Skip to main content

Full text of "USPTO Patents Application 08479810"

See other formats


IN 11IF l MFKDSl A ! FS PATENT AM) 'I RVDEMARk OI- FICE 

In it- latent \pplaation of Date Dec 10, 20<w 

Vphtants Bednot/etai Docket YO ( >S7074B/ 

Seual \o 08M79.S10 Group \it I mt 17M 

Hied June? l^s rvimmei M kopec 

Vpeal \o 2000-o ( n?20 

Fot \r\\ Sl/PFRU)\DU Tl\r LONfPOi'NDSHW 1V> HIOH TR WS1T10N 
fbMPbRAil Rfc Mb ['HODS irOR mblKlSfc WD PRbP \RA I 10 \ 

Mai! Stop \ppea! Btiet Patents 

(. ommj ssi oner for Patents 

United States Parent and Trademark Office 

P.O. Box 1450 

Alexandria. VA 22313-1450 



SUPPLEMENT I 
REQUEST FOR REHEQRING 
UNDER 
37 C.FJft.§ 41.52 (a)(1) 

Of 

Decision on Appeal dated 09/17/2009 



Sir Please con si dot the following 

Pursuant to ?7 C M< <■> 4 1 51 <a)< 1 } appellants request lthcaung of the 
Decision on Appeal dated <»° I" 2000 < B 0tJJ a\ Decision) 

The Request K>t Reheanng suhnntted on No i ( > 2009 shal! he referred to 
lies em <is the Initial Request *u the Initial Request tot Reheat imi and this papei shall it. 
refeued to as the Supplement or the Supplement Request fro ReSieaitny 



Appeal No. 2009-003320 Page 1 of 46 



Serial No.: 08/479,810 



1. Supplement Section 



Appellants in the paragraph bridging BVi pages 1 55-156 cite the United States 
Supreme Court decision in bt re Honrath 210 USPQ 68°. The Board"? Decision did not 
com men i on nor rebut this analysis it. is equally applicable to the Board's Decision as 
applied in the following paragraph 

In hi re Howarih at 210 USPQ 6S9, 6 C >2„ the United States Supreme Court citing 
Webster v. Higgim 105 US 580, 586 states in regards to patent applications that an 
applicant "may begin at the point where his invention begins, and describe what he has 
made that is new and what it replaces of the oki. That which is common and well known 
is as U'ii were written out in the patent and delineated m the drawings." In the present 
invention how to create a superconducting current was we!; known in the art before 
Applicants' discovery The processes for making the superconducting dements of the 
apparatus of Applicants' claims that carry the superconducting current is not new but well 
know prior to Applicants' discovery What is new is Applicants 1 discovery that materials 
exist having a T > 26 k. This is what Applicants are claiming, their discovery of an 
apparatus carrying a superconductive current with a I'c > 26 f 'K . In re Howarth states at. 
210 i SPO 6S9. 691 "an inventor need not ... explain every detail since he is speaking to 
those skilled in the art. What is conventional knowledge will be read into the disclosure." 
The Board s Decision has not shown what information is missing from Applicants' 
specification that is not known to person of skill in the art prior to Applicants' discovery 
that is necessary for a person of skill in the art to know in order to practice to their full 
scope the inventions of Appellants' claims for w hich the Board's Decision did not 
reverse the Examiner's rejections. Specific examples that are not specifically identified 
in Applicants' specification that have TV ■}__ 26 : '1.< that can be made according to 
Applicants' teaching are enabled according to the CCPA in Irs re Am^kidL supra.. In re 
Cook, supra. Minerals Separation V. Hyde supra and In re Fisher supra. Missing 
information cannot be knowledge m advance of species that come within the scope of 
Appellants' claims that are not specifically identified the Appellant's Specification since 
it is well settled law that a patent applicant does not have to foresee all species that come 



Appeal No. 2009-003320 



Page 2 of 46 



Serial No.: 08/479,810 



\s,f !) Jie -tn;)t i>l ' a.vUdnt swMU Vsv.vJritK Hi . rUonsH,» 3oase - 
Dco'so^ luliKMtt j'\ vhot die b^.iii' cop'V 1 tJ 'K ion aspect ol Kppcl a 
chn/is Wi\ 1 pages l^-l^o \ppellants cleaih state the it is not the method of 
making tht ptjrenaH o 1 the methods ol" test ma the mattuai but tht discovers that 
■ la e' a s e\u- hasi.v , I '<> K 



2, Supplement Section 
WSLRtf Si T tRiHOM HI Dh 

\ppel iants m the paramaph buduirm B\ 1 paaes 228-2 >7 ute the t mted States 

Snpieme Court deacon m \h>ii.fu}s i /7u/e m support of the enablement of then. 

claims Phi* applies to He Subsection ff! ciaims 1 t B<i J >nou>' i Jk not 

c-">rm,< i,: -->r vr -(>u 1 5 a v» \ s^ Vppei ar.s o so* v-^-t ■-, eeaaik atyl^ ( i?ie to s i< 

lloa.d - heuv.-i, as npKd r tK *o loss j,<„ pa a^ apN. 

Ihef <'P\ states in /«/*■ ing\h*li I 2d h^ ^>>-sn s «; t P \ l l >70) 

I SPQ 2 1 4 citing the Tinted Stated Snpieme Court decision Minerals Sep.nation f td s 

H\de 242 I S 2ol 270-71 (Mo) 

"To require disclosures in patent applications to transcend the level of 
knowledge ol" 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. 201, 270-71 
i 1916), in discussing the adequacy of the disclosure of the froth flotation 
process of ore separation. 

Equally untenable is the claim that the patent is invalid for the reason 
that the evidence 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 special problem, and it 
is ob\ ioush 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 
something to the skill of persons applying the invention, is clearly 
sufficiently definite to guide those skilled in the art to its successful 



Appeal No 200O.()U3320 Page 3 of 46 



Serial No. 0S/-47O.8K) 



application, as (he evidence ahundanih shows. This satisfies the law. 
M«wr> \. \\ hitne>. 14 V\ all. 620; l\es \. Hamilton, 92 I .S. 426, and 
( amebic Steel Co. \. Cambria Iron Co.. 185 I .S. 403. 436, 437 

[Limphasis added. | 



The teM iti bold shall be refetted heiein to as The Supteme Court Yhnetals \ H\de 
1 Enablement Statement 



In A It net ah Scpawttoti. I tJ \ H\ck Patent No 83^ J 20 (Mtneials Patent) issued 

Vw ember 6. I90o was asserted b\ the plaintiff against the defendant s method 1 he 

elaims uf this patent die directed to impio\ ements m the corKenttation uf otes h\ a 

process of or! flotation '1 he defendant asserted that the claims wcic not enabled I he 

Supreme Coutt heid that claims 1,2 3 o, "* dml i2 wetexalid Ike icason lot win 

these claims were found enabled is quoted abo\e in bold fiom /// te -bi^sraJi Claims ] 

and 12 kumd enabled h\ ikt' Supreme ( out! die 

I Ihe ht'icin-destiibed process of concenuatmg uses winch 
consists sn mtving the povuleied ote with watei adding a small 
propottion of an liquid having a piefeieiuial afiimt\ tot 
tnetdliifeious matteu iamountmy to a fj action of one peicent, on 
the oie} agitating the mixture until the oil-coated mineial mattei 
loans into a froth, and separating the ftoth from the remainder b\ 
notation. 

12 i he psoccss (>f concentiaung powdcicd ore w hich consist* m 
stipulating the muit'iais' fiom gangue In coating the nuneials 
with or! in watet containing a it action of one pet cent of oil on 
the oie, agitating the mixtuie to cause the or! -coated minora! to 
form a froth, and separating the iioth front the lemamder of the 
mixture. 

Ihe claims iouml enabled aie dueeted to "oies " The Supteme Court did not icquue the 
claims of the MineiaK Patent to be limited to the ores thai were secited in the patent oi be 
limited to a genus corresponding to what the Mmeiah Patent's Specification pun ides 
' guidance' m identihina as the term guidance ' is used m the Boaul s Decision 
Because it is well settled law that all species that come within the scope of a claims do 
not ha\ e to be foieseen m ads ance when a patent application is filed ( see the mimes ous 
legal pi ecedent cited m Appellants Bttefand Appellants' Replies eg B\ 1 patagtaph 



Appeal \o 2000-003 CO 



Page 4 of 46 



SenalNo OS'i7*>8iO 



bridging pages 47-68 citing Sri Int'l v. Matsushita Elec. Corp , 775 F 2d 11 07.. 1 121 (Fed. 
Cir. 1985); 227 USPQ 577, 5S6 "[t]he law does not require the impossible. Hence, it does 
not require that an applicant describe in his specification every conceivable and possible 
future embodiment ofhis invention. The law recognizes that patent specifications are 
written for those skilled in the art, and requires only that the inventor describe the'hest 
mode' known at the time to him of making and using the invention. 35 U.S.C. § 112" 
and BVi page 48, lines 13-23, '"Enablement does not require the inventor to foresee 
every means of implementing an invention at pains of losing his patent franchise. Were it 
otherwise, claimed inventions would not include improved modes of practicing those 
inventions. Such narrow patent rights would rapidly become worthless as new modes of 
practicing the invention developed, and the inventor would lose the benefit of the patent 
bargain. Invitrogen Corp. v. Clomech Labs , Inc., 429 F.3d 1.052, 1071 (Fed. Cir. 2005}" 
And, "jojur case law is clear that an applicant is not required to describe in the 
specification every conceivable and possible future embodiment ofhis invention." 
Rexnord Corp. v. Lai tram Corp., 274 F.3d 1 336, 134-4, 60 U.S.P.Q.2D (BNA) 1851 (Fed. 
Cir. 2001).") 

Appellants note the Board's Decision is in conflict with the United States 
Supreme Court's. Mineral Separation decision, the CCPA //; re Angstai/t decision . the 
CCPA /// re t ^ook decision and the CAFC In re Wcnuis decision when it states at DB 
page 20, lines 2-4 from the bottom, in reference to Subsection il superconductors (as 
defined at BD page 17, lines 2- 6) ~"[a]s explained above. Appellants' Specification 
provides a reasonable amount of direction or guidance in identifying the compositions in 
question as possessing high temperature superconductive characteristics" and when it at 
BD page 38, lines 1 -4 from the bottom, states '"[tjhe prior art of record in this appeal is 
limited to fabrication of mixed transition metal oxide materials of the type discussed in 
subsections I and H. None of the claims in this subsection III are limited to such 
materials" 

Initially the Board's Decision provides no legal authority for the statement that ! 'a 
reasonable amount of direction or guidance in identifying the compositions in question as 
possessing high temperature superconductive characteristics"' is necessary to satisfy the 



Appeal No. 2009-003320 



Page 5 of 46 



Serial No.: 08/479,810 



enablement requirement. There is no United Slates Federal Court decision that .suites that 

"a reasonable amount of direction or guidance in identifying" species that com within the 

scope of a claim in necessary to satisfy the enablement requirement of that claim to its full 

scope. The Board, is does not have the authority to create new law in this manner. The 

primary decisions on this the United States Supreme Court's Mhieral Separation 

decision, the ("CPA In re A/igsiaa'i decision and the ( AFC //; RE Wands have no such 

requirement B V i , page 5 1 J i nes 9- 1 4, states : 

the patent legal term "guidance'" is directed to "the manner and process 
of making and using [the invention]." When the teaching of a patent 
application requires undue experimentation to practice the invention, 
guidance on how to cany out the experiment can result in enablement 
even though the experimentation is not recorded as a perfonned example 
in the specification. 

