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IN THE UNiTED STATES PATENT AND TRADEMARK OFFICE 



in re Patent Appiication of 
Applicants; Bednorz et a!. 
Seria! No.: 08/479,810 



Date: Nov. 17, 2009 



Docket: YO987~074BZ 



Group Art Unit; 1751 
Examiner; M, Kopec 



Filed; June 7, 1995 



Appea! No. 2009-003320 

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

Mai! Stop: Appeal Brief - Patents 

Commissioner for Patents 

United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1450 



Sir; Please consider the following. 

Pursuant to 37 C.F.R. § 41 .50 {a)(2)(i) or 37 C.F.R. § 41 .50 (b)(2) 
Appellants request that prosecution be reopened in response to the Decision on 
Appeal dated 09/17/2009 (Board's Decision). 



REQUEST TO REOPEN PROSECUTJON 
UNDER 

37 C.F.R. §41.50 (a){2K0 
Or 

37 C.F.R. §41.50 (b)(2) 
IN RESPONSE TO DECISION ON APPEAL 
DATED 09/17/2009 



Appea! 2009-003320 



Page 1 of 37 



Application 08/479,810 



LIST OF 

ACRONYJVJS AND ABBREVIATIONS 
USED IN THIS PAPER 

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

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

2. FA or Final Action for the finai rejection in the Office Action dated 
10/20/2005 which is the fina! rejection which is being appealed; 

3. OA07282004 for the Office Action dated 07/28/2004. 

4. TFA or Total Fina! Action for the combination of the Final Action and 
OA07282004 which is incorporated in the Fir?al Action at page 4, 





BV1 for Appellants' 


Brief Volume 1 filed 


May 15, 


2008 


6, 


BV2 for Appellants' 


Brief Volume 1 filed 


May 15, 


2008 


7. 


BV3 for Appellants' 


Brief Volume 1 filed 


May 15, 


2008 


8. 


BV4 for Appellants' 


Brief Volume 1 filed 


May 15, 


2008 


9. 


BV5 for Appellants" 


Brief Volume 1 filed 


May 15, 


2008 



10. APPELLANTS' BRIEF for AB1, AB2, AB3, AB$ and AB5 collectively. 

1 1 . EA or Examiner's Answer for the Examiners Answer mailed August 20, 
2008; 

12. RB for the Reply Brief filed 20 October 2008; 

13. RBS1 for the Repiy Brief Supplement 1 filed October 21, 2008; 

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

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

16. Appellants' Replies for RB, RBI, RB2 and RB3 collectively; and 

17. TON for the Transcript of the Oral Hearing held 10 June 2009. 



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Application 08/479,810 



TABLE OF AUTHORITIES CITED BY APPELLAMTS 
Cases Page 

Amgen v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. 
Cir.X cert, denied, 502 U.S. 856 (1991) BV1 129. R8 9 

Brenner V. Manson. 383 U.S. 519, 148 USPQ 689 (1966) 

BV1 108, 109, 112, 136 

Continertta} Can Co. v. Monsanto Co., 

948 F.2d 1264, 20 USPQ2d 1746 (Fed. Cir. 1991) BV1 222, RBS2 10 

Cosden Oil & Cfiemicai Co. v. American l-ioechst Corp.. 
543 F. Supp. 522, 214 USPQ 244, (D. Del. 1982), 
afrdmem., 714 F.2d 121 {3rd Cir. 1983) BV1 107, 136 

Enzo Biochem, inc. v. Calgene, Inc., 

188 F.3d 1362. 52 USPQ2d 1129 (Fed. Ctr, 1999) 

BV1 124-125, RBS1 3 

Ex parte Chen, 61 USPQ2d 1025 (Bd. App. 2000) BV1 94, 95, RB 40 

Ex parte Jackson, 217 USPQ 804 (Bd. App. 1982) 

... 25, 34, BV1 50, 51, 96, 97, 99, 113. 118^119, 120, 121. 124. 127, 138, 
141. 170. 193, 210, 212, 218, 228, RB 16, 17, 18, 19, 24, 33, 37. RBS1 6 

f~iughes Aircraft Co. v. United States, 

717 F.2d 1351, 219 USPQ 473 (Fed. Cir. 1983) BV1 48, 92 

In re Angstadt, 537 F.2d 498. 190 USPQ 214 (CCPA 1976) 

BV1 46, 49, 69, 70, 71, 73, 74, 95, 97, 98, 101-108, 111, 

118, 120, 121, 128, 130, 135, 136, 138, 143, 146,152, 154, 156, 169, 218, 
223, 224, 228, 229, 232, 233, RB 8, 10, 16, 20, 21, 23, 33, RBS1 4, 6 

In re Argoudeiis, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970) RB 17 

In re Armbruster, 

512 F.2d 676, 185 USPQ 152 (CCPA 1975) BV1 103, 105, 106, RB 7 

In re Bosy, 360 F.2d 972, 149 USPQ 789 (CCPA 1966) BV1 233 

In re Bowen, 492 F.2d 859, 181 USPQ 51 (CCPA 1974) 

RB 25, 26, 28, 29, 30 

In re Certain Limited-Charge Ceil Culture Microcarriers, 
221 USPQ 1165 {Ml Trade Comm'n 1983), 



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Application 08/479,810 



aff'd. sub nam., Massachusetts Institute of Technology v. A.B. Foiiia, 774 
F.2d 1104, 227 USPQ 428 (Fed. Ctr. 1985) BV1 128 



in re Coiianni, 561 F.2d 220. 195 USPQ 160 (CCPA 1977) BVi 73, 105, 136 

In re Cook, 439 F.2d 730, 169 USPQ 298 (CCPA 1971) 

BVI 107, 110, 111, 136, 139, 141, 152, 156, RB 6, 13, 14, 15 

in re Corkili, 711 F.2d 1496, 226 USPQ 1005 (Fed, Cir. 1985) 

BVI 108, 136 

In re Corn 347 F.2d 578, 146 USPQ 69 (CCPA 1965) BVI 233 

in re Dinh-Nguyen, 492 F.2d 856, 181 USPQ 46 (CCPA 1974) RB 26, 27 

In re Donaldson Co., 16 F.3d 1189. 29 USPQ2d 1845 (Fed. Cir. 1994) 

BVI 44, RB 4 

in re Fisher 427 F.2d 833, 166 USPQ 13 (CCPA 1970) 

BV1 45, 73, 74, 75, 76-80, 81, 82, 83, 84, 85, 86, 87, 100, 101, 102, 108, 
125, 128, 135, 136. 140. 146. 147, 148, 152, 154, 156, 169, 208, 215. 
223, 224, 226. 228, 232, RB 12, 19-20, 21, 22. 23. 24. 38, 39, 40, RBS2 
6, RBS3 2 

In re Fuetterer, 319 F.2d 269, 138 USPQ 217 (CCPA 1963) RB 31, 32, 34 

In re Geerdes, 491 F.2d 1260. 180 USPQ 789 (CCPA 1974) 

BVI 97, 99, 120, 121, 122, 218, 228, RB 16, 33 

In re Giwon. 442 F.2d 985, 169 USPQ 723 (CCPA 1971) 

BVI 154. 155, RB 6 

In re Goffe, 542 F.2d 564, 191 USPQ 429 (CCPA 1976} RB 34 

In re Hogan, 559 F.2d 595, 194 USPQ 627 (CCPA 1977) 

BVI 89, 90. 107, 146, 208 

In re Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 1981 } BV1154, 155 

In re Baker Hughes Inc., 216 F.3d 1297, 55 USPQ2d 1149 (Fed. Cir. 2000) ... 13 

In re Isaacs. 347 F.2d 889, 146 USPQ 193 (CCPA 1963) BVI 170 

in re Knowlton, 500 F.2d 566, 183 USPQ 33 (CCPA 1974) ... BVI 143, 144, 147 

In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972) BVI 133 

In re MarzocchL 439 F.2d 220, 169 USPQ 367 (CCPA 1971) 

