 120 Serial No.: 08/479,810 



been expressly disclosed in the specsfiGatioP: and in the usual 
dexail. Paient draftsmen are not ioaih io provide actuai or 
constructive examples, with detaifs, concerning how to make 
what they wish to claim." Genentech... Inc. v. Npva Nord-'sk AJS. 
106 F. 3d 1361, 1367 (Fed. C>r 1997). (Emphasis added.) in 
contradistinction, Appellants' Specification !-;as provided ^actuaj 
:and| constructive exampies, with details, concerninp how to make [ 
and test] a -s at they ihaveclairnedl ." 

10. Section 
in re Wands, 858 F,2d 731 

The Board's Decision at 8D page 16. line 4 to BD page 15, last line, 
quotes passage from In re Wands These quoted passages are accurate, 
but leave out substantia! parts of the In re Wand decision that has resulted 
in the Board's application of In re Wand being an error of lavv-. The Board's 
Decision inappropriately "divorces the court's holding from the facts upon 
which it was rendered," .Rj.cgli.Co,.,..Ud,..v,.Qu 
1325. 1339 {Fed. Csr. 2008) resulting in the errors of law. 

Appellants note thai In re Wands Is directed to a 
biotechtiology invention. But, unlike !n re Wright BPsd Genentech 
the claims under review for lack of enablement in In re Wands 
were found enabled. 

The first quotation listed by the Board's Decision at page 1 5, 

tines 4-7, iS : 

Enablement is not precluded by the necessity for 
some experimentation such as routine screening. 
n19 

!n.j:e.Wands...a58JL2(L 
In the Board's Decision the citations in footnote 19 are left out 
which are: 

Atlas Powder Co. v. EJ. DuPont De Nemours & Co , 
750 F 2d 1559, 1576, 224 USPQ 40S, 413 (Fed. Cir. 



Appeal No. 2009-003320 



Page 33 of 120 Serial No.: Oa/479,810 



1984 V In re Angstadt. 537 F.2ci at 502-504. 190 
USPQ at 218; In re Geerdes. 491 F.2d 1260, 1265. 
180 USPQ 789, 793 (CCPA 1974}: Minerals 
Separation, Ltd. v. Hyde. 242 U.S. 261 270-71 61 L. 
Ed. 286, 37 S. Ct. 82(1916). 

!n each of these decisions claims being reviewed for lack of enablement 
were found enabled essentially because only "routine screening'' was need 
to find species the came within the scope of the claims under review. The 
cfatms under review in In re VVarjds were found enabled essentially for the 
same reasons. Appellants' Brief argued that only routine experiments are 
needed to make and test specses within the scope of ail clai?Ti rejected for 
lack of enablerrsent. Appellants' agued that In re i'Vano^s, //? re Angstadt and 
Minerals Separation, Ltd. v, Hyde Minerals Sef>aration, Ltd. v. Hyde 
supported the;r argument.. The Board's Dec;slon has essentially ignored 
Appellants^ argument by not responding to it or acknowledging it. These 
decisions found "routine screening" using known techn;ques v.-as sufficient 
to determine species that came with in the scope of the claim under view 
which were thereby enabled. The is the principle of law that should apply to 
the claims presently under appeal and for which the Board's Decision has 
not reversed the Examiner's rejection. Appellants' Brief and Appellants' 
Replies refers to In re Angstadt at BV1 , pages 46, 49, 70, 73, 74, 95, 97, 
98. 101 -■ 108 (these pages have a compreher^slve discussion of this 
decisions applicability to the claims rejected in the present application), 128, 
135. 136, 138, 146, 152, 154. 169. 223. 224, 232 and RB pages 20. 21 and 
23. Appellants" Brief refers to Minerals Separation, Ltd. v. Hyde Minerals 
Separation. Ltd. v. Hyde at BV BV/1 pages 228 to 237. 

The second quotation from In re Wands listed by the Board's 
Decision at page 15, lines 9-17. includes the following quotation from irj re 
Afigstadt the statement 'tt|he 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 



Appeal No. 2009-003320 



Page 34 of 120 Serial No.: Oa/479,810 



guidance with respect to the direction in which the experirnentatson should 
proceed," (Emphasis added.) it is undisputed in the present appea! that the 
experimentation to determine other species of high Tc materials witfiin the 
scope of the cialms ;s v&<ai v^as Know prior to Appeliants' earliest fiNng date 
which IS thus routine. Thus following !n i-e Wands a considerable amount, of 
this type of experimentation is permissible 

Appeiiants note that the passage quoted above from in re Wana's states that 
a "considerable amount" of 'routine" experimentation or "reasonabie 
gu:dance_with respect to the direction in which the experimentation should 
proceed" :s needed to satisfy enabiement but mot both routine 
experimentation and reasonable guidance is needed 

1/7 re Wands states in regards to the claims under review "[t|he nature 
of monocbnai antibody technology is that it involves screening hybridomas 
to determine which ones secrete antibody with desired characteristics. 
Practitioners of this art are prepared to screen negative hybridomas in order 
to find one that makes the desired antibody." in re Wands, 858 F.2d 731, 
Z^s0.iEe4..C :[:,.. 1988} 

Similariy, in Appellants' claims oniy require routine methods of fabrication 
and testing which practitioners in the art are prepared to do in order to find 
other high Tc materials to practice the claimed invention. 

Appellants' Brief shows why In re Wands supports their argument 
that their claims are eiiabled at BV1 pages 46, 47. 49. 69,83, 91 . 1 1 1 , 124, 
125 to128, 170, 223, and 224 and RB page 52, These argu?T)ents are 
unrebutted in the Board s Decision. 

11, Section 

Mimmis Separatfon, Ltd, v, HydB MinBrals Separ&tmn, Ltd, v. Hydm 
242 as, 2$1 

The paragraph bridging BV1 pages 228 229 states: 



Appeal No. 2009-003320 



Page 35 of 120 Serial No.; 08/479,810 



The CCPA states in !n re Angstadt, 537 F.2d 498, 503-504 
(C.C.P A. 1976) 190 USPQ 214 cilina the United Stated Supreme 
Court decision Minerals Separation, Ltd. v. Hyde. 242 U.S. 261 . 
270-71 (1916). 

To require disciosures in patent applications to transcend the 
level of knowledge of those skilled in the art would stifle the 
disclosure of inventions in fields man understands imperfectly, like 
catalytic chemistry. The Supreme Court said it aptly in Minerals 
Separation. Ltd. v Hyde, 242 U.S 261, 270-71 (1916), in 
discussing the adequacy of the disclosure of the froth flotation 
process of ore separation. 