The Board's own precedential decision Ex park- Jackson 217 USPQ 804 does not support 

the Board's Decision when it states that ''a reasonable amount of direction or guidance in 

identifying the compositions m question as possessing high tunpeumiR supei conductive 

char <taen sties' is necessary tcwitisfs the enablement icqt mem em 

BY! paiagiapn bndt>int> pages 5 i-52 states 

The Rnaid in Fx pane Jackson 21 7 t SPQ S04 and X07 states - a 
considerable amount of experimentation is permissible if it is mcicK 
routine " As stated b\ the l\ammer the cvpuiinenfation to find oihei 
species is merels loutme The Board m F\ part*, lack son giies on to 
state if the experimentation is not meieh tontine theie is enablement 
11 the specification in question pio\ ides [a reasonable see j amount of 
guidance with respect to the direction m v\hn.h the experimentation 
should proceed to enable the determination of how to produce a 
desired embodiment of the invention claimed ' 21 7 L'SPQ 804 807 
"i hus guidance is needed when the experimentation is not mereh 
routine Since thuc is no e\ uleiKe m the piesent application that 
am thing othei that routine experimentation is needed to determine 
other species, than speeificalK descubed h\ Applicants", the guidance 
provided b\ Applicants' teaching is suilicient to satisfy enablemenr 

Inn li atah states the same 

Enablement is not precluded In the necessity for some experimentation 
such as routine screening n)9 Iloueser, experimentation needed to practice 
the im entton must not he undue expen mentation n2^ "'I be ke\ word is 
'undue.' not 'experimentation.'" n2 i 



Appeal \o 2O0O-UO3.42O 



Page 6 of 46 



Serial No US-' t7 l > S10 



1 he determination of what constitute undue e^penmeutainm in a 
gi\en case requites the application of a st'iitd'iid ol teasonabieness, 
Siaung due tegtud lot the natme of die unenhon and die stale of die 
ait \nsulCo\ I'mmitl !nc (448 F 2d 872 878-7^ i(v) rSPQ 
7o2-o.M2dCu l°"?n, eon denied 404 f S 1018. iO L td 2d coo. 

S Ot oSO ( l°72)j The test is not merely quantitative, since a 
considerable amount of experimentation is permissible, if it is 
mereh routine, or if the .specification in question provides a 
reasonable amount of guidance with respect to the direction in 
which the experimentation shonldjprnceed > " ' n22 

IneWruu^ 8 c x 1 2d 7 * 1 ~r*IVd Cu 
(Fmphasts added ) 



BV'i page 102. lines 6-iO. state: 

The CCPA In re A/tgstodi further goes on to say 

having decided that appellants are not required to disclose every 
species encompassed by the claims even in an unpredictable ait such 
as the present record presents, each case must be determined on its 
own facts. 1°0 USPQ 214. 218. (Emphasis in the original). 

Thus in the present applications "f A'jppeilants are not required to disclose every species 
encompassed by {he claims." In re An^iadi. And "considerable amount of 
experimentation is permissible, if it is merely routine, or if the specification in question 
provides a reasonable amount of guidance with respect to the direction in which the 
experimentation should_proceed." /// re Wands There is no evidence in the present 
application and the Board" Decision cites no evidence that anything other that routine 
experimentation is needed to find superconductors corresponding the Subsection 111 of 
the Board's Decision that fall outside of what the Board's Decision considers enabled 
Appellants have contended throughout the prosecution of the present application and this 
appeal that only routine experimentation is needed to find species that come within the 
scope of Appellants' claims to their full scope. This is undisputed. 

In In re Wands the broadest method claim held enabled reads. 

1. An immunoassay method utilizing an antibody to assay for a 
substance comprising hepatitis B-surface antigen (HBsAg) determinants 



Appeal No. 2009-003320 



Page 7 of 46 



Serial No.: 08/479,810 



which comprises the steps of: 



contacting a test sample containing said substance comprising HBsAg 
determinants with said antibody; and 

determining the presence of said substance in said sample; 

wherein said antibody is a monoclonal high affinity IgM antibody 
having a binding affinity constant for said HBsAg determinants of at 
least 1.0 9 M- 1 . 

This claim is directed to any "antibody to assay for" any "substance comprising 

hepatitis B-surface antigen ( HBsAg) determinant!* " The is no rcquucment in If? /v 
ii'atuh tot {he appellant's specification to pnnide {as defined at BD page 17. line t>) 
' direction or guidance in identifying die compositions in question as possessing the 
"amibiKh" or "substance comprising hepatitis B-surface antigen (HBsAg) determinants" 
as the Boaid's Decision m the piesent appeal is lequiring \shen it states at BD page 
Imcs i -4 from the bottom, "[tjbc piioi art oJ iceord m this appeal is limited to fabtieation 
of mixed transition metal oxide materials of the t\pe discussed in subsections ! and II 
None of the claims in this subsection 111 ate limited to such materials " Thus the 
Boaid's Decision in the picsent appeal is m conflict \sifli In iv tf'aitth and hi rcAttgshidi 
and is thus an error of law 




H-HaJi 



! he Jinn's nit on b* u no, H U ! \ f V " 




Appeal \o 2000-003320 



Page 8 of 46 



Serial No 0$'47*>.8K) 



Hoc* ^>>i ji HP> p.sge ~ !i iioos i ■ " 1 -bo f<^u=m Mi f! ? 1 Appell tints' Specification 
[must ] provides a reasonable amount of direction or guidance in identifying the 
compositions in question as possessing high temperature superconductive characteristics." 

Moreover, the starting materials and conditions did not have to be specified for ail 
'"'antibodies" or for idl "substance comprising hepatitis B-surface antigen (HBsAg) 
determinants" for the Wands claim 1 to be found enabled. 

in re Wands .states 

When Wands' data is interpreted in a reasonable manner, 
analysis considering the factors enumerated in In re Forrnan 
leads to the conclusion that undue experimentation would not 
be required to practice the invention Wands' disclosure 
provides considerable direction and guidance on how to 
practice their invention and presents working examples There 
was a high level of skill in the art at the time when the 
application was filed, and ail of the methods needed to practice 
the invention were well known. 

H k- Wands ;.?S h 2J ~\ 7^) <i ed t j |\>?Si 

Appellants note that /// re Wands in this passage states "Wands' disclosure provides 
considerable direction and guidance on how to practice their invention and presents 
working examples." .//; re Wands doe not states (as stated at RD page 20. lines 1-3, from 
the bottom) "direction or guidance in identifying the compositions in question as 
possessing" (emphasis added) the "antibody" or "substance comprising hepatitis re- 
surface antigen (HBsAg) determinants." It is not necessary under In /v Wands for there 
to be "direction or guidance in identifying die compositions in question as possessing" the 
high Tc property. Thus the Board's Decision is in conflict with /// rc Hands and is thus 
legal enor Applying the above passage to the present application on appeal 
"[Appellants"] disclosure provides considerable direction and guidance on how to 
practice their invention [including Subsection ill superconductors] and presents working 



Appeal No. 2009-003320 



Page 9 of 46 



Serial No.: 08/-479,8f0 



temples These \sas a high lev el of ski!l m the an at the tune v\ hen the application was 
filed and ail of the methods needed to pjactite the i mention wcie vseil known * Since 
the Bo<riul\s Decision finds to the comrarv it is legal erroj 



.In re Wands states: 

\lthout>h mv entions m\ oh my nnetoorganisnis 01 othet In mg cells 
often can be enabled in a deposit, ni4 a deposit is not aluass 
necesi>ar\ to sati^fs the- enablement lequtremettt til s \o deposit is 
uecessar\ if the biological organisms can be obtained from 
readih available sources or demed from readily available 
.starting materials through i online screening that does not 
require undue experimentation n i t» \\ hethei the specification m 
an application involving h\mu ceils (heie, hvbndomas) is enabled 
without a deposit must he decided on the facts of the particular case 
.oJ.7 

Inc \\ ^ \< 2d V /"y (I ed f\i I'W, 
{Emphasis added.) 

Thus In w U amh permits an undisclosed species to be iouml enabled li it Yan be 
obtained from leadih available souices or domed tiom leadih available staittna 
matettals thiough iouhne scjeeum<i that Joes not require undue experimentation " 3 here 
is no requirement in hi re IVanth foi the 1 souices oi starting matcnais" to be desci ibed 
in the Spt'ciiicaifon cot responding to the claims on appeal it is onb teqimed that these be 
' leadih as ajlabie" and that what is claimed be ' be obtained Horn icadilv available 
sources ot derived ftom teadilv available stalling tnateuals through routine screening 
that does not require undue experimentation * In the ptesent application on appeal 
theie is no mdeuce. that species (including Subsetion HI supeieondueioTs) withm the 
scope of the daimsfoi whidi the Boaid's Decision has not reveied the 1 \ammeis 
iejeetions cannot he 'be obtained horn teadilv available souices oi denved hom teadilv 
;\\ ai fable statting inateuals through ioutme setoening that does not tequue undue 
experimentation.'* 
j In re Worlds states: 

\ppellants contend that then wtitteti specification fullv enables the 
putctice of then claimed uuention because the monoclonal antibodies 
needed to pcifotm the immtmoassav s can be made ftom readih 



Appeal \o :000-(H!3.CO Page 10 of 46 



Sena! No 08/.)7O.8tfl 



available staittng mdtenals using methods that are well known in the 
monoclonal amibodv ait Wands states that application of these 
methods to make high-ailmm IgM anti-HBsAg antibodies lequues 
onh ioutme \Cieeumg, <md that does not amount to undue 
e\ pen mentation T here is no challenge to then contention that the 
statting materials ik, mite HlKAg antigen, and mveloma tells) ate 
available to the public The PTO concedes that the methods used to 
picpate hxbndomas and to seieen them foi hsgh-atTmits IgM 
antibodies against [IBsAg weie eithei v\eli Lmmn in the monoclonal 
autsbodx ait os adequately disclosed m the 'i-S^ patent and m the 
current application. 

Ms ;c W a;\b F I 7 i h J ( n 

AppKmg this to the present application on appeal ' \ppellants attend that theti wnlten 
specification tnU\ enables the piactice of then claimed invention [including Subsection 
111 daimsj because the |high '1< supeiconductoi sj needed to {piaehoed the eiauned 
invention including the Subsection Hi claims] can be made ftom seadih available 
stat ting mait'iials nsin^ methods that die well known m the [mateuals ait in particular 
the ceiamic fabrication! ait f \ppellants] states tiiat application of these methods t*^ make 
high-[ 3\ supeiLondiictoisS leqtmes onlv routine sueenmg, and that does not amount 
to undue experimentation 1 heie is no challenge to \ Appellants'] contention that the 
staitiug mateitals |to make high K superconductors] are available to the public 1 he 
PkO concedes that the methods used to ptepaic [high f t superconductors] to sviecn 
them for [dcteimnung ti thev have a 1\ greater then ot equal to 2(s K] were eithei well 
known in the jmatenaK in paiticulai the ceiamic fabucation] art ot adequateK disclosed 
i n th c t n the cu j i en t appl i ca ti on 



RVI page ! 0 j - 1 02 notes paragraph *OofiJu DST Afftdav its (Bucf 
\ttdehment AM VN and \<>> state 

i have petsonaik made manv samples of high It supet conductors 
following the teaching of Bednoiz dml Mueller as found m then 
patent applications In making these mateitals u was not neccssarv 
to use stalling materials m stoiebtomettie ptopoiUons to produce a 
high T v snpetconduetot with insignificant see-ondan phases os 
multi-phase compositions, having a superconducting portion and a 
non-superconducting portion, where the composite was a high Tc 
superconductor Oonsequenth , following the teaching of Bednorz 



Appeal No 2000~W3320 Page 1 1 of 46 



Serial No. 08/479,810 



and Mueilei and principles of ceiatinc science known prior to then 
disa>\ei\ 1 made, and pes sons of skill m the ceiamtc aits weie 
able to make, high '1, supeiumduekus without exerting extreme 
caie m piepaimg the composiuon Thus 1 made and persons of 
skill m ihc ceiamic aits were able to make high K superconductors 
following the teaching of Bednoiz and Mueilei without 
e\peiinieuta»on bcumd what was well known to <i person of 
Oi dinars skill m the ceiamsc arts prior ro the discovers b\ Bednot/ 
and Mueller. 



This is uncontested. 

