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 IS, 20<w 

Vpphcants Bednot/etai Docket YO ( >S7074B/ 

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

Hied June? rvimmei M kopec 

Vpeal \o 2000-o ( n?20 

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

Mai! Stop \ppeai Btiet Patents 

(. ommj ssi oner for Patents 

United States Parent and Trademark Office 

P.O. Box 1450 

Alexandria. VA 223 B- 1450 



SUPPLEMENT 2 
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 M C i~ K o 4 1 51 <a)< 1 } appellants request lthcaung of the 
Decision on Appeal dated <»° I" 2000 ( B 0tJJ a\ Decision) 

The Request hot Reheanng suhnntteu on No i ( > 2009 shal! he referred to 
lies em <is the initial Request *u the Initial Request lot Reheating The Supplement 
submitted on [2/10/200O v,hal i se lefened to as Supplement 1 oi the Supplement 1 
Request to? Reheating and this paper shall be iciened to as Supplement 2 oj the 
Supplement 2 Request fro Reheating 



Appeal No. 2009-003320 



Page 1 of 19 



Serial No.: 08/479,810 



ARGUMENT 



I Section 

Supplement 1 page 2\ linos 16-24 states 

1 he Boajd s Decision has created <i non-existent pet se rule of lack 
o{ enablement horn the ( k'fietih t h decision that stands fot the 
puipositivin that even jf there ate enabled species that come within 
the scope of a claim under e> animation the claim is not enabled, if 
the claim includes within its scope species for which the 
specification due* not expiiutK Jescttbe casting materials and 
starting conditions e\en if those undisclosed stanng mateuals and 
staiting conditions can he detei mined h\ routine experimentation fw 
poisons of ordinal \ skill in the ait fiom what is known to them to 
make such other species ( n'lH nu\ >/ announced no sueh per se uile 
I his cannot be a couect statement of the law since it is well settled 
law that all species that come with in the scope of a cSasm do not 
ha\e to be foieseen or known m Usance foi that claim to he 
enabled t he use and application off k none*, h b\ the Boaid to 
create the Board's created per se rule to find the Subsection 111 
claims not enabkd ts an etior of law 

Supplement 1 page 44 hues 6 - I ! states 



Also \s stated aKwethe Board s Deetsion ptowdes no legal 
authouK for the statement that 'a teasonable amount of du ectiun Oi 
guidance m identthmg the compositions m question as possessing 
hiiili tempeiature supeiconducme characteristics 1 is necessary to 
satisi\ the enablement requirement ineie is no I mted States 
Fcdetal ( ourt decision that states that "a reasonable amount of 
direction en guidance m identify uii: * species that com within the 
scope of a claim m necessan to satisfy the enablement lequuement 
of that claim to its full scope As stated abo\ e it ts well settled law 
that a patent applicant does not ha\ e to foiesee m ad" anee all species 
that come within the scope oi a claim foi the claim to be enabled to 
its full scope. 

The Board 1 Decision in the sentence budging page 21-22 states lefctting to /// / t 

Tot leasons detailed below, the ait oi nigh temperature 
supercouducmin is genes allv unpiedictable m that these is geneialh 
no reasonable expectation of snccessfulh aehiexmg high tempeiature 
supei conducts sit\ 