Equally untenabie is the claim that the patent is invalid for 
the reason that the evider)ce shows that when different 
ores are treated preliminary tests must be made to 
determine the amount of oil and the extent of agitation 
necessary in order to obtain the best results. Such 
variation of treatment must be within the scope of the 
claims^ and the certainty which the law requires in patents 
Is not greater than is reasonable, having regard to their 
subject-matter. The composition of ores varies infinitely, 
each one presenting Its speciai problem, and It is 
obviously impossible to specify in a patent the precise 
treatment which would be most successful and 
economical in each case. The process is one for dealing 
with a large class of substances and the range of 
treatment within the terms of the claims, while leaving 
somethir)g to the skill of persons applying the inventlor^i, 
is clearly sufficiently definite to guide those skilled in the 
art to its successful application, as the evidence 
abundantly shows. This satisfies the law. Mowry v. 
Whitney, 14 Wail. 620; Ives v. Hamilton, 92 U.S. 426, and 
Carnegie Steel Co. v. Cambria Iron Co., 185 U.S, 403, 436, 
437 [Emphasis added j 



The text in bold shall be referred herein to as The Supreme Court 
Minerals v, Hyde Enablement Statement 

12. Section 

The Board's Decision states at page 17 , lines 17 ~2D: 

The Examiner explicitly criticizes Appellants' affidavit evidence 
as 'ronclusory only" (Ans, 1 5) although no specific reasons are 
given for considering the affidavits to be "conclusory only" wsth 
respect to the clasnis discussed in this subsection 

Appeal No. 2009-003320 Page 36 of 120 Serial No.: 08./47S,810 



Appellants disagree that the language quoted from Board's Decision 



in Section 6,3 accurately represents the facts, 

Appelisnis Reply page 3, iines 3-7 states: 

The Examiner s Answer is essentially verbatim copied 
from the Office Action dated 07/28/2004 and the Final 
Action, The Examiners Answer from page 5. line 12 to 
page 20, line 6 is essentially copied from the Office 
Action of 07/28/2004. The Examiners Answer from page 
20, line 7 to page 29, line 11, is essentially copied from 
the Final Action. 

Thus Appellants submit that the referred to comment/' conclusory only' from 
page 15 of the Examiners Answer is referring only to Appellants,' affidavits 
submitted prior to OA07282004 and not to vvhal Appellants have referred to 
as the DST Affidavits {Brief Attachments AM to AO) which wei-e submitted 
after OA07282004 or the declaration of Bednorz (Brief Attachment AQ)< 
which v^as submitted after the Final Action, or the Affidavit of Newns (EJrief 
Attachment AQ) which was submitted after the Final Action. 

Appellants specifically noted this in Appellants Reply at page 6, lines 
1-20, which states {Text in bold square brackets is added for claiity): 

At page 12 of the Examiner s Answer, the first sentence of 
the last paragraph states "ftlhe 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 E.xaminer s Answer. Nnes 14-15 states "3 
affiants," As stated in the Brief in this passage the Examiner 
incorrectly states Applicants submitted three affidavits. Pnor 
to the Office Action of 07/2S./2004 fwhich is incorporated into 
the Final Action at page 4 thereof) Applicants submitted the 
five affidavits of Brief Attachments AH. A!. AJ, AK, AL of 
Mitzi, Dinger, Tsuei, Shav,* and DuncoiTibe, respectively. 
Subsequent to the Office Action of 07/28/2004 Applicants 
subi-nitted the expanded affidavits of Shaw, Tsuei and Dinger 
of Brief Attachments AM, AN and AO, respectively [referred 
to In Appellants' Brief as the DST Affidavits]. 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 



Appeal No. 2009-003320 



Page 37 of 120 Serial No.: 0a/47a810 



can make those superconductors without umue 
experimentation in fhe Answer the Examiner has not 
responded to these affidavits. !n addition subsequent to the 
Office Action of 07/28/2004 Appiicants submitted the Nevvns 
Affidavit (Brief Attachmerri AP) and declaration of co- 
inventor Georg Bednorz (Brief Attachment AQ) [Appellants 
note that the News Affidavit and the Bednorz 
Deciaratlon were submitted in response to new 
arguments in the Final Action and were thus submitted 
subsequent to the Finai Action] !n the Answer the 
Examiner has not responded to the Newns Affidavit or the 
Bednorz declaratioii. The Examiner has not rebutted this 
evidence (including the other evidence submitted by 
Appiicants) and thus has not made a prima facie case of iacK 
of enabiemeni. 



Thus as agued in the Request to Reopen Prosecution the Board's 
DeciSion^s reliance on facts and arguments not relied on by the Examiner's 
Ansv^'er which resuit in the Board's Decision being more in the nature of an 
action on the mserits than a decision on appeal. Appellant's request the 
Board grant Appeilants' Request to Reopen Prosecution submitted 
herewilh. 

13. Section 

The Board's Decision from 8D page 17 two lines from the bottom to 

page 19 5 iines from the bottorn, focuses on specific types of materia! 

taught in Appellant's Speciflcatioii. it iS noted that it is unrebutted that all 

of Appellants' claims have written description support in the 

specification. Appellant's Brief ai BV1 page 104, iines 10-16, states: 

The CCPA in !n re Marzocchi, 68 CCPA 1069, 439 F. 2d 220, 
169 USPQ 367, 369-370 (1971) states: 

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



Appeal No. 2009-003320 



Page 38 of 120 Serial No.; 08/479,810 



This quoted language from in re Maaocchil is directed to enabiement in 

the contexi of a chemical. Thus "broad ierminoiogy^' is sufficieni to 

satisfy enabiement and specificaiiy identifying species that com within 

the sope of the claims is not and absolute requirement. 

The legs! authority cited by Appellant supports this position. 

BV1 , page 47 7 lines from the bottom to page 48 line 25, states- 

The CAFC has stated in Sri !nf! v. Matsushita Elec Coro . 775 F.2d 
1107, 1121 (Fed, Cir. 1985); 227 USPQ 577, 586 that this is r?ot 
r^ecessary: 

The law does not require the impossible. Hence, it 
does not require that an applicant describe in hiS 
specification every conceivable and possible future 
embodiment of his invention. The !aw recognizes that 
patent specifications are written for those skilled in the 
art, and requires only that the Inventor describe the 
"best mode" known at the time to him of rnaklr^g and 
using the invention 35 U.S.C § 112 



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

The CAFC has fuhher stated: 

An appiicant for patent is required to disclose the 
best mode then known to hsm for practicing his 
invention 36 U.S.C. § 112 He is not requfred to 
predict ali future developments which enable the 
practice of his invention in substantially the same 
way. Hughes Aircraft Co. v. United Stales. 717 
F,2d 1351 1362 (Fed, Csr. 1983),39 USPQ2d 
1065, 



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

The CAFC further states in regards to future developments- 

Enablement does not require the inventor to foresee 
every means of implementing an Irrv^er^tion at pains 
of losing his patent franchise, V'-Jere it othem'ise. 