BV1 paye i "3 pauiiuaph S notes paragraph 8 of the DS1 Affklauts f Buef 

Attachment \M Wand AO) stale 

Once a pes son of skill m the art knows of a specific t\pe of 
composition desuihed in the Bt-dnorx-Mueikt application which is 
supciconducung at greater than or equal to 2tv k such a person of 
skiii m the att using the techniques described in the Bednoi/- 
MmJiet .application, which mdikks ail pnuctpks ol ceiamic 
fahncdtion known at the tune dre application was msttaiix filed, can 
make the compositions encompassed h\ the claims oi the Bednotz- 
Mueller application, without undue expenmentdtton oi without 
lequumg myenuin besond that espected of a person of si- ill tn the 
att of the fabrication of cei am tc nuifcnah j Ins is w h\ the w oik, of 
Bcdnor? and Mueikt was icpioduced so quickh after their diseoxerv 
and wh\ so much additional work was done m this field withm a 
shoit peiiod afiei thou discoxen Bednoi/ and Muellei's disco\er\ 
was first leported m Z Ph\s B 64 page 189- i ( >* (i^'O) 

This is uncontested, 

Bl) page lines 1 -4 fiom ihe bottom stales v [tjhe pnoi an of lecoid m ihis 

appeal is limited to fabrication of mixed jiansuion metal oxsue materials of the rvpe 

discussed m subsections 1 and LI None of the claims in tins subsection III die limited to 

such materials ' 1 his is an error of fact B\ I paragraph 12 of pages 174-171 note Dn f 

'\ifida\ its state at paiagiaph 12 

The geneiai pnncipks ot cesannc science refeued to b\ Bednor/ and 
Mueller m then patent application and known to a person of oidmai\ skill 
m the ceiamu fabtication ait can be found m main books and articles 
published before then dtsco\ety pnontv date (date of films of then 
Puropeau Patent Oiik'e patent application I PO 021^4} \1 lanuan 20 
19S7) and initial 1 s \pphcatton films; date (Max 22 WfO \n 



Appeal \o 2000-003 CO Page 12 of 46 



Sena! No uS/4 7<\810 



e\empldi\ list of books describing the guiutai piinctpies of ceramic 
fabrication are: 

a) InttoduUton to Cei amies Kmgeisetai Second 
fcdttion, John \\ iic\ & Sons, 1976, tn particuiai pages ^-20 
2(>V-3 h\ 3^1-447 and 448-51 \ a cop\ of winch is ui 
Attachment B. 

[■>) Pohn Dieieetiics ami Hiesr \ppheations Burfoot et 
al Innerssrv ufCdliioima Press i°70, hi pdrtienia.! pages 
1 i-i \ a cops of which is in Kftathment C 

c» Ceramic Processing Reiote hung, On<vla et ai 
John Wiles & Sons, WS, the enure book a cops of which 
is in Attachment D. 

d) Sfiuetuic i'topei ties and Ptcpaidtion of S\ro\ skik- 
Hpe ( ompounds F S Oalasso Pet gam on Press h'cO, tn 
particuiai paacs l^ ( >-18o, a cops of winch is m \ftachment 

:e. 

1 hese t t'tt-i enecs ucfo pieuou&K submitted with the 
UikidA it oi Thomas Shaw submitted Decembci 

B\ i pages ]f^~\7^ pafagfaph H notes that patagtaph H of the DST Mlidasifs list an 
e\emp!at\ list of articles applwng the genera! pttnciples of cetamtc labtication oj DST 
\ffidd\it pdiagiapl) 12 to the ts pus of materials dusenhud in Appellants Specification 



B\ i page 18 > paiagiaph >1 notes that Ds f paiagiaph 31 refers to the book "Sti name 
1'Kipeittes and Prepaianon of Pen>sskiie-hpe t (impounds" b\ f > Ualasso published 
in 1°<V> v\Suuh is Brief Xttadtmunt i 



B\ i page 18"} paragraph >2 notes that DST pdiaguph 32 refeis to the standatd reference 
"1 andholt-Bomstetn". \olumn 4, "Magnetic and Othei Pioperties of Oxides and Related 
Compounds Rait V (j'>70> (See Bnef Attachment M 

B\ I page 184 paragraphs 3^ and i4 notes that DST Pdtdgidph of each DST 

ATI ID AY! F ieierence the standard refeienee "I dndholt-Bornstein Yoinmc \ Fetio- and 

\nti ferroelectric Substances" ( l ( >o (i ) (Sec Brief \ttaehment P) 



Appeal \o 2000-003 CO Page 1 3 of 46 



Sena! No uS/4 7<\8IO 



B\ 1 pat;c l«5 paiamaph *6 notes that DN r paragiaph l«>ot\odi DS1 <UHIH\ if 
leiernce the book "( ivstal Stmctuies" Volume 4 hs Ralph W G Wxtkoii fmersueiKe 
Publishers l^ot) (See Brief \tiachnteut R) 

B\ ] page i 80- 1 87 pai.igi.iph V) notes that par.igi.iph 39 of each 1)S 1 \1 f 11) \\ 1 f 

reference the following articles: 

(1) Brief Attachment V - "Mixed bismuth oxides with layer lattices", 
B. AunviHiuN. Arkiv Kemi L 46.3, (1950). 

(2) Brief Attachment W ~ "Mixed bismuth oxides with layered lattices 
B. Aurivillius, Arkiv Kemi I, 499, (1950). 

(3) Brief Attachment X - "Mixed bismuth oxides with layered lattices 
". B. Aurivillius, Arkiv Kemi 2, 519, (1951). 

(4) Brief Attachment Y - "The structure of Bi>NbO?F and 
isoraorphous compounds", B. Aurivillius, Arkiv Kemi 5, 39, (1952). 

BV1 page 189 paragraph cites paragraph 45 of each DST AFFIDAVIT which references 
Brief Attachment AA the Powder Diffraction File Index. 

The prior art references identified in DST Affidavits paragraphs 12, 3 1, 32, 33, 
34 >f> ^° and 4> v\ inch are of jeuird, are not ' limited to fabi tc.it ton oi mixedjiansition 
metal oxide materials of the t>pe discussed in subsections 1 and If as states at DB page 
3.S, lines I -4 tiom the bottom which is thus an euoi ot tact 

Relumnv: the Supreme ( out I s \{i> tenth St, point ton i. H\Je decision, the claims 
of MineiaK Patent mi. Hide within that stupe "oies* desenbed in the patent, oies know b\ 
otheis and not desutbed m the patent, ores not set discoxeied and, moieosei, would 
mdude within then su>pe an oto t\ pe matetials that was not natmalh occurring, hut 



Appeal \o 2000-003 CO Page 14 of 46 



Sena! No us/4 7<\810 



which couici be made by man. The Supreme Court states as quoted above in the 
Supreme Court Minerals \ Hyde Enablement Statement "[t]he composition of ores varies 
infinitely."' The patent applicant was not required to describe the infinite variation of the 
cues in the patent to genericaliy claim an ore and for this generic claim to be enabled for 
all ores. The oniy specific description in the Minerals Patent of an ore is at Col L lines 
SO - 12 which states ""[fjhis invention relates to improvements in the concentration of ores, the 
object being to separate metalliferous matter,, graphite, and the like from gangue by means of 
oils, fatty acids,: or other substances which have a preferential affinity for metalliferous matter 
over gangue" and at Col. 2, lines 70 - 76. "The following is an example of the application of 
this invention to the concentration of a particular ore. An ore containing ferruginous 
blende, galena, and gangue consising of quartz, rhodonite, and garnet is finely powdered 
and mixed with water containing a fraction of one per cent, or up to one per cent of a 
mineral acid or acid salt, conveniently sulfuric acid or mine or other waters containing 
ferric sulfate."' The reason given by the Supreme Court, as quoted above in The Supreme 
Court Minerals v. Hyde Enablement Statement, for why the generic claims covering an 
infinite number of species were enabled is "['l]iie process is one for dealing with a large 
class of substances and the range of treatment within the terms of the claims, while 
leaving something to the skill of persons applying the invention, is clearly sufficiently 
definite to guide those skilled in the art to its successful application, as the evidence 
abundantly shows. This satisfies the law." That there is a large class (infinite in number) 
of substances within the scope of the claim that may not be specifically described, and 
where the specification only describes a small number of preferred embodiments, does 
not render the claim not enabled The Supreme Court clearly says 'leaving something to 
the skill of persons applying the invention is clearly sufficiently definite to guide those 
skilled in the art to its successful application."' Moreover, there is no certainty that the 
claimed method in the Materials Patent would work for every ore until it was 
experimentally determined to work for a particular ore. This did not render the claims 
not enabled. !t is clear that the Supreme Court did not find that it was necessary to know 
what ores the process worked for in advance since this was experimentally determinable 
by techniques known to persons of skill in the art following the teaching in the Minerals 
Patent Thus the patent applicant of the Minerals Patent was not required to foresee ( or 



Appeal No. 2009-003320 



Page 1 5 of 46 



Serial No. 08/479,810 



predict m Hit' sense used b\ die Ruatd s Decision of the pieseut application) ail species 
that came \ssthm the s^ope of the Muiciais Patent claims The same is tme of the claims 
undet ripped! herein and tor which the BodHfs Decision has not rexersed the r\aminer s 
(ejections as not enabled Hie Board s Decision states in the paragraph budging pages 
2^-2^ page 2" lines 1- 1 ! m regatds to the Subsection 111 supett.cnidui.tcH mateuals and 
claims: 



\\ htie Appellants' Specification pi os ides icasonable guidance to* the 
tnued transition metal oxides discussed preuoush, there is 
insufficient if am guidance m the specification for the othei 
ntatenais embraced bs the claims undei ie\iew asconectls indicated 
hs the Fvimtnei * uv \ns 2>-2 1) Foi example, the Specification 
provides 2 ; pages of disclosure concerning these mixed transition 
metal ovides and then constituent dements f j e , transition metals 
sate eatth and taie caith-iike elements and alkaline earths) but does 
not pros ide am disclosure at all of making high tempeiatuie 
supeieonductois fiom ans oihei speed tea! Is identified elements <S\y 
< "ivnentcch. iOS 1 3d at i ion ("\\\ |hen theie is no disclosure of ans 
specific stamma materia! or am of the conditions under which a 
process can be earned out undue experimentation is required") 
Under these circumstances, u e are uucom inccd bs Appellants' 
argument that the ! Aammei has Sailed to establish a puma facie ease 
ot non-enablemeiU tot die claims discussed m this subsection 

As stated in the Initial Request Appellants note thai the Board s Decision misapplies 
( k'tu-nu'tk I he i mted states Sups erne { ourt in \ /ma ah ^cpaudton i }/\ do found a 
claim enabled that included vothin its scope 1 composition of otes [that] \ anes mfintteh . 
each one presenting its special problem (see Mines ah Sepatation \ 1 Kde Enablement 
Statement above) based on Mmctal Patent Coi 2, hues "0- "*o, and desenptton m the 
Minerals Patent of an or at (. ol 1 lines So 12 Ihus 8 hues weie sufficient to enable 
a claim the included vwthm its scope ""composition of >ires [that] \anes mfimteh each 
one presentmg its special problem " Thus the 23 pages of Appellants' Specification is 
sufficient to enable the Subsection 111 claims e\en though as stated bs the Supieme Court 
in \h>icntl ScpamtiO'i v Ihdi.' "it is obvtousK impossible to speeds m [an Appellants' 
specification] the precise tieafment which would be most successful and economical tn 
each case" in mal mg and testing each species that comes with in the scope ot \ppellants 



Appeal \o 2O0O~w3.i2O Page 16 of 46 



Sena! No 08/.)7O.8tfl 



Subsection III claims finis it is not fata] to the enablement of Appellants' Subsection Hi 
claims that Appellants Specification " docs nor provide an\ disclosure at all of making 
high tempeiature superconductors from anv other speeificailv identified elements" <ks 
stated m the BoaidV Decision in the passage quoted above tt s cleat that in A/wm/ 
\ puuttiott \ ll\Je the 1 'mted States Supreme L ourt found that Jt uas not lata! to the 
enablement of a claim that included within its scope an infinite numbei of unspecified 
species The Roaid s Decision is legal enoi siikc it is m conlhct with the Supfeme (.oust 
Decision in Mineral Separation v H\iL and has misapplied the r \FC decision m 
Genentech. 

Appellants have provided abundant evidence to show that persons of skill in the 

art knows how to make species of materials that can be tested to determine if they have 

the high To property. The Examiner has acknowledged this at page 8 of the Final Action 

where the Examiner states. 