BV1 93, 94, 106, 115, RB 6, 7, 25, 26 



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Appiication 08/479,810 



In re Oelrich, 666 F.2d 578, 212 USPQ 323 (CCPA 1981) .... BV1 222, RBS2 10 

In re Robins, 429 F.2d 452, 166 USPQ 552 (CCPA 1970) BV1 113 

In re Schreiber, 128 F.3d 1473, 44 USPQ2D 1429 (Fed. Cir. 1997) BV1 221 

In re Vaeck, 941 F.2d 488, 20 USPQ2d 1438, {Fed, Cir. 1991) 

BV1 94, 124,125 

In re Wands, 858 F. 2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) 

BV1 46. 47, 49, 69, 83, 91 93, 111, 124, 125-129, 170, 223, RB 9 

In re Wright. 999 F.2d 1557, 27 USPQ2d 1510 (Fed. Cir. 1993) 

20-28, 32, BV1 87, 88, 90, 107, 129, 146, 203, 218 

Invitrogen Corp. v. Clontecti Labs., Inc., 

429 F.3d 1052, 77 USPQ2d 1161 (Fed, Cir. 2005) BV1 48, 92 

Issidorides etal. v. Leyatal., 4 USPQ2d 1854 (BPAi 1985) RB 6 

Loom Co. V. Higgins, 105 US 580, (1882) BV1 238, 239. 240, 241 

Minerals Separation, Ltd. v. Hyde, 242 US 261 (1916) BV1 228-237 

Newman v. Quigg, 877 F.2d 1575, 11 USPQ2D 1340 {Fed. Cir, 1989) 

BV1 170 

Plant Genetic Sys. V. DeKalb Genetics Corp., 

315 F.3d 1335, 65 USPQ2d 1452 (Fed. Cir. 2003) RB 12 

Rexnord Corp. v. Laitram Corp. . 

274 F.3d 1336, 60 USPQ2d 1851 (Fed, Cir. 2001) BV1 48, 69 

Sri Int'l V. Matsushita Elec. Corp., 775 F.2d 1 107, 227 USPQ 577 {Fed. Cir. 1985) 
BV1 47, 91 

W.L. Gore & Associates, inc. v, Garlock, inc. , 

721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983) BV1 233 



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Application 08/479,810 



REMARKS 



Section 1 

Pursuant to 37 C.F.R. § 41.50 {aK2)(i) or 37 C.F.R. § 41.50 (b)(2} 
Appellants request that prosecution be reopened in response to the Decision on 
Appeal dated 09/17/2009 (Board's Decision). 

The paragraph bridging pages 42 and 43 of the Decision states (This is 
referred to herein as the Limitations on Appellant's Argument in a Request for 
Rehearing); 



Notice Regarding Any Request for Rehearing 

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

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

Appellants request the prosecution be reopened since the Board's 
Decision depends on: 

1 . facts from Appellants' specification; 

2. court decisions, and 

3. arguments based on these facts and court decisions and other arguments 
that were not relied on by the Examiner in suppori: of any rejection throughout the 
entire prosecution of the present Application or in any of the Ancestral 
Applications (as identified at ABV1 page 2 last paragraph), in particular, that 



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were not relied on by the Examiner in the Final Action or the Examiner's Answer 
in support of the rejections under 35 U.S.C, 112, first paragraph, for lack of 
enablement. A list of these facts, decisions and arguments are provided below 

it is Appellants' position these new facts, decisions and arguments 
constitute new grounds for rejection or should be considered as new grounds for 
rejection. This is Appellants' position even though these new facts, decisions 
and arguments were presented and made in the Board's Decision in support of 
the same 35 U.S.C. 112 first paragraph rejections for lack of enablement of the 
Final Action, 

Appellants' request that persecution of the present application be 
reopened is proper and should be granted. Further support for Appellants' 
request can be found in a presentation made by Michael R. Fiemming, Chief 
Administrative Patent Judge of the Board of Patent Appeals and interferences of 
the United States Patent and Trademark Office (the Board) at a luncheon 
meeting of the New York Intellectual Property Law Associated on September 16, 
2009 (NYiPL Meeting), The presentation is entitled "Appellate Practice and 
Recent Developments Board of Patent Appeals and Interferences."' Judge 
Fiemming handed out a copy of his presentation. A copy is attached to this paper 
as Attachment #1 . 

!. During his presentation Judge Fiemming stated that if a decision on appeal 
of the Board sustains an appealed rejection of a final office action for 
different reasons than stated in the final office action that should be 
considered a new ground of rejection permitting the appellant to request and 
be granted that prosecution of the application be reopened. 
!i. Judge Fiemming further stated that in a decision on appeal of a panel of the 
Board in its appellate capacity is supposed to be considering: 

a. the facts, decisions and arguments that the examiner gave in support 
of the rejection in the final office action and in the examiner's answer, 

b, the facts, decisions and arguments that the appellant gave in the brief 
and reply in support of why the examiner made an error in the rejection 
in the final office action, and 



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c. based on items a and b deciding whether to sustain tlie examiner's 
rejection or to reverse the examiners rejection. 
Ml. Judge Fiemming further stated that in a decision on appeai if the panel of 
the Board relies on the facts, decisions and arguments not referred in the 
finai office action and in the examiner's answer, the panel of the Board is 
acting in such a situation as an examiner and prosecution of the application 
should be reopened at the request of the appellant. In this situation the 
panel of the Board is acting in the capacity of an examiner and has 
effectively withdrawn the final rejection. 
IV, Judge Fiemming further stated that a panel of the Board should not in a 
decision on appeal make comments that may cal! into question the validity 
or patentability of claims not finally rejected by the examiner, but should only 
enter new grounds for rejection in response to which the appellant can 
request that persecution of the application be reopened. 
The copy of Judge Flemming's presentation is in Attachment #1 does not 
explicitly state what is stated above in items !, !i, ill and IV. (This shall be 
referred to herein as Proper Grounds for Requesting Prosecution be Reopened 
or PGRPR.) Attachment #2 is a declaration of Appellant's representative, Daniei 
P, IViorris, stating that he was present at the NYiPL Meeting and that what is 
stated above in items L !!, Ill and IV is what he recollected Judge Fiemming 
stated. Attachment #3 is a declaration of Alvin Joseph Riddles stating that he 
was present at the NYIPL Meeting and that what is stated above in items L iL ill 
and IV IS what he recollected Judge Fiemming stated. 

The Limitations on Appellant's Argument in a Request for Rehearing 
prevent Appellants from introducing new facts, arguments, court or Board 
decisions, and documentary, affidavit or declaration evidence to rebut the new 
facts, decisions and arguments presented by the Board in its Decision on 
Appeal. Since the Board's Decision relies on facts, decisions and arguments not 
in the Total Final Action. Thus, Appellants respectfully submit that the Board's 
Decision is more in the nature of an action on the merits than it is a decision on 
appeal. For these reason Appellants request that prosecution be reopened 



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shouid be granted and Appellants respectfuity request that this request be 
granted. 

Appellants note Appellants' Reply states at page 5, lines 4-5. "|t]he 
Examiners' Answer is essentiaily verbatim copied from tine Office Action dated 
07/28/2004 and the Final Action." Thus the Examiner's Answer adds no new 
facts, decisions or augments not found in the Iota! Final Action. 