Appeal No. 2009-003320 



Page 39 of 120 Sehai No.: Oa/479,810 



claimed inventions would not snclude Improved 
modes of practicing those inventions. Such narrow 
patent rights would rapidly becorne worthless as 
new modes of practicing the Invention developed. 
am the inventor would lose the benefit of the patent 
bargain, invitrogen Corp. v. Ciontech Labs., Inc.. 
429 F.3d 1G52, 1071 (Fed, Cir. 2005y' And. '^Our 
case law is clear that an appSicant is not required to 
describe in the specification every conceivable and 
possible future etnbodifnent of his invention " 
Rexnord Corp. v. Laitram Corp., 274 F,3d 1336, 
1344. 60 U S P.Q.2D (BNA) 1851 (Fed Cir. 2001) 

The Examiner's position In regards to the enablement of 
Applicants' claims is inconsistent with the CAFC's position that 
'teinablemenl does not require the inventor to foresee every 
means of irnpiementing an invention," Thus Applicants' clasms 
ai'e enabled and the rejection should be i-eversed. The 
Examiner uses the term predictable with the meaning of 
"foresee." The correct meaning of the term "predictable' for 
enablement purposes iS "determinable' without undue 
experimentation. 

The Board^s Decision has not commeiited on nor rebutted 
Appeiiants' citation to and application of F-^exnord to show why their 
claims on appea! are enabled, including those for which the Board 
has not reversed the Examiner's rejections, and that enablement 
"[e]nablernenl does not i'equire the iiiveiitor to foresee every means 
of implen^er-lirio ar? invention" as stated in Rex nod . That is, 
enablement does not require inventors to predict or foresee "every 
conceivabie aiid possibie future embodiment of [their] Invention ' at 
the time the application is filed 



BV1 page 113, 8 lined froiTi the bottom to page 114, line 15. states; 
The CCPA in In re Robins 166 USPQ552, 555 has stated 

Both the Examiner and the board seem to have taken the 
position tiiat in order to "Justify," as the Examiner said, or to 
"support," as the board said, broad generic language in a 
claim, the specification must be equally broad in its 
meaning, and use in examples, of representative 



Appeal No, 2009-003320 



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compounds encompassed by the claim language. Thss 
position, hovv'-ever, misapprehends the proper function of 
such disclosure. Mention of represer^tative compounds 
encompassed by generic claim language cleariy is not 
required by §1 12 or any other provision of the statute. But, 
where no expiicit description of a generic invention \s to be 
found in the specification (which ;S not the case here) 
meniion of representative compounds may provide an 
implicit description upon which to base generic claim 
language ... Similarly, representative examples are not 
required by the statute and are not an end in themselves. 
Rather, they are a means by which certain requirements of 
the statute may be satisfied. Thus, inclusion of a number of 
representative examples in a specification is one way of 
demonstrating the operability of a broad chemical invention 
and hence, estabiishing that the utility requirement of § 101 
has been met. !t also is one way of teaching how to make 
and/or hovv' to use the claimed invention, thus satisfying that 
aspect of § 112, 

Thus Applicants are not Nmited, as the Examiner has done, to claims 
oniy covering the specific examples thai they have described In the 
specification 

The Board's Decision has not commented on nor rebutted 
Appellants' citation to and application of In re Rohbins io show why 
their claims on appeal are enabled, inciuding those for which the 
Board has not revei'sed the Exaininer s rejections, and that the 
scope of enablen-ent in a broadly described and claio-ed invention, 
even in a chesTiical art, iS iiot limited by the represoiitative examples 
described in Appellants' Specification which is what the Board's 
Decision appears to have done. Since, enablement does not require 
invernors to predict or foresee "every conceivable and possible 
future embodiment of itheir] invention ' at the time the application is 
filed, as stated in Rexnord Corp. v. Laltram Corp (Supra), the 
examples sited in Appellants' Specification following in re Rabbins 
does not lirnit enabled claims to these examples. It is Appellants' 
position that this applies to the claims I'or which the Board's Decision 
has not reversed the Examiners rejection, it is Appellants' position 
Appeal No, 2009-003320 Page 41 of 120 Serial No.: 08./479<810 



that under the facts and circumstances of the present appNcation 
ibis applies to what the Board's Decision has indicated is allowable 
at page 7. lined 2-7, i.e. Appellants shouid not be limited to this 
scope of enablement . 

Appellants' Brief ar 8V1 page 127, iines 6-15 quoting the MPEP 



The fact that experimentation may be comipiex does not 
necessarily make it undue, if the art typically engages in 
such experimentation. !n re Certain Llm;lted-Charge Ceil 
Culture Microcarners, 221 USPQ 1165, 1174 (!nt1 Trade 
Cornm'n 1983}, affd. sub nom., Massachusetts Institute 
of Technologv v. A.B. Fortia, 774 F.2d 1 104. 22? USPQ 
428 (Fed. Cir' 1985), 

See also !n re Wands, 858 F.2d at 737. 8 USPQ2d at 
1 404 The test of enablement is not whether any 
experimentation is necessary, but whether, if 
experimentation is necessan,-'. ;t \s undue. !n re 
Angsladt. 537 F.2d 498, 504. 190 USPQ 214. 219 
(CCPA 1976). 

in the present application there is no direct evidence that anything other 
than what was known prior to Appellant^s earliest filing date is need to make 
and use sumps that come within the scope of the claims for which the 
Board's Decision has not reversed the Examiner's rejection, 



BV1 paragraph bridging pages 124 and 125, states 

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

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



Appeal No. 2009-003320 



Page 42 of 120 Seriai No.; 08/479,810 



If is undisputed that Appeilants have provided "illustrative examples or 
ierminoiogy to teach those of ordinary skill how to make and use the 
invention as brosdiy as it is claimed " (Emphasis sdded.) Thus terminology 
alone iS sufficient to satisfy enablement even In an unpredictable art. As 
stated throughout Appellants' Brief the chemistry involved m meking 
samples that come wsthin the scope of the claims that the Board's Decisior? 
has not reversed the Examiners rejection does not have to be understood 
to make samples by knovv'n methods and to test them by known rriethods. 
Thus the art of making high Tc superconductors does not have the so caiied 
unpredictability, that is undeterminability, that is associated with '"most 
chemical reactions^^ Appellants note that in re Fisher 427 F,2d 833 does 



not include ail chemica! reacfions as unpredictable, { See BV1 page 44, lines 
1-7.) 



8V1 page 232, line 14 to page 233. line 32, states: 

The CCPA in In re Angstadt, 537 F.2d 498, 503 (C.CP.A. 1976) 190 

USPQ 214 commenting on the dissent states: 

The dissents reliance on In re Rainer. 54 CCPA 1446. 377 
R2d 1006, 153 USPQ 802 (1967), is misplaced, if Rainer 
stands for the proposition that the disclosure must provide 
'guidance which will enable one skilled in the art to 
determine, with reasonable certainty before performing the 
reaction, whether the claimed product will be obtained" 
(emphasis in original), as the disseiit claims, then all 
^'expenmentation" is "undue," since the term 
"expenmentation" implies that the success of the particular 
activity is uncertain. Such a proposition is contrary to the 
basic policy of the Patent Act, which is to encourage 
disclosure of inventions aiid thereby to promote progress in 
the useful arts. 