The Examiner does not deny that the instant application includes "all know 
principles of ceramic science", or that once a person of skill in the art knows 
of a speciiic lype of composition which is superconducting a. t grea ter than or 
equal to 2oK, such a person of skill in the art, using the techniques described 
in the application., which included al! principles of ceramic fabrication 
known at the time the application was initially filed, can make the known 
superconductive compositions. The numerous 1.132 declarations, such as 
those of Mitzi, Shaw, Dinger and Duncombe, and the Rao article, are 
directed to production of know superconductive materials. (Emphasis in the 
original) 

The Boaid s Decision does not iebut this h is uncontested that pusons ul oidtnaiv skill 
in the- ait know how to make and test species that tome within the seope of all of 
Appellants' claims ( nu. Hiding Subsection 111 daims) to then lull scope Ihete :s no 
e\ ulenee to the contrarx Theie is no es idence that these is a species if high T ( 
supetcosiducfoi that cannot be made accotdtng to \ppellants teaching 1 his statement 
has been tefesied to in the Buef \ olume 4 as the Lxammef s t nst Enablement Statement 
It is umebmted that persons of skill m the ut know how tii test mdtenai to detetmme 
whether they have a T c greater than or equal to 26 K. 



Appeal No. 2009-003320 Page 1 7 of 46 



Serial No.: 08/479,810 



It isdeai iioin tSie Mi'/aa/s Seftouuon, I hi i Ihtk' Nupi erne Court decision that 
experimental dett*! mi nation of species that come within the scope of a claim satisfies the 
enablement lequuement Phis ks dear as quoted abo\ e in the Siiptcme Court Miueials ^ 
H\de fcnablemeut statement in which the- Nupieme Court states "[e]qualh untenable is 
the claim that the patent is iu\ a! id Sot the reason that the e\ idenee show s that when 
ditYeient ores aie treated pidimman tests must be made to determine the amount of oil 
and the extent oS agitation necessary m otdet to obt'im the best tesuits Such \ dilation of 
ueatment must be withm the scope of the claims and the certaintv winch the Saw lequnes 
m patents ts not yi eater than is seasonable, ha\tng reg.it d to then subjeet-tnattet " h ts 
deai fiom fhe evidence ptesented b\ Appellants thai pet sous uf skrSl m the art know how 
to make mateuals and test them for the high f ( ptoperts YV ith icgard to this subject 
matter what the Boaid s Decision is requiring in the piesem application ks unreasonable 
and fxwond 1 the ceitamt\ whicli the iaw requires m patents " !t is eieas fotm the 
Nupieme Court decision m Afiticnds ^cftouuon, I lei i. fhJe 242 V S 2ol that it is- not 
nectssan tor the patent applicant to know m advance what matcnais i \>ies" m the 
Vliuetais Separation Patent) the claimed process is dpphcahic to and v\futt the value of 
pajameteis t amount oj oti and degiee of agstatson) ate m ads ance It is thus not necessatv 
for a patent applicant to pi<mde a \iisdosure of spcetik starting rnatetiais and 

conditions under which a piocess can be earned out for e\ej\ species that eomes 
vMthtn the scope of Subsection 111 claims as the Board's Dcusion rs requiting This js <in 
eiioi oj Saw 1 he\ can be e\penmentail\ deteinuned '1 Suit the appheant had no t!ieoi\ 
to predict these patametets tn <id\<itice making these experimental measutements d^es 
not lender the claims not enabied As stated in the Brief \ olmne 1 the contempoiars 
tt'im of 'piedtctablc and unpiedietabSe dm" in patent decisions does not mean 
theorettc.ii prcciiclahjlus % and does mean determinable b\ theon or expenment in 

Sep<.f unoti / '// v N\iL\ 242 I S 2oldeterminabiht> is ptouded b\ 
expeument The Supieme Court sd\ s this ks clear!} sufficient!) definite to guide those 
skilled ui the ait to its successful application Sins satisfies tSie law " } ollowmg the 
Supreme Comt Minerals \ IKde Fnabiement Statement Applicants' teaching "satisfies 
the .law. 



Appeal No. 2009-003320 Page 1 8 of 46 



Serial No.: 08/479,810 



The Board's Decision improperly applies this quote from (h'tk'fifech, 108 F 3d at 
i 366 "[Wjhen there is no disclosure of any specific starting material or any of the 
conditions under which a process can be carried out. undue experimentation is required " 
Under these circumstances, we are unconvinced by Appellants' argument that the 
Examiner has failed to establish a prima facie case of non-enablemetit for the claims 
discussed in this subsection." (jaicntevh applies this language to the situation where 
there is no species that comes within the scope of the claim that is enabled. The 23 
pages of Appellants" Specification that the Board's Decision says are limited to 
Subsection i and !I species are species that come within the scope of the Subsection iff 
claims.. . There were no such species in (ienaiwch. Thus the Board's application of this 
language from (.k'ncmech is an error of law. 

In (fL'fienft-ch the C AFC states in regards to the claim under review identifying the 
"novel aspect'' of this claim in comparison to of an earlier filed application stating "[t]his 
claim differs from the claim adjudicated in prior case in reciting that the encoded protein 
[recited in the claim under review] has an additional amino acid sequence and includes 
the step of cleaving this conjugate 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 cleavable fusion expression h>k< uoeh, bo s \,ho V>K>ek 
\S >M u I i ?t h*"} f !m» the CMC has sp.uikalK identified 

what it considered to be the "novel aspect" of the claim in Gcncnlech In the Initial 
Request for Rehearing Appellants noted that the Board's Decision does not identify what 
the Board considers to be the "novel aspect 1 ' of the Subsection HI claims of the present 
Application T he C AFC further states in (ienaiwch 

While every aspect of a generic claim certainly need not have been carried 
out by an inventor, or exemplified in the specification, reasonable detail 
must be provided in order to enable members of the public to understand 
and cam- out the invention That requirement has not been met in this 
specification with respect to the cleavable fusion expression of hGil. 
Oe-k>-\:ob , \o*o\(H«sk \S mi M >*>hln^tF<J Cn 
12321 

The CAFC here is explicitly stating that, "every aspect of a generic claim ceriain|vjteed 
not have been carried out by an inventor, or exemplified in the specification " 

(Emphasis added.) The CAFC further states "[tjhat requirement has not been met in this 



Appeal No. 2009-003320 



Page 19 of 46 



Serial No . 08/470,810 



specification with respect to the dea\able fusion expression of hGH " fhat is with respect 
to the 'novel aspect" of the. < k/ie/ue<. h claim fhc C \FC further states 

It is true that a specification need not disclose what i» well known in 
the ait IIov\l\u when thete is no disclosure of am specific starting 
nuterj.il or of am oj the conditions undei which a piocess «.an becanied 
out undue experimentation is required there is a failure to meet the 
enablement leqununeni that cannot he readied h\ asserting that all the 
dtsclosuie related to the process is withm the skdi of the art It is the 
specification not the knowledge ot one skilled in the art. that must suppK 
the nose! aspt-as ot an tmention m order to constitute adequate 
enablement. 

GenemedUnc v Noso Noidisk A/S. 108 ibl. 1366 u^-d Cir 

In this quoted language the CAFC is referring to the "novel aspect" which in the CAFC 
made clear in regards to the Getteuiech claim is ''cieavable fusion expression of hGH. '" 
The CAFC is stating when no example is provided of how to achieve "cieavable fusion 
expression of KG 11 " undue experimentation is required if as later discussed in 
Gemmech. the experimentation to determine how to achieve "cieavable fusion expression 
of hGH" is not only routine experimentation In the passage quoted above the CAFC 
states "w hen there is no disclosure of any specific starting material or of any of the 
conditions under winch a process can be carried out., undue experimentation is required" 
(Emphasis added.) By the use of the words a process"" it is clear indication that the 
CAFC is referring here to the fact that the Gemmech specification provided no example 
of how to practice "cleavabie fusion expression of hGH/" This is not true for the 
Subsection 11) claims of the present Specification on appeal since the 23 pages referred to 
by the Board's Decision listing Appellants" specific embodiments are species that come 
within the scope of ail the Subsection 311 claim for which the Board's Decision did not 
reverse the Examiners rejections. This is clearly stated by the CAFC "the specification 
for the [the Gene me ch patent] does not provide a specific enabling disclosure concerning 
what the new claim recites, viz.. obtaining hGH by cleaving an hGR-containing 
conjugate protein [that is the "novel aspect']." £*gngn|ec ; h,Jri \ \cm» Noidiss A s H-s 
1 k! so! Polled if And 'tt stands to reason that if the disclosure of a 



Appeal No. 2009-003320 



Page 20 of 46 



Serial No : 08/470,810 



useful conjugate protein and the method for its cleavage were so clearly within the skill 
of the art, it would have been expressly disclosed in the specification, and in the usual 
detail 'Urerued. Fie \ \w\«'\V>k\sI \ S, lUi-F^ 1 -ol :>(r n c d i ,i iV'7) The 
CAFC further states "the description of a wide range of enzymes in Methods in 
Enxymology, by itself does not render routine the determination of an enzyme -conjugate 
protein combination."' Gene^iechjna^ 

(". ii i '"'^7 } As noted above the ''process of expressing a DNA encoding a conjugate 
protein and using an enzyme to cleave off an undestred portion of that protein is 
generally known as cleavable fusion expression "Genentcoh l»i \ \o*o \<*i'hsk A < 
1* i 3d ;3<<i, 1 l^liFed^Cir^lOi?) Thus the CAFC is stating either expressly or at lest 
by implication that if the "the determination of an enzyme-conjugate protein 
combination" aas a matter of routine experimentation, the Getietifech claim would have 
been found enabled, even though there was no specific examples of this described in the 
Ge/wnlech specification. 

'The CAFC subsequent^ mad*, this point olea; in AK Src^h '<>rp. r. SoIIhl commenting 

on Gemnlech stating; 

as part of the quid pro qim of the patent bargain, the applicant's 
specification must enable one of ordinars skill m the art to practice 
the full scope of the claimed indention Wnght. <-W 1 2d at 1501 
That is not to say that the specification itself must necessarily 
describe htm to make and use every possible variant of the 
claimed invention, for the artisan's knowledge of the prior art 
and routine experimentation can often fill «aps, interpolate 
between embodiments, and perhaps even extrapolate beyond 
the disclosed embodiments, depending upon the predictability 
of the art. See Genenteeh. Inc. v. Novo ISordisk A S, 108 F.3d 
1361, 13 oo (Fed Cu 1 00 7}<"[<V| specification need nut di.scio.se 
what is well known m the art see also Wands. S58 F 2d at ?3o- 
37 ("Enablement is not precluded b> some experimentation, such 
as routine screening." >. 

WMedOsp s SoU U4J \\ i:.U, i:a4(Fed Cu 2*)*) 
(Emphasis added." 

There is no evidence in the present application on appeal that a species having the high 
lepropem cannot be made ana tested following Appellants' teaching, which is, for 



Appeal No 200O-OU3320 



Page 21 of 46 



Serial No oSAI7O,810 



trample, bs lontnie screening, in pattKttlat m tegaids to those claims \\hieh e\phcitl\ 

recite that the supereonducthe clement can be made b\ know pi maples of ceramic 

saence Nothing moie that what \ppeiiaiu\ teach is needed to ' extiapoiate bes ond the 

disclosed embodiments" m \ppellant» Specification Thus when the BoaicT Decision 

suites at RD patagiaph bridging p<mc 2°- quoting ( k'fietih t h 

Appellants' arguments and e\ idenee that these chums are 
enabled inappropriately rel\ on the knowledge and skill of 
the artisan, whereas "[t jt is the Specification not the 
know Sedge of one skilled in the ait that must supply the 
novel aspects of an invention m ordtr to constitute adequate 
enablement" (k'nenteth. K>8 I- nl at I36<» 
the Boaid is misapplying < k'fh'fifisc/i which lesnlts m urots of kiw The Board's Decision 

pros ides no evidence that mote than routine experimentation is needed to make ami test 

species couespondmg to Subsection 111 claims outside the scope of what the Board's 

Decision has found enabled I he onb other species referred to bv the 1 otal hnal 

Rejection. fNdminef s Ansv\et or the Board's Decisions is VI gB; refer ted to in the 

Jsehullei article As noted in the first Affidaxit of \ewns fB\ 1 paiagiaph i') page 2'>l > 

tins material is la\eied an attribute taught in Appellants* specification, is made following 

Appellants' teaching and was made more than i0 \ eais before Appellants discoveiv 

{RB3 page 2, imes 4-^) and is tested bs methods known since I'M 1 (BY! Paragraph 1 1 

page 1% ) Also, MgB; is composed of Mg and B both of which are constituents of 

known superconductors with a '1 r less than 2b degiees Kehm (RB2. page 4 line i , to 

page "\ last line! 1 bus deteitmntng that MgB;is a high 1\ super conductor is routine 

screening and is enabled hs Appellants teaching 

, , \.\, x *\ -\\ .,Oe*ent«h In \ V>\o Noni-sl \S »0S 1 V; 