Appeal \o 2000~0(0:>20 



Page2ol 10 Serial \o 08 470 810 



Appellants' Brief Appellants' Replies, the Initial Request and Supplement I refer 
to the numerous decisions cited b\ Appellants' that support ^peHanls 1 assertion that 
it is well settled law that ail species that come within the scope of then claims ch> not 
June to be foreseen b\, predicted hv o? known in advance b\ Appellants or e\pheitl\ 
or implicith described rn their Specification for theu Subsection Mi claims to be 
enabled under L'Sl 1 12 fust paragraph The Boards' Decision which is to the 
conttan is in conflict with well settled law <m pellicular the 20 decisions in Section 2 
below ) Thus if such speues do tun have to be foreseen ot predicted In Appellants' 
Specification neither do the starting materials ot starting conditions to make those 
species because foreseeing staiting matenals and/or starting conditions to make those 
species would be equivalent to foreseeing or predicting species which is well settled 
law is not lequued Also if such species do not ha\e to be foreseen <>r piedictecl b\ 
Appellants' Specification neitliei does Appellants' Specification have tu provide 
guidance in jdentif\ing such species because guidance in identifung such specie 
would be equhalent to ioteseeing ui predictnig species which is well settled law ts 
not jequned The Board s Decision which requnes \ppelianls Specification to 
specificaih describe starting materials and conditions for Subsection 111 claims 
outside of the scope of w hat the Boa* d s Deer sum has found enabled is ai n\ ed at b\ 
quoting language (torn < h'th'tifee quoted out of context winch as states m the Initial 
request at page 2.'?, lines 15-18, ' divorces the court's holding from the facts upon 
which it was rendered Ri> ,> i ,> ( 1 - o s , \u t o lips ,e u ; >c >^ 
.[:illiiliM : .^lt.:..2Q0§.) As stated in the initial Request and Supplement 1 this is not 
what Gcnaitech stands for. And, as stated above the Board's Decision cites no legal 
authority that states '"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. It is uncontested that persons of skill in the 
art know how to make and test species that are with in the scope of the Subsection Ml 
claims, but which fall outside of what the Board's Decision considers enabled. Thus 
when the Boards' Decision states in regards to the Subsection III claims relying on /// 
r? W right "that there is generally no reasonable expectation of successfully achieving 

Appeal No. 2009-003 3 20 Page 3 of 10 Serial No. 08/479.8 1 0 



high tempeiatute super conducts it> * this inipiioitK requnos that ^peDants' 
Specification IbiCsfC" 01 " predict ' (i c manifest knowledge m advance) which 
speeies luxe the high temper atine supeiconduetn us properts this is tn contT ict wuh 
well settled law {m particular the 20 decisions in Section 2 Mow) that a patent 
applicant does not has e to fotesee all specie;? that come w ithm the sc^pe of a ehnm 
uiidej re\ sew to s ( itisfs the enablement leqmremem' f or these seasons the Board s 
Decision is an error or law. 

Section 

The following is a summarv of some of these mimejous decisions 

\ B\ \ paumi uph bi idauiv: pages 1 24- 1 25 ei tes fji:< > Hti >i hem, />/<.. \ ( tit . 

Inc , 1% F 3d 13o2, ^2 USPQ2d 1120 (Fed Cn l^oj um ch at ^2 I M>Q2d 

112° in8utinglrue\aea20rSPO2d 14^8 states 

It is well settled that patent Appiaants are not required to 
disclose e\er\ species encompassed b\ their claim?,, even in 
an unpredictable art, iloweset there must he suificient 
disclosure eitliei through illustiatne examples os teinnnoloux. 
to teach those uf Oidmaf \ skill how u> make and use the 
imemjon as hioadK as it is eianned 
(Emphasis added. > 

2 B\'l pajaijiaph budging pages °4- 1 )\ eites the unpublished Board decision 
oUA-pujie < '//»"/, oF t/SPQ2d 102^ {Bd \pp 20UU) which s{ nes, m legdtds 
to a 1% sucess rate : 

die exammei offers no evidence which would 
reasonable suppoit a conclusion that one skilled in 
this ai t w oul d s egat d tin s i ate of success as 
c\ idencing undue experimentation \\ e remind the 
examine! that some experimentation mas beiequtied 
as long as tt ts not undue /v fV/ttA 041 F 2d 4SX 
40o 20 { SP02d 1 4 it* i44M!-ed ( u J'^l) 
Appellants' disclosure esplicuh desciibes the 
methodologs to be used to anise at rhe claimed 
uansyeme earp As the record sum stands, the 
numbers emphasized h\ iheesarmnei would 
rea»onabK appear to reflect the- need foi a icpehttvc 
procedure, rathei than uu-due experimentation bs 
those wishing to practice the m\ entton 