In the present application the Examiner's position (proposition) is 
requiring what the CCPA states is not required and "[sjuch a 
proposition is contrary to the basic poiicy of the Patent Act, which is to 
encourage disclosure of inventions and thereby to promote progress in 




Appeal No. 2009-003320 



Page 43 of 120 Serial No.: 08/479,810 



the useful arts," The certainty that the Examiner is requiring ;s beyond 
what the Supreme Court requires and whaf. the Patent Ad. requires. 

The CCPA applies the Supreme Court Minerals v. Hyde 
Enablement Statement in in re Bosv 53 C O P. A. 1231 1234-1235 
(CO P,A. 1966) 149 U.S.P."Q","(BNAr789"stat^^ 
The Supreme Court set out some guidelines with 
reference to the sufficiency of a specification to disclose 
an invention in such a manner as wiii enable one of 
ordinary skiil in the art to make it in fvlinerais 
Separation^ Ltd. v. Hyde, 242 U.S. 261 (1929), at 270-- 
271: [Stating the Supreme Court Minerals v, Hyde 
Enablement statement quoted above.] 

The CCPA also cite Minerals Seoaratson, Ltd, v Hyde, 242 U S 261 in 
in re Corr, 52 CC.P.A 1505, 150S (C C.P.A 1965) 146 U.S.P Q. 
(BNA) 69 and states 'The certainty required in patents is not greater 
than that which is reasonable, having regard to the subject matter 
invoived. Minerals Separation, Ltd. v, Hyde, 242 U.S. 261." In re 
Hudson 40 CCPA. 1036 1040 fCCP-^ \ .3) 



The CAFC adopted the Supreme Court Minerals v, Hyde 

Enablement Statement in VV.L. Gore & Associates, Inc. v, Garlock. 

inc., stating: 

The district court invalidated both patents for 
indefiniteness because of its view that some "triai and 
error" would be needed to determine the "lower limits" of 
stretch rate above 10% per second at various 
terriperatures above 35 degrees C. Tt-at Vv-as error. 
Assuming some experimentation were needed, a 
patent Is not invaiid because of a need for 
experimentation. Minerals Separation, Ltd. v. Hyde, 
242 U.S. 261, 270-71, 61 L. Ed. 286, 37 S. Ct 82 (1916). 
A patent is invaHd only when those skiMed in the art 
are required to engage in undue eKperlmentation to 
practice the invention. \n re Angstadt, 637 F.2d 498, 
503-04, 190 USPQ 214, 218 (CCPA 1976). There was 
no evidence and the court made no finding that undue 
experimentation was required. 
W,L, Gore & Associates, Inc, v, Garlock, ir-ic, 721 F,2d 
1540, 1557 (Fed. Cir. 1983)220 U.S.P. Q. (BNA) 303 
(1983) (Emphasis added.) 



Appeal No, 2009-003320 



Page 44 of 120 Serial No.; 08/479,810 



14. Section 

Appellants note thai the Board's Decision ai page 20 , lines 17- 20 

in referring to the category of ciaims it has identified under Subsection 11 al 

page 1 7 states( this will be referred herein as BD Category !! Ciaims and 

the rnateriais referred to as BD Category ii Materiais) ■. 

the record before us estabiishes that the experimentation 
needed to make and test the compositions under 
consideration is merely routine, and the Examiner does not 
contend otherwise 

and at BD page 22 line 7, states; 

[only] limited and routine experimentation [is] necessary to 
make and test such materials 

It has been Appellants' position throughout the prosecution of this 

application which is restated throughout Appeiiants' Brief and Appellants' 

Replies. For example BV1 page 115 Jines 11-12 in states "[tlhe 

Examiner Cites no example of a species that comes within the scope of 

Applicants" claims that cannot be made foliovving Applicants' teaching/' R8 

page26, lines 13-19. states ■ [ijn the present Application the Examiner has 

provided not [no, sic] reason for why species that come within the scope of 

the claims rejected for lack of enableiiient cannot be made and used The 

Total Final Rejection or Examiners Answer identifies none - the Board s 

Decision identifies none. The two passages quoted above from the Board s 

Decision are stated in association with the following statement from BD 

page 20, lines 16-20, in regards to the : 

The quantity of experimentation is limited to transition 
i-netai oxides in combination with only 18 rare earth and 
rare earth-like elements or in combination with only six 
alkaline earth elements 

in regards to the Subsection II category of materials, in essence the 
combination of these three quoted sections of the Board's Decision states 
that there is a finite, relatively small number of materials In the Subsectson 11 



Appeal No. 2009-003320 



Page 45 of 120 Serial No.: 0a/47a810 



category of materiais and since only routine experimentation are necessary 
io make and lest these material, they are enabled. Appellants agree with 
this conclusion as it applies onSy to such materials, but not with the 
impiication that Appeiiants' claims (for wh;ch the Board has not reversed the 
Examiners rejections) which capture species outside of BD Category W 
Materiais are note enabled. 

As has been argued in details throughout the prosecution of this 
application and in Appeilants' Brief and Appeilants' Replies and as wiil be 
argued in detail beiow in response io the new arguments appearing for the 
first time in the prosecution of this application in BD pages 17-21 , only 
routine screening is involved in finding other species including outside of BD 
Category !i fvlateriais but Vv'hich come vvithln the scope of those claim for 
which the board has not revered the Examiner s rejeclion. Collectively such 
species Will be referred to herein as the Delta Genus. Claim for which the 
Board's Decision did not reverse the Examiner's rejeciions shall be referred 
to as Category 11! Claims.) Appellants note that their specifically made 
embodiments are species v.'ithin the scope of every claim including of each 
Category HI ClaN-ns, Appellants also note that the 80 Category 11 IVIatenals 
are a subgenus of the broadest recitation of the high Tc element of the 
broadest claims of the Category !!! Claims. Since some of the Category 111 
Claims have other limitations there Is significant overlap with those. Thus 
the Delta Genus(s) are not directed to an invention of a different kind than 
BD Category 11 Materials. There is r^o evidence that species of the Delta 
GGnus(s) cannot be made and tested In the same way as the BD Category 
1! fvlaterials which the Board's Decision has found enabled. Each Category 
HI claim has within its scope a species found enabled by the Examiner and 
a species found enabled by the Board s Decision and there is no evidence 
that any of the other species cannot be made and tested following 
Appellants' teaching, in particular the Known Principles of Ceramic 
Science Claims are explicitly iimited to what 3 person of ordinary skill in the 
art could make as of Appellants' earliest filing date. Appellants note, as 

Appeal No. 2009-003320 Page 46 of 120 Serial No.: 0a/47a810 



stated in the Brief (see Examiner's Third En3b!e?nent Statement VB3 page 
4) AppeiSants claims are not chemical composition claimss. Appellants^ 
chemica! composition claims were found anticipated over known materials 
which Inherently !^ad the high Tc property The Board s analysis appears to 
forget, that important issue, (See Examiner's Second Enebiement 
Statement VB3 pages 3 - 4.) 