Pel KV-Mbed Vh IWr.,; , s> v ^ K^aK^v ^ - ! > a' v. \„*\jk*v\ 




Appeal \o 200O-OU3320 



Page 22 of 46 



Serial No U8A17O.810 



Further we do not agree v\ ilh Appellants that the mere capability 
to make and test compositions encompassed by the claims under 
review satis-f it;?- the enablement requirement. Rather, enablement 
requiies the Specification to teach those skilled in the art how to 
make and use the full scope of the claimed invention without undue 
experimentation wherein it is the Specification, not the knowledge 
of otic skiiicd in the art, that must supply the novel aspects of an 
tm emion in order to constitute adequate enablement < k'/icn/cch. 
108 F 3d at Uo>-Hoo 



the specification need nut necessarih describe lion to make and use 
even- embodiment of the (mention "because the artisan's knowledge of 
me prior ait and loniine experimentation can often fill in the gaps " 

LioV Marshcin^ o < Med- ad inc :fl b H/l l>SO(Uv ( u 
2002} 

r l hus contrary to what the Board's Decision states in the paragraph quoted abo\e 
form BD p - v \.s - : ni K *j ^ i v \<M n ^ oi vmoo h 'he 

* 'that docs not require ingenuity beyond that to be expected of one 
of ordsnan skill in the ait 

♦ the aitisan's knowledge of die poos art ane- lonuue 
expenretTiation can fill m the gaps il >sbs! Supra > 

n making and testing species that come within the scope of the Subsection Hi 
claims outside the scope of what the Board s Decision states is enabled, in 
pai tiajlai m legard to those clams which exphcith secite that the supeieonductoi 
element can be madebs know pnnapies of cckhuic science The Board's 



Appeal \o 2000-003 CO Page 23 of 46 



Sena! No uW<\8i0 



Decision has not made out a prima facie case oflack of enablement of the 
Subsection III claims since it has given no reason to doubt that persons of skill in 
the ai t can make and test Subsection 111 superconductors outside the scope of 
what the Board's Decision has found enabled Thus the burden has not shifted to 
Appellants to rebut the Board's Decision that the Subsection 111 claims are not 
enabled. See BV1 page 16. lies 0-31. which state 

As a matter of Patent Office practice, then, a specification disclosure 
which contains a teaching of the manner and process of making and 
using the invention in terms which correspond in scope to those used 
in describing and defining the subject matter sought to be patented 
mnsi be taken as in compliance with the enabling requirement of the 
first paragraph of § 112 unless there is reason to doubt the objective 
truth of the statements contained therein which must be relied on for 
enabling support. 

In re Marzocchi. 58 CCFA 1069, 430 F. 2d 220. 160 USPQ 367. 360-370 
(1971) 

The Board's Decision has created a non-existent per se rule oflack of enablement 
from the (jenemech decision that stands for the proposition that even if there are 
enabled species that come within the scope of a claim under examination, the 
claim is not enabled., if the claim includes within its scope species for which the 
specification does not explicitly describe starting materials and starting 
conditions, even if those undisclosed staring materials and starting conditions can 
be determined by routine experimentation by persons of ordinary skill in the art 
from what is known to them to make such other species (k'tienfcch announced 
no such per se rule This cannot be a correct statement of the law since it is well 
settled law that all species that come with in the scope of a claim do not have to 
be foreseen or known in advance for that claim to be enabled. The use and 
application ofdanwech by the Board to create the Board's created per se rule to 
find the Subsection III claims not enabled is an error of law. 

■;i:-hh-/h w:s applied Hi \uu> Techs !nfl ; !;u; \.B\1vVofN Am. : Inc. 
50 i F 3d 1274 (Fed. Cir 2007 > (A'/'I) in regards to the means phis function 
element "means responsive to the motion of said mass upon acceleration of said 



Appeal No. 2009-003320 



Page 24 of 46 



Serial No . 08/479,810 



housing in excess of a piedetenuiued threshold \alue foi initiating an occupant 
protection appaiatus * jJ at 12 "7 winch was constated at the insistence of the 
patent owncj so that corresponding stiuutute included not onl\ mechanical 
switch assemblies but ai»o electiomc switch assemblies. a» identified m die 
specification" {Id at 1 27S i that are clneetecl to side impact sensors The "new 
aspect 1 of this rn\ atrion w as this means dement 1 he specification had e\taw \ c 
desettption of mechanical stiuetme eonesponding to this means element but onl\ 
a \ague desCiiption and conceptual uew coj responding to the electronic means 
'The specification e"\en states that Figute 11 is a 'conceptual wew ot an 
dectionrc sen soi ' Id at 128 3 1 bete was no woikiug example oi an electronic 
sensor. Id at 1 280 



Vjm Its^X, hn'> hK \ BMW of\ ke ^T f U 12 7 * iZ *{l<& * i. 

2007} 

The CAFC states in ,47/" 

Moreover, the specification [of the ATI patent] states that" "Side 
impact sensing is a new field The only prior an in the literature 
utilises a crush sensing switch as a discriminating sensor to detect a 
side crash." '253 patent, col 8 U. 4>47. in fact, AT! stated that at the 
time it filed the application for the '253 patent, it did not know of any 
electronic sensors used to sense side impact crashes. Given that side 
impact sensing was a new field and that there were no electronic 
sensors in existence that would detect side impact crashes, it was 
especially important for the specification to discuss how an 
electronic sensor would operate to detect side impacts and to provide 
details of its construction As was the case in Genentech, the 
specification provides "only a starting point, a direction for further 
research" on using electronic sensors for sensing side impact 
crashes; it does not provide guidance to a person of ordinary skill in 
the art on how to make or use an electronic side impact sensor, !08 
F.3d at 1366. The specification fails to proxide "reasonable detail" 
sufficient to enable use of electronic side impact sensors. Id 



Appeal No. 2009-003320 



Page 25 of 46 



Serial No . 08/470,810 



Vito k,.s h/l hiw \ BMW <-l \ \m U , "Oil *d i:^ 
"^hjee f i 'Mi'"* 



Appellants note the C AFC in 'I / / identifies w hat the new aspect ' was of the 

m\ cntton undei se\ tew tn contiadistinetiom the Board's Decision has not 

identified v\h<it the Board >.onsideis the "new aspect" of \ppellants invention As 

stated abo\ e \ppcllants ha\ e said that it is not the method of making or testing a 

supeseondiktue element to determine if U ts a high T t , supeteouductof but is 

then diseo\ei\ that these are matetials with a 1< gieates than oj equal to 2o 

ck-suces Kt-Kin Moico\ct in the ptescnt application on appeal thetc is no 

eudenee thai anuhmg othei than Appellants teaching is needed to make speeies 

within the »c<>pe of the Subsection ill claims outside of what the Boasd » Decision 

has rounded enabled. 

I he (. AK' furthci states m -I// 

Dtsciosme oi onh mechanical side impact sensois does not 
peiinit one s£ died m the art to make and use the (mention as 
btoadU as it was claimed which includes electronic side 
impact sensors f iectiome Side impact sensois die not jttst 
anothei Luown species of a genus consisting of sensois. but aie 
adistsnetK dsffeient sensor compafed witfi the well-enabled 
mechanical side impact sensor that is luih discussed in the 
specification Thus, m ouiei to fulfill the enablement 
teqttuement the specification must enable the lull scope oi the 
claims that mdudes both elections and mechanical side impact 
sensors which the specification lads to do 

\jU> le. s Mr'! in, , BMW < % f \ V 1 lie, C >:U I >i 
:ZH 2X*> (KJ Cm ZOO ) 

1 bete is no teason gt\cn b\ the Board s Decision to doubt that persons of skill m 
the art can mal e supeieonductfx e elements that come wuinn the scope of the 
Subsection Hi claims and outride the scope of what the Board s Decision 
indicates is enabled As stated abo^e the onh such species specified ih identified 
m the Boaul s Decision ts MgB. winch as stated abo\e is !a\esed as taught b\ 
Appellants Specification is made m the same wax as taught b\ Appellants 
Specification was made moie than w s ears befoie Appellants discoves v. us 
constituent Mg is expltcitk taught in Appellants 'specification and both 



Appeal \o 2000-003 CO 



Page 26 of 46 



Sena! No <)8/.|7O810 



constituents Mu and B ate constituents of supetconduetots- hum prior to 

\ppt'Udnts' disco\ m ilius unlike the situation m 41 L MgB; is nor distmctK 

dtiierent than what Appellants teach m then Speu ilea uon I he Bodid\s Decision 

identifies no species that come within the scope of the Subsection Hi claims 

outside the scope of 'what the Boaufs Decision considers enabled that is distmcth 

ditYeietit from what the Board's Decision consideis enabled 

\ means plus function element has the unique featme oflmkuvj; stmetuies 

that are umelated except foi the function thev provide Thus a means foi flowing 

a cunent can link <i water pipe and an eleetuc wire If this were not the 1 new 

aspect' of the claim undei 1 11 specific detail would noi be needed lot each since 

persons of skill m the art would know how to make each but if this is the "new 

aspect" specific detdil is needed tor each since d teaching oi how to make one 

does not teach a person of skill tn the ait how 10 make the other i ins ts not the 

situation of the present application on appeal 3 hus 1 //and ( rcns/iux h do not 

support the Boaid's Deer sum m Radius to Subsection Hi claims but support 

Appellants" position that these claims ate enabled 

fit re Angxfadt, 537 F 2d 49S (BV1 page 12, lines 1 1-17) cites Fields v. 
Conover which states 

a disclosure complies with the bow-to-make j equipment oi 35 ( SC J 12 
e\ en thotmh "some evpuitnentdtfon pun ided it is not an undue 
amount" (and pun ided that it does not lequue ingenuits fxwond that to 
be expected of one of ordman skill in the ait) ts still iequsred to adapt 
the imention topatticulat settings 

Fuhls^ tom»\M c ^Cf PA Poo ;3~2h'( j> \ jo- j 

in the piesent application on appeal in iegards to Subsection ill claims there is no 
e\ idence that 1 ingenmt\ bevond that to be expected of one oi ordinan skill m the 
ait is tequued to ptactice these claims outside of the scope of what the Board s 
Decision has found enabled If * a disclosure compiles with the how-to-makc 
Requirement ot 35 I SC i 12 e\ en though "some experimentation is stjil 
required to adapt the invention to particular settings" then it cannot be necessary 
for the Specification to supply ail starting materia! s and conditions as tequired by 
the Board's Decision. As shown above Gcnenwch onK requires this for the 



Appeal No. 2009-003320 



Page 27 of 46 



Serial No . USA] 70 810 



no\el aspect" of an imentiun that cannot he earned outlw onh routine 
e\pei i mentation I hus e\ en thouu.ii ( re'iawc h .states "it is the Specification not 
the knowledge of one skilled in the ait that must snpplv the run el aspects of an 
(mention jn oidei to constitute adequate enablement * ( 'tfitnicch 1 08 b *d at 
{ ■?<-,<;. j ^,{, {ins js duet fed to the no\ ei aspect" as desuihed ab<n e \s 
explained abo\c ( ienen/et h and hire Hands whettproperh eonsttucd state if 
the " no\el aspect" can be dotes mmed b\ ioutme cxper rmentj.tr on then the 
knowledge of one skilled m the ast and not the specification can suppls ' the nose! 
aspects of an rm emjon in oidet to constitute adequate enablement" T here is no 
eudence that tu make and (est stipes conductor species for Subsection HI claims 
out >tde of the scope of what the Boaid has stated is enabled iequire» moie than 
routine experimentation or 'Ingenuity beyond that to be expected of one of 
ordinary skill in the art." 