Appeal \o 2000-0(0320 



Page4oJ to Sena! \u 08 470 810 



1 Him this jt is cScxjj that S C 112 fust paragraph, does not requite 
even thing to he picdteted tn ad\atKe and pet nuts the detemvj nation oj the 
combinations that will and will nc»t woik bs experimentation that ?s not undue 

3. B\ 1 pagt M hnes "*-}< horn bottom utcs the Board s precedential decision 
}<xpa<kJ^ks»fL2\l\ SpQ804<Bd \pp 1082) w Inch states a\2\"\ SPQ 
S(»~ a eonsideiable amount of e^pettmeutauon is pei rmssible if Jt is meiels 
routine." 

4. B\ I page 48 lines c>-tl ute 7///tr//<^ It/.mffi'o \ I h-J States ~\7\ 2d 
1^1 2U> I Sp()4"MFed (u NSi) winch stjks 

then know « to him for practicing his im erttton. 35 1 .S.C. § 

l lf2.jfeJs ii no£ 

which enable the practice of his invention in substantially the 
same way. Hughes Aircraft Co. v. United States, 717 F.2d 1351. 
1362 (Fed. Cir "l983);39 USPQ2d 1065. 

5. BY I page 92, lines 8~ 1 3, cites /// re Angsiadi. 53 7 F 2d 498, 1 00 USPQ 214 
(CCPA 1976) which states 

having decided that appellants are not requit ed to disclose every 
species encompassed by the claims even in an unpredictable art 

such as the present record presents, each case must be determined on 
its own tacts. 1 90 USPQ 2 1 4, 2 1 s! 
{Emphasis added). 

6. KB page 29, lines 1 2-25, cites In re fan-en, 492 F.2d 859, i 8 1 USPQ 5 1 
(CCPA 1974) which states: 

Accordingly, there appears to be no basis for the non-enabiement 
rejection on the theory that claims read on undisclosed polymers. 
While the claims literally comprehend numerous polymers in 
addition to the one specifically described in appellant's 
specification, nylon 66.. no persuasive reason has been yiven by 
the Patent Office why the specification does not realistically 
enable one skilled in the art to practice the invention as broadly 
as it is claimed. 

In re Bowen. 492 F.2d 859, 863 (C.O.P.A. 1974). 492 F 2d 859; 
J 974 CCPA LEX IS h>K IS! U.S.P.Q. (BNA) 51-52 



1 No. 2009-603320 



Page 5 of 19 



Serial No.: 08/479,810 



1 torn this passage ii is cleat that he (VP \ kumd that in hi te Bow on one 
example n\l.m do v\as sufficient to enable a oldim dneeted to the gemis, a 
'poh nur which mJudes mam species not disclosed m the Bowen 
specification, 

7. B\ I page I2S hnes 0-9 citing I>) w ( ivww / muiu'-i 'haiy<. < Y//< Vwu 
\huih\inta\ 221 l SPQ 1 fO" Orit'l T?ade< omm n S^M) states 

The faU that e\pen mentation ma\ bo complex does not necessatih 
make it undue, if the dit rspiuiih engages m suJi expei tmcntatiun 
In icCeitam Ltmtted-C haiue Cell Culture Miaocarneus, 221 USPQ 
I i OS i 1-4 < lni'\ I j ade ( omm'n i 4 AS > t 



8. B\ ! page 110 lines S-H utcs hi ( \„>h 4» I 2d 7^0 16° ( SPO 2^8 
(C C P \ V>~ 1 } state* 

11k COP \ m In ie (. ool- 16 ( > I SPO 29S KC states 

We agtee that appellants' claims aie not too broad to 
the point of unalidits " just because the\ read on e\en 
a \crs huge number of snopciatne embodiments, 
since it scents to be conceded that a pes son skilled m 
the jeieA.uH att could duenmne uhtch conceded but 
stot-\ei-tahi seated embodiments would be mopeiafne 
vMth expendihne ol no inoic effort than is nuimalh 
i conned of a lens destgnet checking out a pioposeci 
set of parameters. 