Section 2 

Section 2,1 

THE BOARDS' DECISION CALLS INTO QUESTION THE VALIDITY OR 
PATENTABILITY OF A CLAIM NOT FINALLY REJECTED BY THE 
EXA5WIINER 

Footnote 4 at page 7 of Th© Board's Decision states; 

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

Footnote 4 clearly states that "[cjlaims 138 and 326/138 are not included in the 
Examiner's rejection and therefore are not on appeal and are not under [the 
Board's] jurisdiction." Footnote 4 clearly calls into question the validity of claims 
138 and 326/138 not rejected by the examiner and thus not under the Board's 
jurisdiction. Consistent with the Proper Grounds for Requesting Prosecution be 
Reopened, Appellants request this application be returned to prosecution so that 
the Examiner can reject this claim for the reason given in the Board's Decision if 
the Examiner agrees with the Board's comments. Appellants would then have 
the opportunity to respond if such a rejection was made. 



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Application 08/479,810 



Section 2.2 



THE BOARDS' DECISION 
RAISES A 35 U.S.C, 112, SECOND PARAGRAPH REJECTION 
WITHOUT EXPLICITLY STATING A NEW GROUNDS FOR REJECTION 



The Board's Decision in footnote 5 at page 22 states: 



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

The Board's Decision is stating that claim 35 is indefinite under 35 U.S.C. 112, 
second paragraph. This is new grounds for rejection. Consistent with the "Proper 
Grounds for Requesting Prosecution be Reopened", Appellants request the 
Board to reject claim 35 under 35 U.S.C. 112, second paragraph and to grant 
Appellants' request to reopen prosecution or to return this application to 
prosecution so that the Examiner can reject this claim under 35 U.S.C 112, 
second paragraph, for the effective reason given in the Board's Decision if the 
Examiner agrees with the Board's comments. Appellants would then have the 
opportunity to respond if such a rejection was made. 



SectJon 2.3 

THE BOARDS' DECISION 
DOES NOT PROVIDE THE REQUIRED CLAliS CONSTRUCTION FOR 
THE 

"means for conducting a superconductive current" 

CLAIM LIMITATHON 
OF CLAIJVIS 438, 440 and 536 



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The last paragraph of BV1 page 43 states; 

in Claims 438, 440 and 536 the "means for conducting a superconductive 
current" is in means plus function form. MPEP § 2181 Part H states "35 
^■S.C. 112, sixth paragraph states that a datm 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 limitation "means for 

conducting a superconductive current". The Board is required to give this means 

plus function limitation a construction. Without the required construction 

Appellants do not know what meaning the Board considers this limitation to have 

and thus cannot in a Request for Rehearing or appeal to the Court of Appeals for 

the Federal Circuit respond to or rebut the Board's Decision sustaining the 

Examiner's rejection of these claims. The Examiner in the Total Final Action and 

Examiner's Answer did not give this mean plus function limitation a construction. 

This Is required, !n !n 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 structure disclosed in the 
specification and equivalents thereof. 

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

!n in re Freeman the CAFC states citing In re Donaldson: 

Claim construction is a question of law which we review de novo. 
!n re Donaldson Co., Inc.. 16 F.3d 1189, 29 USPQ2d 1845 {Fed. 
Cir. 1994) 

In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994). 

in in re Baker Hughes the CAFC states citing In re Freeman: 

claim 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 Bal(er Hughes Inc., 215 F.3d 1297, 1301, 55 USPQ2d 
1149, 1152 (Fed. Cir. 2000). 



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in Gechier v. Davidson the CAFC states; 

[T]be Board's opinion lacks a claim construction ... [TJlie Board 
is required to set forth in its opinions specific findings of fact and 
conclusions of law adequate to form a basis for our review, . . . 
Claim construction must also be explicit: at least as to any 
construction disputed by parties to the interference (or an 
appiicant or patentee in an ex parte proceeding). 

Gechterv. Davidson, 116 F.3d 1454, 1460 (Fed, Cir. 1997). 

Appellants request the Board to provide its construction of the limitation 
"means for conducting a superconductive current" in claims 438, 440 
and 536 as required by the cited decisions and to grant Appellants' 
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 in the last paragraph of page 23 and the first 

paragraph of page 24 which states 

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

This argument is unconvincing. As Appellants 
acknowledged during the Oral Hearing of 10 June 2009, the sixth 
paragraph of 35 U,S,C. § 1 12 requires that the means plus 
function language of the claims under review cover not only the 
corresponding structure or material described in the Specification 
but also the equivalents thereof whereby these claims are broader 



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than those considered to be enabied by the Examiner (see 
Hearing Trans cri pi 3-5), Therefore, the mere fact that the 
Examiner considers more narrow claims to be enabled is an 
inadequate reason to consider broader ciaims 438, 440, and 536 
to be enabled, it foNows ti-iat this argument reveals no error in the 
Examiner's rejection of these claims. 

This does not contain a construclion of the limitation ""means for 
conducting a superconductive current." 

SectSon 2.4 
GENENTECH'S "NOVEL ASPECT" ISSUE 

Appellants note that th© Board's Decision relies on the statement "pit is 
the Specification, not the knowledge of one sl<!Hed in the art, that must supply the 
novel aspects of an invention in order to constitute adequate enablement". 
Genentech, 108 F.3d at 1366, but does not identify w/hat the Board considers to 
be the novef feature. It is not possible for Appeiiant to respond without i^nowing 
what the Board considers to be the novel feature. Appellants request that the 
Board grant Appellants' request to reopen prosecution and state vs/hat the Board 
considers the novel feature to be. 

Section 3 

FACTS RELIED ON BY THE BOARD THAT WERE NOT 
CITED BY THE EXAMiNER 
IN THE TOTAL FINAL ACTION 
OR 

THE EXAMINER'S ANSWER 
Section 3.1 

The Boards Decision at pages 7-8 under the heading "Findings of Fact" 
and under subheading 'The Specification" states: 



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As Background Art (Spec. 1 the Specification discloses that 
prior art superconductors include transition metai compounds 
and compositions such as NbaGe vMch exhibits a Tc of about 
23 "K at ambient pressure (Spec. 3). Prior art 
superconductors also include oxides such as the Li-Ti-0 
system with superconducting onsets as high as IS-T^'K 
(Spec, para., bridging 3-4). (We take official notice that Li 
is an aikali element and that Ti is a transition metai.) 
According to the Specificalion, "{t]hese materials have 
multiple crystaliographic phases including a spine! structure 
exhibiting the high !<.,[, and] [ojther metallic oxides, such as the 
perovskite Ba-Pb-Bi-0 system[,] can exhibit superconductivity 
due to high eiectron-phonon coupling in a mixed valent 
compound" (id.). 

Neither the Total Final Action nor the Examiner s Answer refer to or relies on the 
parts of Appellants' Specification referred to by the Board in the passage quoted 
above, that is, not in bold font. The Board's Decision does not indicate where the 
Total Final Action or Examiner's Answer refers to or relies on the parts of 
Appellants' Specification referred to by the Board in the passage quoted above. 



Section 3.2 



The Boards Decision at page 8, line 3 to page 10, line 6 under the heading 
"Findings of Fact" and under subheading "The Specification" quotes various parts 
of the Specification: None of these are referred to in the Total Final Action. The 
only parts of the Specification referred to In the Total Final Action are in 
OA07282004 at 

1 . page 9 thereof refers to Specification page 3, line 20 to Specification page 
4, line 9; and 

2. page 1 1 thereof refers to Specification page 18, line 1-20. 

The Board's Decision refers to Specification page 3, line 20 to Specification page 
4, line 9; as a subpart of the paragraph bridging pages 7-8 thereof. This is the 
part of the text in bold font quoted above from the Board's Decision at pages 7-8 
under the heading "Findings of Fact" and under subheading "The Specification" 



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As stated above the Examiner's Answer is essentially identical to the Total 
Final Action 

Since the Board's decision relies on facts that the Totai Final Action does 
not reiy on, the Board's Decision is necessarily based on facts that were not part 
of the Total Final Action. Thus Appellants did not comment on in Appellant's 
Brief or in Appellants' Replies on how these facts are being used to support a 
finding on non-enablement. 