As stated in the affidavits of Dr. Dinger (Brief Attachment AI), Dr. Tsuei (Brief 

\rtachmcnt \J), Or Shaw (Brief Attachment \IO Mr Duncombe (Brief \ttachmeiit 
AL) Di MnA (Bttef Attachment All) and m the DST AFFIDAVITS (Bttef 
Attachments AM, \N and AOi to male the high temperattne supeicomiuctois 
encompassed b\ Applicants claims usmg the teaching of the pi esent i in entton would 
not requtic mgenurrs beymd thai expected of one of oulinat\ skill ui the art This is 
nnrebutted h\ the Boat J" Decision (See B\ 1 page 12 lines 1 ftom the bottom ' 
Paragraph 8 of each DSf M-FSDWH states that "once a pes son of skill m the an knows 
of a specific t\pe ot composition desctihed m the Bednoiz-Mueilet application which is 
supetconductmg at greater than or equal tu 20 K such a peison of skill m the aif usmg 
the techniques described m the Bednor/AIucllei application, which includes all 
ptineipies of ceramic fabrication known at the time the application was tnittaih filed, can 
make the compositions encompassed b\ the claims of the Bednoiz-Mueilci application, 
without undue experimentation oi without requmng ingenuitx bevond that expected ot a 
peison of skill in the ait of the fabrication of eeiainte mateuals iSee B\ 1 page 17? 
paiagiaph 8 ) This is uncontested b\ the Board's Decision 



Appeal No. 2009-003320 Page 28 of 46 



Serial No.: 08/479,810 



The CCPA in lit /v AnpMadt, 5.37 F 2d 49S, 503 (C CP A. 1976.1 J 90 USPO 214 

commenting on the dissent states: 

"Hie dissent's reliance on In re Rainer, 54 CCPA 1445, 377 p. 2d 1006. 
i 53 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 detennine, with reasonable certainty 
before performing the reaction, whether the claimed product will be 
obtained" (emphasis in original), as the dissent claims, then all 
"experimentation" is "undue," since the term "experimentation" 
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 and thereby to promote progress in 
the useful arts. 

in the present application the Board" s Decision (proposition) is requiring what the CCPA 
states is not required and "[s'juch a proposition is contrary to the basic policy of the Patent 
Act, which is to encourage disclosure of inventions and thereby to promote progress in 
the useful arts/' The certainty that the Board's Decision is requiring is beyond what the 
Supreme Court requires and what the Patent Act requires 

The CCPA applies the Supreme Court Minerals v. Hyde Enablement Statement in 

i. loii^x ( " \ 12,1 :u rt> \ i<>^ni"i spo {B\\»"89 

stating: 

Ihc Supteme { ourt set out some guidelines with lefeieiice to the 
sufli uenor of a speu.ficdt.ion to disclose an in\emson m stiub a 
matmei as vuii enable one nf oidmat\ skill in the at t to make it m 
Minerals Sepai dtton ltd \ Ihde 242 1 s 2<>\ (WZ^) at "O- 
271 [Suiting the Supteme { oust Minetals \ H\ Jl Pnabietiient 
statemtnr quoted abo\t 1 

The CCPA also ate Miner lis Separation ltd \ !Kdc2l2l S 2d m lue(o s> 
('CP V -<>^ „^:v ( P x i^r-) I -lot SPQ (liN Vt (W and states Hie certaints 
required m patents is noi gieaiei than th<n win Ji is teason^bte, haxing seg^d to the 
subject out:et m\ ol\ cd Mm*ja!» Sepatauon, Ltd \ H\ue 242 l s 2M K ILuhe-r 
40 C( p \ !(»;,(, \0'-i'){i i 1> \ K'5ij 



Appeal No. 2009-003320 Page 29 of 46 



Serial No.: 08/479,810 



The CAbC adopted the Srqvsnic ( 'otntMmciah v. Hyde J'tiabh'ttictn Shipment 

m \\ L Gore £L Associates, lnc \ Oarlock, lnc . stating 

Ike dtstitct cotut imabdated both patents tor mdefiniteness because of 
its view thai some "ti ial and crrot" would be needed to deteimine the 
"lowej hmits" of mj etch jate above 10% pei second at \ annus 
tempetdtuies abose degtees i_ That was emu \ssummj> some 
experimentation were needed, a patent is not invalid because of a 
need for experimentation. Minerals Separation. Ltd. v. Hyde, 242 
I .S. 261, 2"0~"?i, 6\ I.. Td. 286, 37 S. C t. 82 (1916). \ patent is 
invalid onh when those skilled in the art are required to engage in 
undue experimentation to practice the invention. In re Angstadt, 
537 F.2d 498, 503-04. i*>n I SPQ 214, 218 <C CPA 1 076). Theie was 
no e\ idencc and the com I made no finding ihat undue experimentation 
was required. 

\\ L Goie& Associates he \ Garhvk, lnc "21 r 2d 1M0, i^s? 
fKd Ur )0^)22(U M'O <B\A) ItH f i<>8 i ) fLmphasis added ) 

The Boards leasons foi ftndnva Appellants Subsection IIP claims- not enabled 
aie inconsistent with the Snpieme < ouit decision tn Mifh'fith ^epatatfoi', I Id v Hide. 
I or example, the following considers specifieaiK identified reasons given m the Board's 
Decision in apph mg the eight In *v U ands factors to the Subsection 111 claims 
I M BD page >o lines 12-13 in iegauis to IVtithh 1 f ieU>i I tjuanMh ol 
expeumentation neccssan- the Board's Decision states * jitjhere is no 
meamngfui limit to the tjuantih ot evpuimentation retimed b\ the claims 
m this subsection ' In Mmcm/ Sspararum v H\de uee the M metal 
Sep.iiatson \ H\ de I nabiemem Statement) die claim under eonsideiatson 
the included within its scope 'composition of ores [that] \anes lnfinitch 
each one piesentmg its special pioblem ' Huts a claim foi whidi 
' "[tjheie is no meaningful lnml to the quantm of experimentation 
t counted" is not fatii to the enablement of the claim 
H Yt BL> page >~ lines 2-i \ jn legauls to Hands i-actot 2 the amount ot 
diieeti^n or guidance piesented- the Boauf s Deusion states "Appellants' 
Specification gi\es no direction or guidance for making and using am 
high tempetattiie supeieondnetoi matenai othet than the mixed ttansition 
metal oxides discussed in subsections I dml H Second the 
Specification disclosuic concennnti known principles of ceianuc science 



Appeal \o 2O0O-UO3.42O 



Page 30 of 46 



Sena! No O8/4 7O.810 



i elates t(i dnuction pumded hv the ptiot ait not hv Xppeilants Phuiuluie 
f- aetoi (2 ) also c\ mees non-enabiemcm " 

a It is the Supreme ( oust s portion jn X/tfh'iah St-paiufiou 

I id v Huh' that such a position us untenable fltc court states ui 
The Supr eme (_ outt Minerals \ I l\ de Fnablcment Statement 
quoted akv* e |c Iquallv untenable is the claim that the patent is 
invalid for the season that the evidence shows that when difietent 
ores aie tieated piehmmaiv tests must be made to determine the 
amount of od and the extent oj agitation necessau in otdet to 
obtain the bust Jesuits.*" Thus to satisfy enablement Appellants' 
Specification does not ftav e to give explicit dnettjon 01 auidanee 
for making and using c^cjv au\ high tempetatme superconductor 
materia! othei than the mixed tiansitiou metal oxides discussed in 
Subsections 1 and jj where persons oi skill in the ait know how to 
make and test Subsection Hi supeiconductois {including those 
within and without of the stupe oi what the Board's Decision has 
found enabled) h\ routine methods \ud the Specification 
disclosure concerning known puucipies of valine science that 
jelates to duection ptovuled hv the pjtoj att and not exphcuK b\ 
Appellants is sulllcient to est ibiish enablement 
ill \t Bl) page ^7. lines 14-24. in jegatds to JJ aiui\ \ actor i the presence oj 
absence of working examples- the Boatds' Decision states *[t|he 
Specification contains no woikmg examples at all of high temper aiure 
su per con duct< Ms other than mixed transition oxide matenaK and none of 
the ciatjus nndej consideration are limited to such materials ' As stated 
above the I mted States Supieme Court m \ fine ah Scpaianafi i //u/e 
found a claim enabled that included within its scope composition of ojcs 
[that | \ aties infmiteh each one presenting its special problem (see 
Minerals Separation \ llvde fnahiement Statement above) based on 
Mmejal Patent Col 2 Sines "0 7(\ and descupnon m the Mmeuls Patent 
of an oie at Col 1, iincs 10 12 Thus S lines wete sullieicnt to enable a 



Appeal \o 2000-003 CO Page 31 of 46 



Sena! No US/4 7<\810 



claim the included within its scope ''composition of ores [that] varies 
infinitely, each one presenting its special problem." 

a. It is the Supreme Court's position in Minerals Separation. Ltd v. 
Hyde that such a position is untenable where it is experimentally 
determinable which materia! exhibits superconductivity The court 
states in The Supreme Court Minerals v. Hyde Enablement 
Statement quoted above "[fjhe composition of ores varies 
infinitely, each one presenting its special problem, and it is 
obviously impossible to specify in a patent the precise treatment 
which would be most successful and economical in each case." 
IV. At BD page 38, lines 2- i 6, in regards to Wands Factor 4 -the nature of the 
invention.- the Boards Decision states " With respect to this factor, 
Appellants state '[t]he invention is easily practiced by a person of skill in 
the art' (App. Br., vol. 1, p 126;. We do riot see the relevance of this 
statement to the factor under review. Furthermore, for reasons explained 
above, the arguments and evidence of record do not support the 
proposition that the full scope of the invention defined by the claims of 
this subsection "is easily practiced by a person of skill in the art" 

a. 31 is the Supreme Court's position in Minerals Separation.. Ltd. v. 
Hyde that such a position is untenable where it is experimentally 
determinable which material exhibits superconductivity. The court 
states in The Supreme Court Minerals v. Hyde Enablement 
Statement quoted above '" ; [t]he composition of ores varies 
infinitely, each one presenting its special problem, and it is 
obviously impossible to specify in a patent the precise treatment 
which would be most successful and economical in each case."' 
Appellants' statement thai "j't|he invention is easily practiced by a 
person of skill in the art" (App. Br., vol. I, p. 126) is not 
contradicted. There is no evidence that Appellant's invention of 
the Subsection 10 claims outside the scope of what the Board's 
Decision considers enabled is not easily practiced by a person of 



Appeal No. 2009-003320 



Page 32 of 46 



Serial No: 08/470.810 



skill in the; art. The only species identified in the Board's Decision 
is MgB: identified in the Schuller Article. As noted above MgB; is 
layered (BVT page 203, lines i 1-13), a property specifically 
identified by Appellant's Specifications, is made by the same 
procedures explicitly taught by Appellants' Specification {8VS 
page 20 I paragraph 19), was made more than 30 years before 
Appellants discovery (RB3 page 2, lines 4-9) and Mg is explicitly 
taught by Appellants' Specification as a constituent of as a 
constituent high T f . superconductors (BV I page 208 last 3 lines 
states "Applicants' specification explicitly teaches highTc 
compositions containing Mg Mg is an alkaline earth element. See 
Brief Volume 2 for details at page 138-139 ") and that both Mg 
and B are constituents of superconductors having a'I'c less than 26 
degrees Kelvin (RB2, page 4. line 8 to page 6, line 4) . 
V. At BD page 38, line 1 7 to page 3°, line 2, in regards to Wands Factor 5== 
the state of the prior art- the Board's Decision states, '^bjased on the 
record before us, there is no prior art relating to high temperature 
superconductors of the type [Subsection liij defined by the claims under 
consideration/' This is an error of fact since MgB? was made more than 
30 years before Appellants discovery (R.B3 page 2, lines 4-9) and is a high 
temperature superconductor. 

a. It is the Supreme Court's position in Minerals Separation, Ltd. v. 
Hyde that such a position is untenable where it is experimentally 
determinable which materia! exhibits superconductivity. The court 
states in The Supreme Court Minerals v Hyde Enablement 
Statement quoted above "[f]he composition of ores varies 
infinitely., each one presenting its special 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 Supreme Court clearly says 'leaving something to the skill of 
persons applying the invention is clearly sufficiently definite to 