9, BY! page 2^3 lines 10- ! 1 utmg hucCnn >4" V Id *>78 ltolSK>fr*> 
{(. ( P \ W) states 

Ihe ( ( PA also cite Mmeials Separation, I Id \ Ihcie 242 t S 2ol 
ui Intel. Oii.52 ( ( PA 150«, i50M( CP V 19o5)i4M\SPQ 
(liN-Vt 0° and states Ihe eertamts re^uned in patenis is not gieatet 
than that which is icasonable ha\ mg tegaid to ihe subject matter 
involved. Minerals Separation, Ltd. v. Hyde, 242 U.S. 2ol. in re 
h!.udson ; .4iK; : C..P.A llWkil^u <(' CPA P>5.>) 

10 B VI page 225.. line .2 from the bottom to page 226.. line 5. ci ting In re Fhher, 
427 F.2d 833 166 USPQ 1 8 (CCPA 1970) states. 

Applicants discovered that ceramic materials are superconductors 
Their work lead others to look for other species Applicants'' 
evidence shows that those others used Applicants teaching to 
determine those species. Thus following In re Fisher "It is apparent 
that such an inventor should be allowed to dominate the future 

1 No. 2009-003 3 20 Page 6 of .1 9 Sena! No. 08/479.8 1 0 



patentable inventions of others where those inventions were based In 

some way on his teachings." (166 USPQ 18, 24) 

/» re lusher. 427 i" 2d 833, i 66 USPQ 18 (CCPA 1070) 



1 1 . RB page 32, line 6 to line 2 from the bottom, cities In re l-netterer, 3 i 0 F 2d 
259, 138 USPQ 217 (CCPA 1963) which slates: 

We find the arguments of the board and the examiner relating to 
experimentation necessary to determine the suitability of 
undisclosed salts to operate in appellant's claimed combination 
beside the point. Appellant's invention is the combination claimed 
and not the discovery that certain inorganic salts have coiSoid 
suspending properties. We see nothing in patent law which 
requires appellant To discover which of ail those salts have such 
properties and which will function properly in his con.tbinat.ion. 
The invention description clearly indicates that any inorganic salt 
which has such properties is usable in his combination. If others in 
the future discover what inorganic salts additional to those 
enumerated do have such properties, it is clear appellant will have 
no control over them, per se, and equally clear his claims should 
not be so restricted that they can be avoided merely by using some 
inorganic salt not named by appellant in his disclosure. The only 
"undue burden" which is apparent to us in the instant ea.se is 
thatwhtch^ 

appellant 1 he Patent Office would require him to do research on 
the "literally thousands" of inorganic salts and determine which of 
these are suitable for incorporation into his claimed combination, 
apparently forgetting that he has not invented, and is not claiming, 
colloid suspending agents but tire tread stock composed of a 
combination of rubber and other ingredients. 

We are not persuaded that our conclusion on this point is wrong by- 
decisions of this and other courts relating to the sufficiency of 
invention, disclosures in cases wherein the applicant is claiming 
chemical compounds per se 
{Emphasis added.) 

hi.reFueu^^^ 

138 U.S.P.Q. (BNA)2I7 

12. BV page 99.. lines 8-1 i from the bottom cites , hire Oeerdes, 491 F.2d 
1260, ISO USPQ 789 (CCPA 1974) stating: 

The Court in In re Geerdes further states at ISO USPQ 993 "The 
Board expressed concern that 'experimentation' is involved in the 
selection of proportions and particle sizes, but this is not 



Appeal No. 2009-003320 



Page 7 of 19 



Serial No. 08/479..8I0 



defeiimnafn e oi the question of stupe of enablement h is onlx 
undue experimentation that is fai ii " 