Appellants should not be required to respond to facts used to support a 
finding of non-enablement when those facts were not relied on in the Total Final 
Action to support the rejections for non-enablement for the first time in a Request 
for Rehearing, 

Section 4 

DECISiONS RELIED ON BY THE BOARD THAT WERE NOT 
CJTED BY THE EXAMINER 
IN THE TOTAL FINAL ACTION 

OR 

THE EXAMINER'S ANSWER 
Section 4.1 

DECISIONS CITED BY THE TOTAL FINAL ACTION 

Decisions cited by OA07282004 are; 

1 . In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) at page 
6, footnote 2. 

2. In re Angstadt, 537 F.2d 498, 502-503, 190 USPQ 214, 218 (CCPA 1976) 
at page 6, footnote 2. 

3. In re Coliannh 561 F,2d 220, 224, 195 USPQ 150, 153-154 (CCPA 1977) 
J. Rich at page 6, footnote 2. 

4. In re Cook, 439 F.2d 730, 735, 169 USPQ 298, 302 (CCPA 1971) at page 
6, footnote 3. 



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Application 08/479,810 



5. Cosden Oif & Chemical Co. v. American Hoechst Corp., 543 F. Supp. 522, 
555, 214 USPQ 244, 262 (D. Del. 1982) at page 6, footnote 3. 

6. In m CorkilL 711 F.2d 1496, 1501 226 USPQ 1005, 1009 (Fed. Cir. 1985) 
at page 7, footnote 4. 

7. Brenn&r v, Manson, 383 U.S. 519, 148 USPQ 689 (1966) at page 7, 
footnote 5. 

8. Ex parte Jackson, 217 USPQ 804, 806 (Bd. App. 1982) at page 10. 

9. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 
(Fed. Cir. 1999) at page 10. 

10. In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) at 
page 13. 

11. /n re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 727 (CCPA 1971) at 
page 20, 

12. /n re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 (CCPA 1981) at 
page 20 

Decisions cited by the Final Action are: 

1 , In m Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) at page 9. 

2. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 
1993) at page 11, 

Appellant's Brief and Appellant's Replies rebut how the Total Final Action applied 
in these decisions. The Board's Decision makes no comments on this rebuttal. 
Thus it is Appellants' understanding that Appellants' rebuttal overcame the Totai 
Finai Rejection's application of these decisions and thus showed that the Total 
Fina! Rejection's application of these decisions was legal error. 

Section 4,2 

DECISIONS CITED BY THE BOARD'S DECISION 



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1. In re Wright, 999 F.2d 1557, 1561, 27 USPQ2ci 1510, 1513 (Fed. Cir. 
1993) at pages 13, 34, 

2. Genentech, Ina v. Novo Nordisk, A/S, 108 F.3d 1361, 1366, 42 USPQ2d 
1001, 1005 (Fed. Cir. 1997) at page 14. 

3. In re Wands, 858 F.2d 731. 736-37. 8 USPQ2d 1403 {Fed, Cir, 1988), 
quoting In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 
1976) at pages 15, 35. 

4. Symbol Techs., inc. v. Opticom, Inc., 935 F.2d 1569, 1578, 19 USPQ2d 
1241. 1247 (Fed, Cir. 1991) at page 30. 

5. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) at page 
34. 

6. Plant Genetic Sys. V. DeKalb Genetics Corp. , 315 F.3d 1335, 1340, 65 
USPQ2d 1462, 1455 (Fed. Cir, 2003) at page 35, 

SectSoti 4.3 

DECISIONS CITED BY THE BOARD'S DECISION 
BUT NOT CITED BY THE TOTAL FINAL ACTION 

1. Genentech, Inc. v. Novo Nordisk, A/S, 103 F.3d 1361, 1366, 42 USPQ2d 
1001, 1005 (Fed. Cir, 1997). 

2. in re Wands, 858 F.2d 731, 736-37, 8 USPQ2d 1403 (Fed. Cir, 1988). 

3. Symbol Techs., Inc. v. Opticom. Inc., 935 F.2d 1569, 1578, 19 USPQ2d 
1241, 1247 (Fed. Cir, 1991). 

4. Plant Genetic Sys. V. DeKalb Genetics Corp., 315 F.3d 1335, 1340, 65 
USPQ2d 1452, 1455 (Fed. Cir. 2003). 

Section 4.3.1 

The decisions cited by the Board' Decision introduce substantial new 
arguments not contained in the Tota! Fina! Action which effectively makes the 
Decision on Appeal an action on the merits by the Board acting in its capacity or 
role as an examiner. 



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Section 4.4 



DECISIONS CITED BY THE APPELLANT 
IN APPELLANT'S BRIEF AND APPELLANT'S RELIES 

Appeilant cites numerous decisions, but does not cite Genentech, Inc. v. 
Novo Nordisk, A/S, 108 F.3d 1361, 42 USPQ2d 1001 (Fed. Ctr. 1997) or Symbol 
Techs., Inc. v. Opticom, Inc., 936 F.2d 1669, 19 USPQ2d 1241 (Fed. Cir. 1991) 
since these decisions were not referred to in the Total Final Action. These 
decisions were cited in the Board's Decision for tiie first time in the prosecution of 
tiiis Appiication. 

Section 5 

THE BOARD'S DECISION IS PRIMARILY BASED ON 
GENENTECH, INC, V. NOVO NOROfSK A/S, 
108 F.3D 1361, 42 USPQ2D 1001 (FED. CIR. 1997) 
AND 

IN RE WRIGHT, 999 F.2D 1557, 27 USPQ2D 1510 (FED. CIR. 1993) 

Section 5,1 

GENENTECH, INC, V. NOVO NORDISK, 
A/S, 108 F.3D 1361, 42 USPQ2D 1001 (FED. CIR. 1997) 

The entire argument of the Board in the Board's Decision based on 
Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 42 USPQ2d 1001 (Fed. 
Cir. 1997) is not contained in the Tota! Final Rejection or any where eise in the 
persecution of the present application or of the Ancestral Appiicalions. 
Genentech was never cited by the Examiner in the prosecution of the present 
application or in the Prosecution of the Ancestral Applications, Thus the entire 
argument of the Board in the Board's Decision based on Genentech are new 
arguments. Appellants should not be required to respond to new argumenls for 
the first time in a Request for Rehearing, To properly respond to these new 
arguments it may be necessary to cite 



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1 . to court or Board decisions not cited prior to a response to tlie Board's 
Decisions; 

2. to introduce new facts to rebut these new arguments; and 

3. to provide new declarations or affidavits to rebut these new arguments. 
For these reasons Appellant's request to return the present application to 
prosecution should be granted. 

Section 5,2 

m RE WRfGHT, 999 F.2D 1S57, 27 USPQ2D 1510 {FED. CIR 1993) 

The only reference to in re Wright in the Total final Action is in the Final 
action at the end of the paragraph bridging pages 10 and 11 there of which 
stales; 

Whether the specification would have been enabling as of 
the filing date involves consideration of Ihe nature of the 
invention, the state of the prior art, and the level of skill in 
the art. The initial inquiry is into the nature of the 
invention, i.e., the subject matter to which the claimed 
invention pertains. The nature of the invention becomes 
the backdrop to determine the state of the art and the 
level of skill possessed by one skilled in the art. The state 
of the prior art is what one skilled in the art would have 
known, at the time the application was filed, about the 
subject matter lo Vi/hich the claimed invention pertains. A 
conclusion of lack of enablement means that, based on 
the evidence regarding each of the factors discussed in 
the rejection, the specification, at the time the application 
was filed, would not have taught one skilled in the art how 
to make and/or use the full scope of the claimed invention 
without undue experimentation. In re Wright, 999 F.2d 
1557,1562, 27 USPQ2d 1510, 1513 {Fed. Cir. 1993). 

This is a paraphrasing of what In re Wright stands for. The Total final Action 
quotes no direct language from In re Wright. 