Appeal No. 2009-003320 



Page 33 of 46 



Serial No: 08/479,810 



guide those skilled m die art to its successful application 
\loteo\ei, there is no ccrtainn that the claimed method in the 
MatcnaK Patent would work for everv ore until tt was 
experimentally determined to woi k ten a particular oie This did 
not rendu the claims not enabled It is den that the Suptcme 
('oust did not find that it was neees^ars to know what oies the 
process wosked foi m advance since this was expenmuHdiiy 
determinable hv techniques known to persons of ski!! in the art 
foihnung the teaching hi the Mineials Patent Thus the patent 
applicant of the Mr net a! s Patent was not required to foresee (or 
predict in the sense used hv the Board's Decision of the piescnt 
application) all species that came wuhm the scope of the Minerals 
Patent claims i he same is true of the claims under appeal herein 
and for which the Boaid\ Decision has not reversed the 
1 \ammer\s rejections not enabled 
VI. At BD page line 1 3 to page 4<\ hue \ in iegatds to Wands Faciei o- 

the relative skil l in the art-iti the art, the Board's Decision agrees with 

Appellants 

VII. At BD page 40, l ines 6-13 to page 40, l ine 5, in regards to Wands Factor 
7 - the predictability or unpredictability of the art - the Boards' Decision 
states "we consider the high temperature superconductor an to be 
unpredictable and disagree with Appellants' contrary view ( App Br., vol 
I. p. 127) This is especially so with respect to the claims under 
consideration [Subsection Hi] since Appellants' Specification provides no 
direction or guidance for making the claimed high temperature 
superconductors other than the mixed transition metal oxides previously 
discussed." 

a. It is the Supreme Court's position in Minerals Separation, Ltd v. 
Hyde that such a position is untenable where it is experimentally 
determinable which materia! exhibits superconductivity. The court 
states in The Supreme Court Minerals v. Hyde Enablement 



Appeal No. 2009-003320 



Page 34 of 46 



Serial No. 08/479,810 



Statement quoted above '"[t]be composition of ores varies 
infinitely, each one presenting its special problem, and it is 
oh\ iously impossible to specify in a patent the precise treatment 
which would bo most successful and economical in each case." 

b Preliminarily, that the art of making high T<. materials is complex 
does not necessarily render generic claims not enabled since the 
skill of persons in this art is high Thus the complexity is within 
the skill of the art The Board's statement that the high T t art is 
unpredictable is untenable in view of the Supreme Court's position 
in Minerals Separation, Ltd v. Hyde that "[fjhe process is one for 
dealing with a large class of substances and the range of treatment 
within the terms of the claims, while leaving something to the skill 
of persons apply ing the invention, is clearly sufficiently definite to 
guide those skilled in the art to its successful application., as the 
evidence abundantly shows " Since the Board's Decision does not 
dispute that species within the scope of the Subsection ill claims 
and outside the scope of what the Board's Decision has found 
enabled can be made be made by what is know to persons of skill 
in the art, the Board's Decision has acknowledges that persons of 
skill in the art know how to make materials within the scope of 
Appellants rejected Subsection 111 claims and since it is wirebutted 
that they know how to test these materials for the high T,. property. 
Appellants' teaching is clearly sufficiently definite to guide those 
skilled in the art to its successful application, as the evidence 
[submitted by Appellants] abundantly shows " 

c. The Board's Decision states with respect to the Subsection HI 
claims "Appellants' Specification provides no direction or 
guidance for making the claimed high temperature 
superconductors other than the mixed transition metal oxides 
previously discussed." It is the Supreme Court's position in 



Appeal No. 2000-003320 



Page 35 of 46 



Serial No . 08/470,810 



Mmuials Separation Ltd \ 1 !\ do that such a position rs untenable 
where it is experimcntalh detenrunabie which matcnal exhibits 
superconduaix m As noted above the patent at issue m the 
Minerals Separation Ltd \ Huie dispute desenbed onh a small 
number of examples but as noted in the Supreme Com t Minerals \ 
} 1\ de I nahiement statement quoted akv* e 1 1 |he composition of 
ores \ .tries infiniieh each line pieseutmg its special psoblem, and 
it is ub\fou\h impossible to specifv in a patent the piecise 
treatment which would he most successtui and economical in each 
ease 3 he piucess is one foi dealing with a laige (-lass uf 
substances and the lange of tieatment within the terms of the 
claims, while leaung something to the skill oi pes sons applsing 
the invention, r,-, cleat lv sufTictentlv definite to guide those skilled 
in the ait to lis successful application as the evidence ahundantlv 
shows " i hus the Supreme Oouit found enabled claims covei m<a a 
composition that "\ dries mfinrtelv based on a desuiption that 
describes a ie\s examples wheie as in the present application, it 
w as within the skill of the an to apph the inv ention to other 
spelts in that infinite vanetv 
\ 111 At BD page lu lines I ! page 11 line 7 in regards to HanJs Factor 78 ~ 
the bieath of the claims states "[w |e have ahead\ explained that the claims 
in this subsection encompass hioadK claimed high tempetature 
superconductors sueh as oxides tclaim 12) and compositions teiaun SS) 
whose scope far exceeds the mixed transition metal oxides of subsections i 
and IT As stated above in X/tncnfh SipiifarhJii t Ihdc the Supreme 
Comt found elasms enabled containing an infinite number of specses based 
on eight lines of speeificalh described species 3 hus a claim of \ en 
h\\\\<\ scope is not enabled because theie ate a small numbei ot 
speeificaih desuibed species The Boatds" Decision states Appelidnts" 
specification has 23 pages of described speues which is fai more than the 
eight lines it) the Materials Sepaiatton patent The Board s Decision 



Appeal \o 2000-003 CO 



Page 36 of 46 



Sena! No U^]7<\810 



fuifhet static at pa^e 4! lines 1 -7, ■ [ajs discussed above Appellants' 
aiguments and evidence of iccotd have lurk it anv value esrabiishsng that 
an aitisan would have ieasonabls believed that Appellants' high 
temperature superconductivity success with mixed tiansmost metal oxides 
could be extrapolated with a i cashable expectation of success to flic other 
mateuals encompassed b\ the claims of this subsection \s shown above 
d poison of ot didiv skill in the ait has a teasoiubie expectation of success 
in making and testing matenak to detennine if thev are bidi tern peiatuie 
superconductors 1 his is not contested hv the Boatd s Decision This is 
all that the Supieme { ouit retjuiies m a/wc/i/A ^cpittatum H\o\\ when it 
states ' the eeitaimv which the law requires in patents is not greater than i» 
reasonable hav tng tegaid to then sub|ect-maUer 
V\ hen the eight In tc ff amh factors are area applied to the Subjection lit 
claims and consideied in light of the Stipteme {'units' decision Mifh'idh 
Stfwaiioff \ /Ai/c' which it must these eight factors militate in favoj of tht- 
Stihscction 111 claims being enabled in direct contradiction of the Boatd's 
Decision. Thus the Board's Decision is an error of law. 



H ts thus eleai following the Supreme Court decision m Minerals Sepaidtion Ltd 
v !hde % 242 I S 2b 1 that ail of Applicants claims are enabled and Applicants jequest 
that the Board tcvetst- the rejections f< n lack of enablement 



B\ ' pas <gr .-vi I "Jg-ng Z -> "> 2 ' i \uo 

the leason given by the Supreme Couit as quoted above in The Supieme 
Couif Minerals \ Hvde } nableinent Statement foi whs the geneuc claims 
covering an infinite numbet of species were enabled is v |t|he ptocess is one 
for dealing with a Same class of substances and the janae of treatment within 
the tuins of ihe claims while leaving suincthing to ihe skill of pel sons 
appis sng the m vention, is clearh suHiaeiitlv definite to guide those skilled 
in the art to its successful application as the idence abundantlv shows 
I Ins satisfies the law 1 hat there is a large class (infinite in numbei ) oi 
substances within the scope ot the claim that max not be speufiealh 



Appeal \o CO 



Page 37 of 46 



Sena! No 0^1 7<\810 



described, and wheie the specification only describes a small numbet of 
preferred embodiments, does not render the claim not enabled The Supreme 
Court clearly says "leaving something to the skill of persons applying the 
invention is clearly sufficiently definite to guide those skilled in the art to its 
successful application.'' Moreover, there is no certainty that the claimed 
method in die Materials Patent would work for every ore until it was 
experimentally determined to work for a particular ore. This did not render 
the claims not enabled. It is clear that the Supreme Court did not find that it 
was necessary to know what ores the process worked for in adxance .since 
this was experimentally determinable bv techniques known to persons of 
skill in the art following the teaching in the Minerals Patent Thus the patent 
applicant of the Minerals Patent was not required to foresee tor predict in 
the sense used by the Examiner of the present application) all species that 
came within the scope of the Minerals Patent claims. The same is true of the 
claims under appeal herein and rejected as not enabled. 

This is uncontested by the Board's Decision 



Applicants ha\c shown that persons of ordinal v skti! in the art as oi Applicants diso>\eiv 
can piactice Applicants' claims to theu full scope and tt ts Applicants understanding of 
the Examiner's statements thai the Examiner has agieed with this 



3. Supplement Section 
IN RE COOK 

In the Reply Brief page 13, line i. to page 1 5, last line, Appellants apply the 

('CPA decision in n> Cook, (in re Cook, 439 F.2d 730, 169 USPQ 298 (CCPA 1971 ) 

BV 1 107.. 1.10, 1 11.. 136, 139.. 145, 152.. 156, RB 6, 13. 14, 1 5) The Board's Decision did 

not comment on nor rebut that analysis. The Board's Decision is in conflict with In re 

Cook. As stated in the Brief the claimed invention considered by the CCPA in hi re Cook 

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

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

It seems to have been agreed by all concerned that the design of 
commercially satisfactory zoom lenses of the kind involved here (i.e , 



Appeal No. 2009-003320 



Page 38 of 46 



Serial No : 08/479,810 



four-member zoom Senses) is an extremely complex and time- 
consuming operation, even with the aid of modern computer 
techniques. 'Thus, quite apart from appellants' teachings, it would take a 
lens designer setting out to design a new zoom lens of this type many 
months, or even years, to come up with a marketable lens assembly 
possessing all the desired characteristics. 

The CCPA held that the //; re Cook claims could nor be found not enabled merely 
because following the patent application's teaching it would take a person of skill in the 
art a long time to design other embodiments within the scope of the claims that were not 
specifically described in the specification. 

The CCPA in In re Cook 169 USPQ 298, 302 stales: 

Wi amee that appellants' claims are not toobioad "to the point ot 
imahdm " just because the\ toad on esen a \et\ lats/c number of 
inoperative embodiments, since u seems to be conceded that a peison 
skilled in the telexanf art could deieimme vducb conceded but not-\U~ 
fdbticated embodiments would be inoperative with evpendituie of no 
mote effort than is nounalh icquued of a Sens designei checking out a 
ptoposed set of parameters 

In Inn ( ook the ( CP \ held that esen though the claims included un>peidti\e 
species this did not render the elaims not enabled since petsmis oj skd! in the att could 
detei mine \\ Inch concets ed but not-\ et-labneated embodiments w ould be tnopeiatn e ' 
That is a peison ol skill in the ait could go thiongh the tunc consuming and complex 
computation to determine whether a particular selected design within the scope of the 
claims functioned as a ?o^m lens In tine ( ook the £ CPA iound that the necessits nf 
doing a complex time consuming calculation to defetinme whefhu a patticttiat design 
was opciable was not undue e\peii mentation I his coi responds to the 1 theoietical 
e\perfmenf icfetted to in the Aftuku it of Newns (Bttef \ttachment VP) The Board's 
Decision has not commented on this In the present application In analogs once a 
paittciikn composition having a high I< ts conceded toliowfngthe ( { PA rational m /// 
te ( ook a peison skilled m the teloant an could determine whieh conceived but not- 
\et-fabrieated embodiments would be tnopeiati\e with expenditure of no moie effoit than 
is noimalK required of a [peison of ordinan skdl m the ceramic fabueatum art | 
checking nut a proposed jj composition b\ fabucatmg and testing it j" b\ the well knovui 



Appeal \o 2O0O-t)O3 .i2fl 



Page 39 of 46 



Sena! No U8/-17O810 



methods of tabs f cat) on that do not seqtiire an under standing of the underhmg complex 
chcmistj-s as stated Sin Poole 1°HS (Bitef Attachment At ana \\\ ) quored above See 
the DS r ATI IDAVir^ iBnei. Attachments \\J, AN ami AO ) Thus undei linci'ook 
Appellants' Subsection III claims aie enabled Also, none of Applicants claims include 
mopetatne species within then scope U is also uncontested that peisnns oj nuluiarv skill 
use loutmes mahod lc> test fot supeieonducttv it\ 