1S, Section 

Appellants note that the Board's Decision at page 21 , lines 21-24 in 

referring to the category of claims it has identified under Subsection H at 

page 17 states(the 8D Category i! Claims and BD Category !! fvlateriais as 

defined above);- 

As explained above. Appellants' Specificalion provides a 
reasonable amount of direction or gudance in identifying the 
compositions in question as possessing high temperature 
superconductive characteristics. 

The impiicalion of this statement is that the In re Wands factor Ihe amount 

of direction or guidance presented ' necessarily requires the specmc 

identification of species for there to be enablement. Appellants respectfuiiy 

submit that this implication is ena error of law 

BV1 page 21 , lines 4-4, states; 

As described below no undue experirnentatsor^ is needed to 
make such species and therefore: AppNcants do not have to 
provide "guidance" on how to do experimentation to make such 
species Csuidance is only needed vjhen undue expenmentation 
would be needed without such guidance to make species by 
experiments that were not aciually performed by Applicants, 

8V1 Page 51, lines 9-18, states: 

Again as with the pateni legal terms ■predictability" and 
"unpredictability;' the patent legal term "guidance" is 
directed to "the manner and process of making and using 
[the Invention]." When the teaching of a patent applicstson 
requires undue experimentation to practice the invention, 
guidance on hovv' to carry out the experimerH can result in 



Appeal No, 2009-003320 



Page 47 of 120 Serial No.: 0a/47S,810 



enablement even though the experifnentation is not recorded 
as a performed example in the specification As noted in the 
summary of the invention section above Applicants' teaching 
identifies properties thai Appiicants' exsmpies possess 
which iater discovered species also possess. Thus 
Applicants' teaching has more than is minimaliy necessary to 
sstisfy enablement. 

BV1 page 51 , 8 lines from the bottom to page 52, Sine 4 states: 

The Board in Ex parte Jackson 217 USPQ 804 and 807 states '^a 
considerable amount of experimentation is permissible if it is merely 
routine." As stated by the Examiner the experimentation to find other 
species is merely routine. The Board in Ex parte Jackson goes on to 
state if the experimentation is not merely routine there is enablement 
'if the specification in question provides excessable amount of 
guidance with respect to the direction in which the experimentation 
should proceed to enable the determination of how to produce a 
desi.red embodiment of the invention claimed. ' 217 USPQ 804, 807. 
Thus guidance is needed when the experimentation is not merely 
routitie Since there is no evidence in the present application that 
anything other that routine experimentation is needed to determine 
other species, than specifically described by Applicants', the 
guidance provided by Applicants' teaching is sufficient to satisfy 
enabiernent. 

It is undisputed that the methods to make and test species that come within 
the scope of the claims fro which the Board has not reversed the Examiner's 
rejection were known prior to Appellants earliest filing date. Guidance is not 
predicting in advance what species will work, but iS guidance on how to 
"make a.nd use" the claimed invention as explicitly stated in 35 USC 1 12, 
paragraph one See the legal authority cited in Appellants' Brief and 
Appellants' Replies, some of which is reproduced herein, in particular in 
Section 13. If all species that come within the scope of a claim do not have 
to be foreseen in advance to satisfy enablement then the implication of the 
Boards' statement quoted above iS legal error. 



8V1 page 96, lines 19-33, state in regard to the Board's precedent Ex pare 
Jackson- 



Appeal No. 2009-003320 



Page 48 of 120 Serial No.; 08/479,810 



The Board slates at 217 USPQ 8C6 'The issue squarely raised by [ihe] 
rejection [of ciaimsj is whether or not a description of several newly 
discovered strains of bacteria having a particuiariy desirable metabolic 
property in terms of the conventionaily measured culture characteristic 
and a number of nietaboUc and physiologiGal properties would enabie 
one of ordinary skill in ihe relevant art to independently discover 
additional strains having the same specific desirable metabolic 
property, i.e., the production of a particular antibiotic " Thus Applicants' 
respectfully submit that the Board in Ex pane Jackson would find a 
disclosure enabling that penrilts "one of ordinary skill in the relevant art 
to independently discover additional" high To materials that come 
within the scope of Applicants' generic claims, in particular in view of 
the Examiners' finding that "The exar^iiner does not deny . that once 
a person of skill in the art knows of a specific type of composition 
which is superconducting at greater than or equal to 26K such a 
person of skill in the art, using the techniques described In the 
application. ... can make the known superconductive compositions," 
(Emphasis in the original,) 

The Board's Decision Is in conflict with the Board s precedent and is thus 
legal error to require knowledge in advance of species that tall outside of the 
scope of the found allov.'able by the Board's decision but within the scope of 
the claims that the Board s Decision has not reversed the Examiner's 
rejections, . 

As noted above at BD page 22 line 7, the Board s Decision acknowledges 
referring to Category 1! Materials that '(only] limited and routiiie 
experimetitation [is] necessary to make and test such materials, ' There is 
no evidence that anything other than this "limited and routine 
experimentation [is] necessary to make and test , materials" tha fail outside 
the scope of the Category H materials, but within the scope of the materials 
recited as elemeiits ot he claims for which the Board's decision hs not 
reversed the Examiners rejections. 



(({Stopped looking for guidance quotes at pacie 9T}} 



16. Section 



Appeal No. 2009-003320 



Page 49 of 120 Serial No.; 08/479,810 



The Board' Decision in the sentence bridging page 21-22 states 

For reasons deiaiied beiovv, the art of high temperature 
superconductivity is generally unpredictabie sn that there is 
generaiSy no reasonable expectation of successfuSiy 
achieving high temperature superconductivity. 