Section 5.2,1 
REFERENCES TO IN RE WRIGHT 



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FROfW! APPELLAMTS' BRIEF 



Appellant refers to In re Wright at BV1 pages 87, 88, 90, 107, 129, 146 
and 218 to rebut the Examiner's citation of In re Wnghi in the Final Action. The 
Board's Decision makes no reference to Appellants' rebuttal . Appellant 
understands this to mean that the Board agrees that Appellants' argument in 
regards to In re Wright has overcome the Examiner's argument based on In re 
Wright Sections 5.1 .1 .1 to 5.2.1 .7 quote from Appellants' Brief the Appellants' 
argument in regards to In re Wright 



Section 5.2.1.1 

In m Wright 

The following language is quoted from BV1 pages 87-88; 

The CAFC in In re Wright, 27 USPQ2d 1510 (1993) supports 
Applicants' view that a predictable art is one in which species 
within the scope of a claim under examination are determinable 
whether or not a theory of the invention is known as of the filing 
date of the application under examination. The claims under 
examination in !n re Wright are directed 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 claims which 
would provide, in varying degrees, a much broader 
scope of protection than the allowed claims. 27 
USPQ2d 160, 1511. 

The CAFC further states: 

The Examiner made reference to the difficulty that the 
scientific community 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 Wright shows that an art is unpredictable 
when persons of skill in the art do not "know how to make" 



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species that come within the scope of the claims and is 
predictable when people of skill in the art know how to make 
species within the scope of the claims based on the teaching 
of the application under examination. 

Section 5.2.1.2 
IN RE WRIGHT 

The following language is quoted from BV1 pages 90-91 ; 

The CAFC in in re V\,'right citing In re Hogan states: 



We note, however, that the issue is not what the state of the 
art is today or Vi/hat a skilled artisan today would believe, but 
rather what the state of the art was [as of applicants' filing 
date] and what a skilled artisan would have believed at that 
time, Hybritech inc. v. Monoclonal Antibodies, inc., 802 F,2d 
1367, 1384. 231 USPQ 81. 94 (Fed. Cir.}, cert denied, 480 
U.S. 947 (1987); In re Hogan, 559 F.2d 595, 604, 194 USPQ 
527, 535 {CCPA 1977). Wright's tendency to employ the 
present tense often makes it difficult to determine whether 
Wright is asserting that certain information was known prior 
to February of 1983 or simply that that information is now 
known in the art. 

in re Wright, 999 F,2d 1557, 1563 (Fed. Cir. 1993), 27 
USPQ1511, 1414 footnote 8, 

There is no evidence in the record that a skilled artisan, once they 
became aware of Applicants' discovery, could not make other 
species that came within the scope of Applicants' claims with what 
was know to such artisans prior to Applicants' discovery. The DST 
AFFIDAVITS (Brief Attachments AM to AO) and affidavits of Brief 
Attachments AH to AL identify what was known to such artisans 
many years before Applicants' discovery that such artisans would 
use as of Applicants' discovery with Applicants' teaching to make 
such other species 

Section S.2.1.3 
In re Wright 

The following language is quoted from BV1 page 107: 



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The Examiner has provided no example of a composition that 
comes within the scope of Applicants' claims that wiil work and that 
cannot be make following Applicants' teaching as of Applicants 
earliest filing date as required by In re Wright supra 27 USPQ2d 
1610, footnote 8 at page 1514, cites In re Hogan supra 194 USPQ 
527, 533 (CCCPA 1977). 

Section 5.2.1.4 
IN RE WRIGHT 

The following language is quoted from BV1 page 129; 

A conclusion of lack of enablement means that, based on 
the evidence regarding each of the above factors, the 
specification, at the time the application was filed, would 
not have taught one skilled in the art how to make and/or 
use the full scope of the claimed invention without undue 
experimentation, in re Wright, 999 F.2d 1557, 1562, 27 
USPQ2d 1510, 1513 (Fed. Cir. 1993). it is the Examiner's 
burden to show this and the Examiner has clearly not done 
so. 

Section 5.2.1.5 
REFERENCE TO IN RE WRIGHT 

The following language is quoted from BV1 page 146 

The CCPA in In re Hogan, supra, and the CAFC in in re Wright, 
supra, explicitly permit iater publications to corroborate the truth of 
an applicants' leaching. It is not necessary for Applicants to show 
that the data was generated prior to Applicants" filing date. The 
CCPA in In re Angstadt, supra, clear states this is not required. 

Section 5.2.1.6 
REFERENCE TO IN RE WRIGHT 

The following language is quoted from BV1 page 208; 

As noted above Applicants are not required, to satisfy the 
enablement requirement, to foresee ail species that come 



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Application 08/479,810 



within the scope of their claims when they can be 
delerrnmed wilhout undue experimentalion and testing. 
When the USPTO aiiows a iater daim to a species because 
of unexpected results, that does not render an eariier 
allowed genus claim to thai species not enabled and invalid. 
Thus serendipity does not result in lack of enablement. This 
is consistent with in re Hogan, supra, an !n re Wright, supra, 
which state that information developed after the filing date of 
the genus cannot be used to show enablement or iack of 
enablement. 

Section S.2.1J 
REFERENCE TO IN RE WRIGHT 

The following language is quoted from BV1 pages 217-218: 

At page 1 1 of the Final Action the Examiner further states: 

The nature of the invention becomes the backdrop to 
determine the state of the art and the level of skill 
possessed by one skilled in the art. The state of the 
prior art is what one skilled in the art would have 
known, at the time the application was fiied, about the 
subject matter to which the claimed invention 
pertains. A conciusion of iack of enablement means 
that, based on the evidence regarding each of the 
factors discussed in the rejection, the specification, at 
the time the application was fiied, would not have 
taught one skilled in the art how to make and/or use 
the full scope of the claimed invention without undue 
experimentation. In re Wright, 999 F.2d 1557, 1562, 
27 USPQ2d 1510, 1513 (Fed. Cir. 1993). 

As described above !n re Wright is directed to a 
biotechnology invention and as stated by the Board in Ex 
parte Jackson, supra, it does not apply, to the present 
application but In re Angstadt, supra, and in re Geerdes, 
supra, apply. 



For a person of ordinary skill in the art to fabricate the iater 
discovered species it is only necessary to use applicants 
leaching with what was known by a person of ski I! in the art 
at the time of Applicants' discovery. The Examiner has not 



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stated that the later discovered species cannot be made 
following applicants leaching with what was known by a 
person of skill in the art at Ihe time of Applicants' discoveiy. 
Thus under in re Wright, as discussed above, Applicants 
have enab!e[d] (Sic) their claims. 

Section 5.3 

REFERENCES TO IN RE WRIGHT 
FROM THE BOARDS' DECiSiON 

Section 5.3.1 
REFERENCE TO IN RE WRIGHT 

The following language is quoted from the Board's Decision pages 13-14: 

"Although not explicitly stated in section 112, to be enabling, 
the specfficalion of a patent [application] must teach those skilled in 
the art hovj to make and use the full scope of the claimed invention 
without 'undue experimentation.'" In re Wright, 999 F.2d 1557, 
1561 (Fed, Cir, 1993), "Nothing more than objective enablement is 
required, and therefore it is irrelevant whether this teaching is 
provided through broad terminology or illustrative examples." Id. 

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

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



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Appiicatton 08/479,810 



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

Section 5.3.2 
REFERENCE TO IN RE WRIGHT 

The foiiowing language is quoted from the Board's Decision pages 27-28: 

However, Appellants have not established their proposition 
that predictability is indicated by the use of empirical approaches, 
intuition, and serendipity in the research and discovery methodology 
of scientists. Contrary to this proposition, we regard predictability in 
the context of enablement as invoiving a reasonable expectation of 
success. See Wright, 999 F,2d at 1564 ("Wright has failed to 
establish by evidence or arguments that. . . a skilled scientist would 
have believed reasonably that Wright's success with a particular 
strain of an avian RNA virus could be extrapolated with a 
reasonable expectation of success to other avian RNA viruses"). 