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

\ppellants having laded to establish ibc tiuthfulness of their asset Hons 
about the v aiiditv of then ranges when tea sonabh challenged to do so 
bv the examiner, we hoi J that the Patent Office proper I v rejected the 
appealed claims The deasion of the board is afin med \,- re < Vwv. ~K 
( ( P \ , 4" :>-o^ C & A prnib^'l SPQ2«R 

Vpphcants ha\e established the faithfulness oi theu assertion b\ abundant 
umebufted factual e\ idenee t oi these icasons the Board s Decision sustaining the 
Fxamuiet a i ejection foi lack of enablement of {he Subsection 111 Uanns should be 
reversed. 

in /// n> t 'oak the in\entot m icspnnse to the C( PA decision filed a continuation 
application which issued as I S patent rs373o04S Claim I of this issued patent is 
shown below as an amended version of the claim on appeal in In jc C<>ok Thus the 
issued claims deleted a santie (with tadtus of cunatuie King mmietteails between 0 ^f(C) 
and i 0\{L ))n\ the last line nf the claim on appeal and added a limitation to the preamble 
(said objective having a maximum equivalent local length at lest <> times its maximum 
focal length) I his is the amended version of the claim on appeal 

1 An optical objective of the ?oom t\ pe {that is of the t\ pe hav mu leiativeiv 
movable membeis u herein the equivalent focal length of the ob|ecti\e can 
be contmuousiv \aued thioughout a range, whilst maintaining constant 
positron of the image plane) corrected for spheiscal and ehiotnatie 
abeuations coma astigmatism field cuivatuie and dtstoition said object) \ e 
having a maximum equivalent local length at lest o times us maximum focal 
length and 

comprising a convergent fust member, which for a gsv en object disrance 



Appeal \o 2000-003 CO 



Page 40 of 46 



Sena! No U8/-I7O810 



lemains stationan dining the zooming leSatni, movements, 

an d\iaii\ movable dives^em second mem her behind the first memhei 
having eu.un diem foeal length fb King uumenealiv between 4 and times 
the minimum value of the ratio of the equnalcnt focal lenaih of the 
complete obiecme to the f-numbei of the objective in the iant>e of vauation, 

an d\ulK movable diveigem thud membei behind the second nit- mbei 
having eu,ui\dlent foeal length f(c) i\ nig numeucdilv between ^ and lo 
times the minimum value of such ratio 

d staNoiidi} coiueigent fourth member behind the third member 
a zoom control element, and 

means wherein opeiauon of die zoom control element cause* the zooming 
relatn e mov ements to be ejected. 

wherein 

the total axial mo\cmem of the second membei in the iange of variation lies 
numencalh between 1 5ff,B)and2 m\ Bland 

the total axial movement of the thud member in the range lies mimeneaih 
between 0 25(c) and 0 5ftCt, 

the nmimumi axial sepatation between the second and thud membei s 
nccuumg when the equivalent fueal length of the objective is gieatei than 
half its DUKimum value in the iange of vaiiation 

the movabk diveigent second member consisting of a dneigent simple 
meniscus component with its surfaces convex to the fiont and a divergent 
compound component behind such simple component, and 

the moxabie dnetgeut thnd member consisting of a doublet component 
hav im> its fiont sulfate concav e to the fiont with utdun of -etif v atm-e K mg 
iHHHencdllv between- 4 ^fK'Hmd 1 &ifO 

Ranges were deleted horn dependent chums on appeal in /// jv ( '<><>/< Thus the hi oath of 
each amended dependent claim was broadened b\ this deletion Cnnsequemh , the claims 
of the issued patent rS^"^(^)4^ iid\e a scope thai is not naiiovvei than the claims on 
appeal m /// /v Cook I hus the USF 1 0 found, follow utg the decision In the C01M in In 
re Cook, claims enabled 



Appeal No. 2009-003320 Page 41 of 46 



Serial No.: 08/479,810 



♦ "which load on o\en a \m huge number of mopoiatn e embodiments since if 
stems to be conctdtd that a pcison skilled in the jcie\ant art cnukl determine 
which conceived but not-\ et-fabucated embodiments would be inoperative with 
expeuduuie of no moie effort than is nounaiiy icquired of a lens desiauci 

ckecl mg out a pjoposed set oi paiamefeis ' line (oof* it>° TSPO 2°8 302 and 

* claims foi %\ filch " it would fake a kns designer setting out to design a new zoom 
lens of this t\pe main months, ot e\en seals to come up with a marketable lens 
assembh possessing all the desired ehaiaeteiisties ' In u- < o<>k 10° f SPQ 2 l >8 
300. 

The Board's Decision in direct conflict with In re Cook and with the final result 
of the claims undei ie\iew m In w < o<>k which weie ultimately found enabled hs the 
I SPTO roil owing In /v ( 'oof- it is consistent with enablement to make species, 
including those that do not woik e\ en if takes a long tune to make and test them if 
evpcnditute of no moie effort than is notmaik requited of a pet son oj oidinat\ skill m 
the ait is used to make and test those species Pheie is no e\ idence oj aigument m the 
Boards Decision to the coutian in tegards to the Subjection 111 claims fltus it is an 
eisoi oi Lu\ to find the Subsection 111 claims not enabled 

\loieo\ei, the ( (. P \ decision m //; tc Cool supports Appellants position that an 

art is piedictabie when it is determinable with out undue e\penmentation Thus v\hen the 

Board s Decision states m ihe paiauiaph budging pages 2(^-27 

Appellants contend that the high temperature superconductor ast is 
piedictabie tat net than un pi edict ibie Aeeoidmg to Appellants, "since 
the Lsanunei agrees that in \iew of Applicants' teaching othei 
embodiments can be made without dtiiicuits and since testing such 
embodiments foi the presence oi superconductivity is v\eli know |stc| 
andioutme the ait of high fc supej conductivity is predictable oj 
deteumnabie and thus enabled In \pplKants' teaching" ( \pp Bi \ol 
l,p 84) We do not shate KppeliamV premise thai the capability ot an 
artisan to make and test embodiments othei than those allowed bs the 
[■■yammer establishes predictability in the art of high ■temperature 
superconductivity ^ n this lecoici, Appellants ha\e not shown the 
asserted con elation between capability and piedtctabthtv 



Appeal No. 2009-003320 Page 42 of 46 



Serial No.: 08/479,810 



the Board's statement "[w]e do not share Appellants' premise; that the capability of 
an artisan to make and test embodiments other than those allowed by the Examiner 
establishes predictability in the art of high temperature superconductivity'" is in 
direct conflict with the Supreme Court's decision in Miner Separation v. Hyde and 
the CCP.Vs decision in hi re ( 'ook both of which stand for the position that 
determinability is equivalent to being predictable since as stated many time the 
term predictable in the patent law does not mean "foreseeable" or ''knowledge in 
advance"' but means determinable by experiment or calculation by methods know- 
to persons of ski!! in the art. . 

As stated above BV.I page 232, lines 14-26, states 

The CCr» A m In w V^si^K 55'" F 2d {€ C P A iO"t>i I'SPO 

»N e^mnienhnu <^a the dsssu-nt states 

The dissent's reliance on In re Raker, 54 CCPA. 1445, 37? 

f .2(1 1006, 1 53 USPQ 802 (1967), is misplaced. If Rainer 

reaction, whether the claimed product will be obtained" 

"experimeniatiors" is "undue." since the mm 
> s*\ ^^vsn.iuoV n?ph> thai fro *kv> the p ' icuKs* 
activity is uncertain. Such a proposition is contrary to the 

the use! a! an 

\ an\ >t o f ikr > ? \ n s hxo s,sp iva ihe u *n Ni >e 1 ^\nen . i *\ t v 
VA^.d 1 \> n\>n a> P4 > p^v A- Au ^ ? - he K^toat ka Appellants' 
Specification [must] provides a reasonable amount of direction or guidance in 
identifying the compositions in question as possessing high temperature 
superconductive characteristics " 



4. Supplement Section 



As stated above the Board's Decision states at DR page 20, lines 2-4 front the 
bottom, in reference to Subsection 11 superconductors (as defined at BD page 1 7, lines 2- 
6) "[a]s explained above. Appellants' Specification provides a reasonable amount of 



Appeal No. 2000.003320 



Page 43 of 46 



Serial No . 08/479,810 



dueetiun en guidance in identih mg the compositions in question as possessing high 
tempcjatuie supeiconductne chaiaeteiisttcs * and when it at BD page ?S lines I -4 ft cm 
the bottom states jt}he pitoi <iit oi recoul in this appeal is limited to fabucation oi mnd 
transition metal o\ide niaienals of the t\pe discussed in subsections i and il None of the 
claims m this subsection III are limited to suJi matenais ' 

VI so \s stated abo\ e the Boasd s Decision pun ides no legal authonU foi the 
st uement that "a t easonabie amount of dnecuon ot guidance m identih tug the 
compositions iti question as possessing high temperatute supes conduct! \e chdiacteustjcs" 
is neeessai \ to satisU the enablement requirement 1 bete is no I mted States f-edetal 
Cot Hi decision thai states that a i easonabie amount of direction or guidance m 
ideuttfsmg' specses that com within the scope of a claim in neeessan to sausfs the 
enablement icquirement of that claim to its lull scope \s stated aho^e it is v\ell settled 
law thai a patent applicant does not ha\e to foie^ee in advance ail species that come vwthm 
the scope of a chum foi the claim to he enabled to its hill scope 

in Part \ of B\ 1 starting at page 1 7 under heading " Summarv of ( laimcd subject 
Matter and m \ olume 2 of the \ppeal Bttef a summan is piouded oi each rejected 
chum and wheie sttpport foi these chasms is found in the Specification ^ stated in the 
initial Request the Board s Decision makes no comment on each oj these indixiciualK 
appealed claims and docs not explain wh\ the specific limitations of these claims do not 
pto\ ide the t\ pe of guidance that the Supreme L ouit m \ hnci al Scpitmthw \ //i</ 
indicates is sufficient to satisf\ enablement when it sa\ s !ea\ ing something to the skill 
of pet sons appK mg the itn entton is death suffietenth definite to guide those skilled in 
the art to Us successful application {See the Minerals Separation \ \\\ de Enablement 
statement ) Mam of these limitations are dttccted to stuictutal elements such as laxeied 
peio\skite mi\ed\aleru etc Whs is this not sufficient nlenttismg m the sense used 
in the Board's Decision 1 flic Board's Decision simph tgnoies this b\ not making a 
comment on this 3 he Boatd cannot simph ignore these more specific limitations \i\ 
doing so the Board s Decision docs not make out a puma facte case of lack of 
enablement as to these c ! airKs and Uieib\ as the broader claims oi Subs>e< tton III 
\s stated abo\e " " s 



Appeal No. 2009-003320 Page 44 of 46 



Serial No.: 08/479,810 



Speuikation [mikstj pioxidesa reasonable amoum of direction ui guidance, in 
idcntiKitii. the compositions in question as possessing high temperature 
super conduUne ehatactetistics 1 Also the "guidance" pro\ ided b\ Appellants' 
specification as summarised in Part V of BY \ starting at page i? under heading 
Summary of Claimed Subject Mattel" and m \ 'ohime 2 ol the Appeal Bnef is 
consistent \\ r th the passage abo\ e quoted from /// / e , bigstaa'i. I hus Appei lants' 
Substation 111 claims are enabled to these full scope 

5. Supplement Section 

For the Board's convenience in a subscquentK submited Supplement 2 
Appellants will prowdea cop\ uf////v ( 'ook, I S?7>t>04S and the fife In stun of 

US3736048. 

6, Supplement Section 

CONCLUSION 

for the leasons gnen in the Initial Request lot Reheating and this 
supplement Appellants jequest the Boart to sever se the rejection of the Subsection 



Appeal \o 2000-003 CO 



Page 45 of 46 



Sena! No O8/4 7O.810 



IE claims found not enabled In the Final Action and for which the Board's 
Decisions did nor reverse the Examiner's rejections, in particular for those claims 
reciting that the superconductive element can be made by know principles or 
ceramic science as identified in the initial Request for Rehearing. 



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

Respectfully submitted. 



Daniel i J Moms 

Dj Daniel P Morris Esq. 
Lead \ttoine\ 
Ret; \o i2 0M 



IBM CORPORATION 

intellectual Property Law Dept. 
P.O. Box 218 

Yorktown Heights, New York 10598 



Appeal No. 2009-003320 



Page 46 of 46 



Serial No.: 08/479,810