Appeiiants' disagree thai "predictability" as thai term is used in the patent 
law requires that there be a "reasonabie expectation of successfully 
achieving high ternperature superconductivity/' but means within the 
meaning of the patent law a reasonable expectation of success \n making 
samples for which ihere is a reasonable expectaiion of success in testing to 
determine if those samples have high temperature superconductivity. 
Appellants arrived ai this position in Appellants' Brief and Appellants" 
Replies by a close and detailed analysis of legal authorities. The Board's 
Decision has not responded to that analysis nor commented on it. !f ail 
species thai come within the scope of a claim do not have to be foreseen at 
the time of filing of an application (See legal authority cited in Section 13 
above, e g enablement does not require inventors to predict or foresee 
"every conceivable and possible future embodiment of [their] inveiition" at 
the time the application is filed, as stated in Rexnord Corp. v. Laitrarn Corp 
(Supra);), to satisfy enablement in the context of the present application 
ihere does not have to be a reasonable expectation of foreseeing ail 
species that have the high temperature property. Since what the Board s 
Decision states is equivalent to what the cited legal authority says iS not 
necessary, the Board's statement above is legal error The statement 
quoted from the Board's Decision above requires 'foreseeablity ' and is thus 
legal error, 

It is Appellants' position as extensively states in Appellants' Brief and 
Appellants' F^eplies that If species within the scope of a claii-ns are 
'^determinable' by experiment that only involves known methods to make the 
iiiaterialS: known methods to test the materials and there Is no evidence that 
species cannot be made by those methods, the genus claims to those 



Appeal No. 2009-003320 



Page 50 of 120 Serial No.: 0a/47a810 



species are enabled, it is Appellants' position that this ;s a predsctabie art 
because it is understood how to make and test species thai are made to 
detsmiine if those species have the desired property. Appellants evidence 
conclusively sti0V),'S ttiis BV1 page 46 last 15 Nnes to page 47, Sine 7, state 
(This IS referred to as the Poole 1988 Enablement Statement See BV3 page 
6): 

Applicants have clearly shown that oniy routine experitnentation is 
needed to fabricate other samples to practice Applicants' claimed 
invention. See the DST AFF!DAV!TS {Affidavits of Shaw of 
04/14/2005, Affidavit of Dinger of 04/04/2005 and Affidavit of Tsuei 
of 04/04/2005, Brief Attachment AM, AN and AO, respectively, 
collectively referred to herein as the DST AFFIDAVITS) Applicants 
respectfuliy disagree thai the field of High Tc superconductivity iS 
unpredictable within the meaning of the US patent lav.' as 
suggested by the Examiner, See the affidavit of Newns submitted 
04/12./2006 (Brief Attachment AP). The complex chemistry' does 
not have to be understood to fabricate samples as stated in the 
book XoDper Oxide SuDerconductors" by Charles P. Poole, et ai. 
(See 11 48 of DST AFFIDAVITS and Brief Attachment AV\0 which 
states at page 69: 

[c|opper oxide superconductors with a purity sufficient 
to exhibit zero resistivity or to demonstrate ievitation 
(Early) are not difficult to synthesize We believe that 
this is at least partially responsible for the explosive 
worldwide growth in these materials. 

Poole further states at page 61; 

iiln this section three methods of preparation will be 
descnbed, namely, the solid state, the coprecipitation, 
and the sol-gel techniques (Hatfi). The widely used 
solid-state technique permits off-the-shelf chemicals 
to be directly calcined into superconductors, and it 
requires little familiarity Vv'ith the subtle 
physicochemical process involved in the 
transfOi'iTiation of a mixture of compounds into a 
superconductor. 

It is undisputed that the materials that come within the scope of Appellants' 
claims are note difficult to synthesize and little familiarity with the chemistry 



Appeal No. 2009-003320 



Page 51 of 120 Serial No.; 08/479,810 



going on is required. Species within the scope of Appeiiants c!a;nis are 
readily deierminabie. Appeiiants take tliis to mean predictable. 

in re Wands (Supra), /,'■? re Angstadi (Supra) and Mir)era! Separation 
V Hyde (Supra) support Appeilant's position and doe not support ttieh 
Board s Decision. It is unrebutted in tlie persecution of the present 
application that species within the scope of Appeiiants cialrns for \A,'hich the 
Board has not reversed the Examiner's rejection reciting a superconducting 
element outside of the scope of a Category H material are "deterrninabie" 
by experiment tiiat only involves known methods to msake the materiais, 
known methods to test the materiais and that there is no evidence that 
these species cannot be made by those methods. The oniy issue appears 
to be whether the effort to determine them should be consisered "undue 
experimentation/' It is Appeiiaiits^ position that this is not undue 
experimentation. Since the effort to determine whether one particular 
species, which can be made and tested by known methods to dtermtin if the 
species has the high temperature superconductive propeily, is not undue, :t 
is Appellants' position that the effort to determine whether a large number of 
such species in the aggregate is not undue in re Wands (Supra), in re 
Angstadi (Supra) and ivlinerai Separation v. Hyde (Supra) support this view. 
Appeiiants' Brief and Appellants' Replies show why in re Wands supports 
their argument that their claims are enabled at BV1 pages 46. 47, 49, 69,83, 
91 111 124. 125 to128, 170, 223. aiid 224 and F^B page 62. Appeiiants' 
Brief and Appellants' Replies show why in re Angstadt supports their 
argumetit that their claims are enabled at t BV1 pages 46, 49, 70, 73, 74, 
95, S7, 98, 101 - 108 (these pages have a comprehensive discussion of this 
decisions applicability to the claims rejected in the present application), 1 28, 
135. 135, 138, 146, 152, 154. 169, 223, 224, 232 and RB pages 20, 21 and 
23. Appellants' Brief shows why Appellants" Brief refers to Minerais 
Separation, Lid. v. Hyde Minerais Separation, Ltd. v Hyde supports their 
argument that their claims are enabled at BV BV1 pages 228 to 237. 



Appeal No. 2009-003320 



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In re Wands is directed to a biotechnology snvention wherein a broad 
method claim was found enabled based ■'Only nine hybridomas [that] were 
actuaily analyzed beyond the initial screening for HBsAgbinding. Of these, 
four producBd antibodies that fell within the claims;'lri.re.V:AC;ds^..%5^^ 
731. 739 (Fad. Csr. 193Si 

In re Angstedt states "there is no magical reiation between the number of 
representative exarrples and the breadth of the claims" with respect to 
enablement !n re Borkowski. 57 CCPA 946, 962-63, 422 F.2d 904, 910, 
164 USPQ 642, 646 (1970) !llj:e.£u:igstect, 637j::,2(149S,^ 
1976) 

Not withstsndng the the invention in In re Angsfadt \s characterized as 
unpredictable a relatively small number of examples was sufficient to 
enable a very broad claim- '[ajlthough appellants' specification shows 
some 38 examples (embodiments') vvithsn the broad scope of the claims, Ihss 
number :s minute in comparison with the immense number of combinations 
of organometallic catalysts and aikylarornatic hydrocarbons within that 
scope, ^'in re Anpstadt, S37 f 2d 498, 507 (C C.P.A 1976? 

!n Mineral Separation v. Hyde (Supra) a claim was found enabled to a 
method of treating orse base on a small number of examples even though 
"Itlhe composition of ores varies iiifinstely." See the Miriera! Separation v. 
Hyde Enablement Statement above. 