Section 5.3,3 
REFERENCE TO !N RE WR!GHT 

The foiiowing language is quoted from the Board's Decision page 29: 

As rebuttal to a prima facie case of non-enab!ement, Appellants 
argue that they "have shown extensive evidence that persons of 
skill in the art can determine species within the scope of [the claims 
in this subsection] without undue experimentation" (App. Br., vol. 3, 
p. 35; see generally App. Br., vol. 3, pts, 1-8). These arguments 
and evidence are unpersuasive for two fundamental reasons. First, 
they do not carry Appellants' burden of showing enablement with 
respect to "the full scope of the claimed invention" as defined by 
the claims under consideration. Wright, 999 F.2d at 1561. 

Section 5,3.4 
REFERENCE TO IN RE WRIGHT 

The following language is quoted from the Board's Decision page 34: 



In light of the foregoing, th© arguments and evidence 
presented by Appellants in this appeal have little if any value in 



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establishing that, on the original application filing date of 22 May 
1987, a skilled scientist in this art would have believed 
reasonably that Appellants' high temperature superconductivity 
success with the mixed transition metal oxide materials 
discussed above could be extrapolated with a reasonable 
expectation of success to other materials. See Wright, 999 F,2d 
at 1 564 ("Wright has failed to establish by evidence or 
arguments that, in February of 1983, a skilled scientist would 
have believed reasonably that Wright's success with a particular 
strain of avian RNA virus could be extrapolated with a 
reasonable expectation of success to other avian RNA viruses"). 

Section 5,3.6 

REFERENCE TO IN RE WRIGHT 
m THE BOARD'S DECtStON 
CONCLUSION 



As noted above in Section 5.2 the Total Final Action quotes no particular 
language from In re Wright. The Board's Decision on the other hand quotes 
specific language and applies this quoted language to make an augment that 
the Total Final Action did not make. Appellants should not be required to 
respond an augment that appears for the first time in a decision on appeal. The 
arguments and citations to specific language from In re Wright should have been 
made no later than in the Final Action so that Appellants would have an 
opportunity to properly respond to them. Appellants request that prosecution be 
reopened so that Appellants can have an opportunity to respond by argument, 
introduction of facts, declarations and affidavits if necessary to respond to these 
new arguments. Appellants should not be required to respond to nev^ arguments 
for the first time in a Request for Rehearing. To properly respond to these new 
arguments it may be necessary to cite 

1 . to court or Board decisions not cited prior to a response to the Board's 
Decisions; 

2. to introduce new facts to rebut these new arguments; and 

3. to provide new declarations or affidavits to rebut these new arguments. 
For these reasons Appellant's request to return the present application to 
prosecution should be granted. 



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Section 6 

THE TOTAL FIMAL ACTION AMD EXAMIMER'S ANSWER 
MADE NO COMMENT ON APPELLANTS' DECLARATION AND AFFIDAVIT 
EVIDENCE 



Section 6.1 

APPELLANTS' BRIEF SPECIFICALLY STATES THE TOTAL FINAL ACTION 
MADE NO COJVIMENT ON APPELLANTS' DECLARATION AND AFFIDAVIT 
EVIDENCE 

The following language is quoted from BV1 page 114: 

The Examiner has provided no reason for why the 1.132 
Declarations of iVlitzi, Tsuei, Dinger and Shaw (Brief Attachments 
AH, A!, AJ, AK and AL) are not persuasive and the Examiner has 
made no comment on the DST Affidavits (Brief Attachments AM to 
AO) or the declaration of Bednorz (Brief Attachment AQ) or the 
Affidavit of Newns (Brief Attachment AQ). 



Section 6.2 

APPELLANTS' REPLY BRIEF SPECIFICALLY STATES THE EXAMINER'S 
ANSWER MADE NO COJVIMENT ON APPELLANTS' DECLARATION AND 
AFFIDAVIT EVIDENCE 



Appellants' Repiy states at page 5, lines 4-5, "[t]he Examiners' Answer is 
essentially verbatim copied from the Office Action dated 07/28/2004 and the 
Final Action." Thus the Examiner's Answer adds no new facts, decisions or 
augments not found in the Total Final Action, 



THE BOARD'S DECISION ACKNOWLEDGES THAT THE EXAMINER'S 
ANSWER MADE NO COMMENT ON APPELLANTS' DECLARATION AND 
AFFIDAVIT EVIDENCE 

The following language is quoted from BD, page 17: 



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

Section 6.4 



Appellants disagree that the language quoted from Board's Decision in 
Section 6.3 accurately represents the facts. 

Appellants' Reply page 3, lines 3-7 states: 

The Examiners Answer is essentially verbatim copied from 
the Office Action dated 07/28/2004 and the Final Action. The 
Examiner's Answer from page 5, line 12 to page 20, line 6 is 
essentially copied from the Office Action of 07/28/2004. The 
Examiners Answer from page 20, line 7 to page 29, line 1 1 , is 
essentially copied from the Final Action. 

Thus Appellants submit that the referred to comment "conclusory only" from page 
15 of the Examiner's Answer is referring only to Appellants' affidavits submitted 
prior to OA07282004 and not to what Appellants have referred to as the DST 
Affidavits (Brief Attachments AM to AO) which were submitted after OA07282004 
or the declaration of Bednorz (Brief Attachment AQ), which was submitted after 
the Final Action, or the Affidavit of Newns (Brief Attachment AQ) which was 
submitted after the Final Action. 

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

At page 12 of the Examiner's Answer, the first sentence of the 
last paragraph states "[tjhe Applicants also have submitted three 
affidavits attesting to the applicants' status as the discoverers of 
materials that superconduct > 26'"K." At page 15 of the 
Examiner's Answer, lines 14-15 states "3 affiants." As stated in 
the Brief in this passage the Examiner incorrectly states 
Applicants submitted three affidavits. Prior to the Office Action of 



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07/28/2004 [which is incorporated into the Final Action at page 4 
thereof] Applicants submitted the five affidavits of Brief 
Attachments AH, AL AJ, AK, AL of Mitzi, Dinger, Tsuei, Shaw and 
Dun combe, respectively. Subsequent to the Office Action of 
07/28/2004 Applicants submitted the expanded affidavits of Shaw, 
Tsuei and Dinger of Brief Attachments AM, AN and AO, 
respectively [referred to in Appellants' Brief as the DST 
Affidavits]. The expanded affidavits set forth particular facts to 
support the conciusions that all superconductors based on 
Applicants' work behave in the same way and that one skilled in 
the art can make those superconductors without undue 
experimentation, in the Answer the Examiner has not responded 
to these affidavits. In addition subsequent to the Office Action of 
07/28/2004 Applicants submitted the Newns Affidavit (Brief 
Attachment AP) and deciaration of co-inventor Georg Bednorz 
(Brief Attachment AO). [Appellants note that the Newns 
Affidavit and the Bednorz Declaration were submitted in 
response to new arguments in the Final Action and were thus 
submitted subsequent to the Final Action] In the Answer the 
Examiner has not responded to the Newns Affidavit or the 
Bednorz declaration. The Examiner has not rebutted this 
evidence (including the other evidence submitted by Applicants) 
and thus has not made a prima facie case of lack of enablement. 