The Board's Decision if applied to In re Wands (Supra), In re 
Angstadt (Supra) and Mineral Separahon v. Hyde (Supra) would find the the 
CAFC, the CCPA and the United States Supreme Court, respectiveiy, made 
an error in these decisions. This is an error of law. 

17. Section 

The Board' Decision at page 26, last line to page 27 line 4 states; 
Appeamo. 2009-003320 Page 53 of 120 Serial No.; 08/479,810 



We do not share Appeiiants' premise that the capabHity of an 
artisan to make and lest embodiments other than those allowed 
by the Examsner establishes predictabiiity in the art of high 
temperature superconductivity. On this record. Appellants have 
not shovv'-n the asserted correiation between capability and 
predictabiiity. 

Appellants' have contended that the patent law term "predictable" has the 
meaning of determinabie and has supported that by citations to lega! 
authority. The Board's Decision does not rebut Appellants' argument and 
has made no comment on that argument but only has stated what is quoted 
in the above paragraph, in in re Wands Judge Newman disagrees with thiS 
comment from the Board's Decision, BVl page 47, line 13-24, states; 



In in re Wands 858 F.2d 731, 742 (Fed. Cir. 1388); 8 U,S.P.Q.2D 
14Q0, 1408 Judge Nevi-'man concurring in part, dissenting in part 
stated "[The inventor] must provide sufficient data or authonty to 
shG'N that his results are reasonably predictable within the scope of 
the claimed generic invention, based on experimsent and./or 
scientific theory. " Thus experiment or theor>' is sufficient to 
establish predictability. And as stated above by the Examiner "a 
person of skill in the art, using the techniques described in the 
application, which included all principles of ceramic fabrication 
knovv'n at the time the application was initially fiied, can make the 
known superconductive compositions." There iS no requirement to 
know in advance ail examples enabled by their teaching. Thus the 
fieid of High Tc superconductivity -s predictable Within the meaning 
of in re Wands, Species within the scope of Applicants' cialrns are 
determsnabie without undue experimentation and by well known 
testing. 

Thus the statemsent from? the Board's Decision quoted above is lega! error 
since "predictability" can be "based on experiment and./or scientific theory" 
as stated by Judge Newman, The Board's Decision at BD page 27, !ine 
3 — 4 states "[ojn this record, Appellants have not shown the asserted 
correlation between capability and predictability," Appellant s respectfuiiy 
disagree Judge Newman in the passage quoted above establishes the 
correlation !n addition the correlation ss cleariy estabiished by the Poole 



Appeal No, 2009-003320 



Page 54 of 120 Serial No,: 0a/47a810 



1988 Enablement St3te?nent (See BV3 page 6), quoted above which states 
that little familiarity with the chemisiry involved Is required in making species 
that come within the scope of Appeiiants' claims and are not difficuit to 
synthesize. 

18, Section 

The Board's Decision at page 23 13 to page 24 line 10, is directed to 
claims 438, 440 and 536. The Board's Decision does not provide the 
required claim construction for the ' means for conducting a 
superconductive current" claim eler^ient of claims 438, 440 and 536 

The iast paragraph of BV1 page 43 states, 

!n Claims 438, 440 and 536 the 'means for conducting a 
supercor^ductive current" is in means plus furxtion form, MPEP § 
2181 Part !! states "35 U.S.C. 112, sixth paragraph states that a 
claim limitation expressed in means-plus-function language 'shall be 
construed to cover the corresponding structure described in the 
specification and equivalents thereof.'" 

Claims 438, 440 and 536 have been rejected under 35 U.S.C 112,first 

paragraph, for lack of enablement. Appellants have appealed this rejection. 

The Board's Decision does not provide a construction of the iii-iiitation 

'\means for conducting a superconductive current''. The Board is required to 

give this mearjs plus functior? limitation a construction Without the required 

construction Appellants do not know what meaning the Boai'd coiisiders this 

limitation to have and thus cannot in thiS Request for Rehearing respond to 

or rebut the Board's Decision sustaining the Exaininer's rejection of these 

claims. The Exaininer in the Total Final Action and Examiner s Answer did 

not give this mean pius function limitation a construction. This is required. 

In In re Donaldson the CAFC states- 

the PTO was required by statute to look to [the appellant's] 
specification and construe the "means" language recited in 
the ... claim ... as limited to the corresponding sti'ucture 
disclosed in the specification and equivalents thereof. 



Appeal No. 2009-003320 



Page 55 of 120 Serial No.: 08./47a810 



In re Donaldson Co.. 16 F.3ci 1189, 1195 (Fed. Cir 1994) 

In in re Feeeman the CAFC states citing In re Donaldson: 

CiairT! construction is a question of iaw which we review cie 
novo, in re Donaidson Co., Inc.. 16 F.3d 1189, 29 USPQ2d 
1846 (Fed, Cir. 1994) 

lrj..re.Freeman^.30.F..3d..l45^^^ 

In in re Baker i^ughes the CAFC states citing In re Freeman: 

ciaim construction by the PTO is a question of law that we 
review de novo^ see !n re Freeman, 30 F,3d 1459, 1464, 
31 

in re Baker Hughes Inc., 215 F.3d 1297, 1301 (Fed. Cir. 
2000) 

Appellants request the Board to provide its construction of the 
!im:tation ^'means for conducting a superconductive current'' in 
clams 438, 440 and 536 as required by the cited decisions and to 
grant Appeliants' request to reopen prosecution so that Appellants 
can properly respond to this rejection. 

The only comment that the Board's Decision make in regard to 
claims 438, 440 and 536 is m the last paragraph of page 23 and the first 
paragraph of page 24. The last paragraph of the Boards' Decision at BO 
page 23 states in regards to Appellants' argur-ieni in the Brief "(Ijt-is 
argument :s based on the proposition that claims 438, 440, and 636, 
because of their means plus function form, have the same scope as the 
claims x^'■hich are considered to be enabled by the Examiner," and states in 
the first paragraph at BD page 24 " 

This argument is unconvincing. As Appellants 
acknowledged during the Oral Hearing of 10 June 2009, the 
Sixth paragraph of 35 U.S.C. § 112 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 E.Karniner (see Hearing Transcript S-S). Therefore, the 

Appeal No. 2009-003320 Page 56 of 120 Serial No.: 08./479<810 



mere fact that the Examiner considers more narrow claims 
to be er;ab!ed is an inadequate reason f.o consider broader 
ciaims 438, 440, and 535 to be enabled. !t follows that this 
argument reveals no error in the E.xaminer's rejection of 
these claims. 