Section 7 

THE BOARD'S DEClStON f^lAKES ADVERSE C05WMEMTS ON 
APPELLANTS' DECLARATION AND AFFIDAVIT EVIDENCE 



Section 7.1 

REFERENCE TO BEDNORZ AFFIDAVIT OF RECORD 
{APP. BR., VOL. 5, EVIDENCE APPENDIX, ATTACHMENT AQ) 
QUOTED FROM THE BOARD'S DECISION PAGE 28 

The Board's Decision at page 28 states: 

With respect to the Examiner's reliance on the "Exploring 
Superconductivity" article as evidencing predictability, 
Appeliants attempt to undermine this evidence via the Bednorz 
affidavit of record (App. Br., vol. 5, Evidence Appendix, 
Attachment AQ) which addresses the Bednorz quotation in this 
article (App. Br., vol. 1, p. 209). Significantly, the Bednorz 
affidavit fails to address the article disclosure which states that 
"there is no accepted theory to explain the high -temperature 



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Application 08/479,810 



[supercanducttvityl behavior of this type of compound" 
{"Exploring Superconductivity", last para.). The absence of such 
a theory supports the Examiner's unpredictability posttion. 



Appellants note that the only affidavit explicitly referenced here Is the Declaration 
Bednorz (Brief Attachment AQ), As noted above, neither the Total Final 
Rejection nor the Examiner's Answer make any comment on this affidavit. The 
language for the Board's Decision is the first time any comment has been made 
on this affidavit in the prosecution of this application 



Section 7.2 

IN THE BOARD'S DECISiON MAKE A COMMENT ON NEWNS AFFIDAVIT 
OF RECORD (APP. BR., VOL. 5, EVIDENCE APPENDIX, ATTACHMENT AP). 
BEDNORZ AFFIDAVIT QUOTED fROM BOARD'S DECISION PAGES 27-28 

The Board's Decision states at page 27-28; 

Appellants argue that the Schuiler article actually 
supports their predictability position and cite the Newns 
affidavit of record (App. Br,, vol, 5, Evidence Appendix, 
Attachment AP) as support for this argument (App. Br,, vol, 
!,p. 195-208). Specifically, Appellants urge that their 
predictability position is supported by Schuller's reference to 
new superconductor discoveries as teased largely on empirical 
approaches, intuition, and serendipity since these bases are 
typically used by scientists during the discovery process as 
evidenced by the Newns affidavit (id.). However, Appellants 
have not established their proposition that predictability is 
indicated by the use of empirical approaches, intuition, and 
serendipity in the research and discovery methodology of 
scientists. Contrary to this proposition, we regard predictability 
in the context of enablement as involving a reasonable 
expectation of success. See Wnghi, 999 F.2d at 1 564 ("Wright 
has failed to establish by evidence or arguments that. . . a 
skilled 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 viruses") 

With respect to the Examiner's reliance on the 
"Exploring Superconductivity" article as evidencing 
predictability, Appellants attempt to undermine this evidence 



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Application 08/479,810 



via the Bednorz affidavit of record (App. Br., vol, 5, Evidence 
Appendix. Attachment AQ) which addresses the Bednorz 
quotation in this article (App. Br., voi. 1, p. 209). Significantiy, 
the Bednorz affidavit fails to address the article disclosure 
which states that "there is no accepted theory to explain the 
high4emperature [superconductivity] behavior of this type of 
compound" ("Exploring Superconductivity", last para.). The 
absence of such a theory supports the Examiner's 
unpredictability position. 

Appellants note that the only affidavit explicitly referenced here is the Affidavit of 
Newns (Brief Attachment AP), As noted above the neither the Total Final 
Rejection nor the Examiner's Answer make any comment on this affidavit. The 
language for the Board's Decision is the first time any comment has been made 
on this affidavit in the prosecution of this application 

Section 7,3 

THE BOARD'S DECISION MAKE A COMMENT ON AFFIDAVITS OF 
RECORD BY MITZI, DINGER, TSUEI, SHAW, DUNCOMBE, NEWNS, AND 
BEDNORZ (SEE APP. BR., VOL. 5, EVIDENCE APPENDIX, ATTACHMENTS 
AH TO AR).NEWNS AFFIDAVIT, BEDNORZ AFFIDAVIT 

The Board's Decision pages 33-34 states: 



As support for their enablement position, Appellants 
additionally rely on the affidavits of record by Milzi, Dinger, 
Tsuei, Shaw, Duncombe, Newns, and Bednorz (See App. Br., 
voi. 5, Evidence Appendix, Attachments AfH to AR). The 
Newns and Bednorz affidavits do not support Appellants' 
enablement position for the same previousiy-given reasons 
that they do not support Appellants' predictability position. The 
remaining affidavits share common deficiencies. The Shaw 
affidavit (App. Br., vol. 5, Evidence Appendix, Attachment AM) 
is illustrative, in this affidavit, Shaw states that persons of 
ordinary skill in this art are capable of fabricating ceramic 
materials exhibiting high temperature superconductivity by 
using principies of ceramic fabrication known in the prior art 
(see e.g., paras, 8, 11, 49, 50), Such statements do not evince 
enablement for reasons explained earlier. That is, all the 
claims under consideration are not limited to high temperature 
superconductive ceramic materials. Moreover, it is the 



Appeal 2009-003320 



Page 31 of 37 



Application 08/479,810 



specification, not the knowledge of one skiiied in the art, that 
must supply the novel aspects of an invention in order to 
constitute adequate enablement. Genentech, 108 F.3d at 
1366. The affidavits relied upon by Appellants do not explain 
how the Speciftcation supplies novel aspects of Appellants' 
invention to thereby enable the full scope of the claims under 
consideration. 

Appellants note that the only affidavit explicitly referenced here is the Affidavit of 
Shaw (Brief Attachment AM). This is one of the DST Affidavits. As noted above 
the neither the Total Final Rejection nor the Examiners Answer make any 
comment on this affidavit. The language for the Board's Decision is the first time 
any comment has been made on this affidavit in the prosecution of this 
appiication. 

Section 8 

BOARD'S DECISION PRIMARILY RELIES OH AN ARGUI^ENT NOT 
JVtENTIONED IN THE TOTAL FINAL ACTION OF IN THE EXAJVJINER'S 
ANSWER 

Appellants note that for the most part the argument in the Board's 
Decision does not refer to the Examiner's argument in the Total Final Rejection 
and the Examiner's Answer and does not refer to the argument presented by the 
Appellant in Appellants' Brief and Appellants' Replies. This is evident by the fact 
that the Board's Decision makes no significant reference to those arguments. 
Since the Board's Decision makes no significant reference to the arguments 
presented in the Total Final Rejection and the Examiners Answer and in 
Appellants' Brief and Appellants' Replies, Appellants' arguments for why their 
claims are enabled have apparently overcome and have prevailed over the 
Examiner's arguments for why the claims, for which, the Board has sustained 
the rejections for lack of enablement, are not enabled. From the Board's 
Decision, since the Board is still of the view that certain claims ( the claims for 
which the Board's Decision has sustained the Examiner's rejection) are not 
enabled, the Board's Decision has introduced new arguments to support that 



Appeal 2009-003320 



Page 32 of 37 



Application 08/479,810 



view that Vi/ere not made in the Total Fina! Action or the Examiner's Answer. 



For example. Appellant's Brief and Appellants' Replies make reference to many 

iegai authorities, including two Board of appeal decisions, in particular to the 

Board's precedential decision Ex parte Jackson, 217 USPQ 804 (Bd. App. 1982) 

in support of Appellants' argument. The Board's Decision m3!<es no comment 

on Appellants' application of these legal authorities. 

The Board's Decision states at page 34: 

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



The main thrust of the argument of the Board's Decision is summaries in the 
paragraph quoted above. Neither the Total Final Action nor the Examiner's 
Answer refer to or argue "extrapolatpon] with a reasonable expectation of 
success to the other materials embraced by the claims." This is entirely a new 
line or augment that appears for the first lime in the prosecution of the present 
application in the Board's Decision, Appellants should not be required to 
respond to new arguments for the first time in a Request for Rehearing. To 
properly respond to these new arguments it may be necessary to cite 

1 . to court or Board decisions not cited prior to a response to the Board's 
Decisions; 

2. to introduce n<-)w facts to rebut these n<-)w arguments; and 

3. to provide new declarations or affidavits to rebut these new arguments. 
For these reasons Appellant's request to return the present application to 
prosecution should be granted. 



Appeal 2009-003320 



Page 33 of 37 



Application 08/479,810 



Section 9 



CONCLUSION 

For the reasons given in Sections 1-8 Appellants request that prosecution 
be reopened. 

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

Respectfuliy submitted, 



/Daniel P Morris/ 

Dr, Daniel P, iVlorris, Esq, 
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 



Appeal 2009-003320 



Page 34 of 37 



Application 08/479,810 



DECLARATION OF ALVIN JOSEPH RIDDLES 



!, AJvin Joseph RJddtes. declare that: 

1 . ! am an attorney admitted to the Bar of the State of New York. 

2. ! am admitted to practice before the United States Patent and Trademark 
Office (USPTO) as a patent attorney. 

3. My Registration Number initially as a patent agent and later as patent 
attorney before the USPTO is 17862. 

4. \ have been practicing before the USPTO initially as a patent agent and 
later as patent attorney since about 01/31/1955. 

5. My address as recorded in the list of agents and attorneys registered to 
practice before the USPTO is Candlewood !sie P O Box 34, New Fairfield. 
CT 06812. 

6. ! attended a presentation made by Michael R. Flemming, Chief 
Administrative Patent Judge of the Board of Patent Appeals and 
interferences of the United Stated Patent and Trademark Office, at a 
luncheon meeting of the New Yorl< Intellectual Property Law Associated 
on September 16, 2009 (NY! PL Meeting), The presentation was entitled 
"Appellate Practice and Recent Deveiopments Board of Patent Appeals 
and Interferences." Judge Flemming handed out a copy of his 
presentation. A copy is attached to this Declaration as Attachment A. 

7. I have the following recollection of Judge Fiemming's presentation about 
decisions on appeal by the Board of Patent Appeals and interferences of 
the United Stated Patent and Trademark Office (the Board); 

!. During his presentation Judge Flemming stated that if a decision on 
appeal of the Board sustains an appealed rejection of a final office 
action for different reasons than stated in the final office action; that 
should be considered new grounds of rejection permitting the appellant 

DECLARATION OF ALVIN JOSEPH RIDDLES 

Page 1 oil 9 



to request and be granted that prosecution of the application be 
reopened, 

!1. Judge Fiemming further stated that in a decision on appeal the pane! 
of the Board in its appellate capacity is supposed to be considering; 

a. the facts, decisions and arguments that the examiner gave in 
support of the rejection in the final office action and in the 
examiner's answer, 

b. the facts, decisions and arguments that the appellant gave in the 
brief and reply in support of why the examiner made an error in the 
rejection in the final office action, and 

c. based on items a and b deciding whether to sustain the examiner's 
rejection or to reverse the examiner's rejection. 

Hi. Judge Fiemming further stated that in a decision on appeal if the panel 
of the Board relies on the facts, decisions and arguments not referred 
in the final office action and in the examiner's answer, the panel of the 
Board is acting in such a situation as an examiner and prosecution of 
the application should be reopened at the request of the appellant. In 
this situation the panel of the Board is acting in the capacity of an 
examiner and has effectively withdrawn the final rejection. 

iV, Judge Fiemming further stated that a panel of the Board should not in 
a decision on appeal make comments that may call into question the 
validity or patentability of claims not finally rejected by the examiner, 
but should only enter new grounds for rejection in response to which 
the appellant can request that persecution of the application be 
reopened. 

8. The copy of Judge Flemmtng's presentation in Attachment A does not 
explicitly state what is stated above in item 7 and subparts i, iL \\\ and iV 
thereof but this is my recollection of what Judge Fiemming stated. 

9. Judge Fiemming could be considered to have indicated by his statements 
that this is how he would like the Board to function in the future. 

DECLARATION OF ALVIN JOSEPH RIDDLES 

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ATTACHMENT A 



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I 



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DECLARATION OF DANIEL P. MORRIS 



!, Daniel P. Morris, declare that: 

1 . ! am an attorney admitted to the Bar of the State of New York. 

2. ! am admitted to practice before the United States Patent and Trademark 
Office (USPTO) as a patent attorney. 

3. My Registration Number as a patent attorney before the USPTO is 
32,053. 

4. \ have been practicing before the USPTO as a patent attorney since 
12/13/1985. 

5. My address as recorded in the list of agents and attorneys registered to 
practice before the USPTO is P. O, Box 218, Yorktown Heights, NY 
10598. 

6. ! attended a presentation made by Michael R. Flemming, Chief 
Administrative Patent Judge of the Board of Patent Appeals and 
interferences of the United Stated Patent and Trademari^ Office, at a 
luncheon meeting of the New York Intellectual Property Law Associated 
on September 16, 2009 (NY! PL Meeting), The presentation was entitled 
"Appellate Practice and Recent Developments Board of Patent Appeals 
and Interferences." Judge Flemming handed out a copy of his 
presentation. A copy is attached to this Declaration as Attachment A. 

7. I have the following recollection of Judge Flemming's presentation about 
decisions on appeal by the Board of Patent Appeals and interferences of 
the United Stated Patent and Trademark Office (the Board); 

!. During his presentation Judge Flemming stated that if a decision on 
appeal of the Board sustains an appealed rejection of a final office 
action for different reasons than stated in the final office action that 
should be considered new grounds of rejection permitting the appellant 



DECLARATION OF DANiEL P. MORRIS 1 of 19 



to request and be granted that prosecution of the application be 
reopened, 

!1. Judge Fiemming further stated that in a decision on appeal the pane! 
of the Board in its appellate capacity is supposed to be considering; 

a. the facts, decisions and arguments that the examiner gave in 
support of the rejection in the final office action and in the 
examiner's answer, 

b. the facts, decisions and arguments that the appellant gave in the 
brief and reply in support of why the examiner made an error in the 
rejection in the final office action, and 

c. based on items a and b deciding whether to sustain the examiner's 
rejection or to reverse the examiner's rejection. 

Hi. Judge Fiemming further stated that in a decision on appeal if the panel 
of the Board relies on the facts, decisions and arguments not referred 
in the final office action and in the examiner's answer, the panel of the 
Board is acting in such a situation as an examiner and prosecution of 
the application should be reopened at the request of the appellant. In 
this situation the panel of the Board is acting in the capacity of an 
examiner and has effectively withdrawn the final rejection. 

iV, Judge Fiemming further stated that a panel of the Board should not in 
a decision on appeal make comments that may call into question the 
validity or patentability of claims not finally rejected by the examiner, 
but should only enter new grounds for rejection in response to which 
the appellant can request that persecution of the application be 
reopened. 

8. The copy of Judge Flemmtng's presentation in Attachment A does not 
explicitly state what is stated above in item 7 and subparts i, iL \\\ and iV 
thereof but this is my recollection of what Judge Fiemming stated. 

9. Judge Fiemming could be considered to have indicated by his statements 
that this is how he would like the Board to function in the future. 



DECLARATION OF DANiEL P. MORRIS 2 of 19 



I mteby doc'are tnat <AI state-ii^nfs mad« -ero n of my know!«doe ate true and 
t-at all s^ateme'n.^ made on mfcmiatmn and ool.ef ate bo!,vvcd to oe true and 
further that these s*a*<^i}on\^ w^re madA wslh tne knowledge that wfNful fabe 
sMfeme'.ts and the I ke so mace are punsshabio by fine or 17^ prison mo nt or bot^ 
unoet St^ction 100 1 of Istl^ 18 otthe Unned Stages CoJe and that such vviilfui 
td'sp staten?orft<^ made .rapatdi^e the va^.d ly of tno appi cation or paient issue<-' 
tnereon. 

Hai*^ - - ^ . -111, ' By 



DEClARATtON OF OANiEl P. MORRiS 3 of 19 



ATTACHMENT A 



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BE ON TIME 





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