Under 35 U.S.C.112, paragraph 6, a means plus function element ss to be 
construes as limited to the corresponding structure disciosed in the 
specification and equivalents thereof. Appellants' Brief BV1 first paragraph 
stating "[tjhus since the Examiner has allowed ciaims to specific examples 
described in the specification, the claims in means plus function form can 
not be rejected as not being enabled and the rejection should be reversed'' 
construed the specific examples of Appellants' specification, i.e., the claims 
that the Examiner allowed, with the 112 paragraph six "corresponding 
structure," The Examiner did not dispute this and the Board at the ora! 
hearing. The statue mandates that the clam include equivalents The 
Board's Decision does not identify v.'hat the equivalents are and also why 
those equivalents are not enabled.. iN view of the Board's Decision 
Appellants adopted the following new constojction of the 112 paragraph six 
'corresponding structure' to be what the Board's Decision says is enabied 
at BD page 7 first paragraph, which is: 



The record of this appeal establishes that Appellants' 
Specification provides enabling support for the rejected 
ciaims 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 coinbination with (2') a rare earth element or a rare 
earth-like elemer^t or a group l\\ B elemer^t, and/or (3) an 
alkaline earth element or a group !!A eleiiient 

The statue mandates that Appellants are entitled to this claim. Appellant do 
not under stand how a 112 paragraph 5 equivalent cannot be enabled if the 
corresponding structure is not enables and the Board's Decision doe not 
explain this. Appellants request the Board to reverse the rejection of 



Appeal No. 2009-003320 



Page 57 of 120 Serial No.: 0a/47a810 



claims 438. 440 and 536 with this new ciairn construction, if boarder daims 
are subsequently found enabled, Appellants' adopted that as a construciion 
of the 12 parsgrsph six x-orresponding structure" and request reversal of 
the rejection of claims 438, 440 and 536 With that broader construction. 

Appeliar^ts request their Request the Prosecution be Reopened 
submitted concurrently herewith be granted with a statement of the Board's 
construction of the means plus function elefr^ent ('means for conducting a 
superconductive current") of these ciaims. 

19. Section 

The Board's Decision from DB page 24, hne1 1 to the end of the argument 
before the titie "Conciusions of Law" at BD page 41 the Board's Decision 
only mentions ciaim 12 in its analysis of ciaims for which the Board's 
Decision is not reversing the Examiner rejections. Appellants note that each 
claim has been appeai individuaily and argument in 8V3 are given for why 
each claim in enabled. The Board s Decision does not respond to the 
argument present for why each ciaim for which the Board has not reversed 
the Examiner's rejection 

At BD page 24 the text of ciaim 12 is quoted. Appellants not the their 
claim is directed to a superconductive elemeiit that is an "superconductive 
oxide." Appeliants note that specific embodiments reported on as having 
been fabricated and tested by undisputed known meaiis are 
"superconductive oxides." Thus those fabricated and tested species of 
Within the scope of ciaiiii 1 2 Appellants not that claim 32S which depends 
form ciaim 12 is one of the The Know Principies of Ceramic Science Ciaims. 
The text of this claim is 

CLAJy 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 11 0, 1 3t 1 32 or 367-370, 



Appeal No. 2009-003320 



Page 58 of 120 Serial No.; 08/479,810 



wherein said superconductive composition can be made 
according to l<;novvn principles of ceramic science. 

Neither the Board's Decision not the Examiner have found this claim 
enabled even though it is explicitly limited to methods of fabrication know as 
of Appeiiants' earliest filing date. 

20. Section 



As note above The Board's Decision at BD page 27, line 3 — 4 states "'[o]n 
this record. Appellants have not shown the asserted correlation between 
capability and predictability." And as noted above Appellani/s respectfuiiy 
disagree Judge Newman in the passage quoted above establishes the 
correlation, in addition the correlation Is clearly estabiished by the Poole 
1988 Enablement Statement (See BV3 page 6), quoted above which states 
that little familiarity with the cf-semlstry involved is required in making specses 
that come within the scope of Appellants' claims and are not difficuit to 
synthesize immediately following the passage quote above froin he 
Board's Decision at BD page 27, line 3 — 4 the Board's Decision goes on to 
state t BD page 27, lines 5-12: 

^'loreover, 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 exciteinent that the condensed matter community 
displays at the discovery of a new materia! that is 
superconducting at high temperature. 

(Schuller/) 

The News Affidavit (Brief Attachment AP). address the stement in Schuller 
"itjhus far, the existence of a totally new superconductor has proven 



Appeal No. 2009-003320 



Page 59 of 120 Serial No.: 0a/47a810 



impossible to predict from first principles. " Appellants Brsef at 8V1 page 
202, lines 6-11 relying on the NewsAffidavit states;. 



Thus the statement in the Schulier article in paragraph 5 of 
the Newns Affidavit (Schulier Paragraph 2 above) "Thus far. 
the existence of, a totally new superconductor has proven 
impossible to predict from first principles" was shown by the 
work of Marvin L. Cohen and Steven Louie published 
shortly al'ier the article of Schulier also to be noi totally 
accurate. Moreover, the highlighted section of the abstract 
refers to layered as a property of the materials just as 
Applicants' specification has identified layered as a properly 
of high Tc superconductors. See Applicants' original claiiTi 9. 

This is unrebutted in the Board s Decision. 



The Board's Decision goes on to stat at BD, line 1? to page 28, line 



Specificaily, Appellants urge that their predictability 
position is supported by Schuller's reference to new 
superconductor discoveries as based largely on empihcal 
approaches, intuition, and serendipity since these bases 
are typically used by scientists during the discovery 
process as evidenced by the Nevvns 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 enableiiient 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 sl<ilied scientist would have believed 
reasonably that Wright's success with a particular strain 
of an avian RNA Virus could be extrapolated with a 
reasonable expectation of success to other avian RNA 
vimses'*). 

This passage from the Board's Decision states 'Appellants have not 
established their proposition that predictability is iiidicated by the use of 
empirical approaches, intuition, and serendipity in the research and 

Appeal No. 2009-003320 Page 60 of 120 Serial No.: Oa/479,810 



Please charge any fee necessary to enter this paper and any 
previous paper to deposit account 09-04 68. 



Respectfuily submitted, 



/]^l^^^L.l...^±±ill 

jz. J' in 1 . M., 1 1 1 i: c q . 
Lead Attorney 
Reg. No. 32,053 
(914) 945-3217 

Yeen C. Tham 
Reg. No. 63,169 
(914) 945-2939 



IBM CORPORATION 

Intellectual Property Law Dept. 
P.O. Box 218 

Yorktown Heights, New York 10598 



Please charge any fee necessary to enter this paper and any 
previous paper to deposit account 09-04 68. 



Respectfuily submitted, 



/]^l^^^L.l...^±±ill 

jz. J' in 1 . M., 1 1 1 i: c q . 
Lead Attorney 
Reg. No. 32,053 
(914) 945-3217 

Yeen C. Tham 
Reg. No. 63,169 
(914) 945-2939 



IBM CORPORATION 

Intellectual Property Law Dept. 
P.O. Box 218 

Yorktown Heights, New York 10598