H RB page >4, hue I -k> citing ///k ^42 1" 2d ^64 10 i I SPQ 4-° 

{( ( PA I o~o) states 

The C(_ P \ hi In re Gojje, citing in tc FueUeicr states in rex ei sing <i 

i ejection for lack of i sic j enablement 

Fur all practical pm poses the board would hnut appellant 
to claims involving the- specific materials disclosed m the 
examples so that a competitor seeling to avoid infringing 
the claims would mcteh ha\e to follow the chscloswe in 
rhc suhseuuenth -issued parent to find a .substitute 
} iuweser to pto\ ide eiieuive mcetUixes claims must 
adequatetv protect m\ entors To demand that the fust to 
disclose shall limit his claims to what he has found will 
wotl. oi to materials which meet the guidelines specified 
fn "pretened" materials in a process such as the one hetem 
ins oh ed would not sen. e the constitutional pujpose of 
promoting progress m the useful aits See hi re buetterer, 
50 CC P \ 1 453, i -lo2, > 1 ^ 2d 250, 2b* UK I sPQ 2 1 ~ 
223 (1963). 

in re OotTc. ^42 1- 2d *64 ^ tC C P \ \*7i>) 
! f ;l X SPo <B\\)420 

M Paragraph budging pages 1 ii-144B\ 1 cites Oi ,v Khom lion sf)0 f- 2d ^06, 
IS? rSPO "?1 (CCP \V>74> siaimg 

I he dissent ui In re know It on states 

The pt election granted if appellant's claims ate allowed, 
ui\es htm die n ditto exclude others fiom making, ussng en 
soiling the uwetition ^51 S< H4 \o 1 1 ^ hi rs gi anted which 
includes the t itdit to use Thus & subsequent mvuitor of a 
new and unob tous method of scj ambling max obtain a 
patent which, hs the terms of its grant is subset uent to 
appellant's patent Howexer, the subsequent tmentot would 
hase the right to exclude appellant from making, using oi 
selling the Luei invention Foi that reason brood protection 
max be granted here without leijufiing disclosure of e\ en 
embodiment wjthm the scope of the claims (tmphasis 
added) In sc Know] ton, 500 F 2d 57> (( L P A h>74r 

Ihus a genus claims is enabled v\hen there aie undisclosed species that are 
later dison ered and sepamtch patentable 



Appeal \o 2000~{KO:>20 



Page Sot 10 Set ial \o 08 470 810 



15 BY! pout- 48 lines ! 1 -22 cues fc\n< ntli oip \ Ia>iuwi i\>tp 274 1 >d 
li^j.OOl Sl»Q2d 18 c l (hed Cu 200 h which states 
rnabje;(nent m 

means of implementing an itnention at pains of losing his 
patent franchise. Wen.' it otherwise claimed inventions would 
not include rmproved modes of ptaetieing those m\ entions Such 
nauow patent ughts would taptdK become vvoithless as new 
modes of practicing the invention developed and the inventor 
w ould lose the henefjt ot the patent baigam ln\ ttrogen Corp \ 
Clomt-ch Labs . Inc 42-) I 3d 1052, 1071 (1 ed (u^'Osy \nd. 
' Our ease is dear that an applicant is not required to 
descrihe in the specification every conceivable and possible 
future etnhoditnent of his invention. ' Rexnoid Coip \ laitiani 
(.Oip,274F *d l^o H44, 601' SPQ2D(BV\) ISM (red 
Cir. 2001) 



\(i Supplement 1 page 8, lines 1 -2°, cttmg ///fe tfamk^ 85$ f- 2u 7.51 
7^o 8TSPQ2d 1400 (Fed Cu states 

Thus In n Hothh permits an undisclosed species to be found enabled it 
u "can be obtained hum readdv available souiees ot derived itom 
teadih available stalling materials thtotidi toutine screening that does 
not regime undue experimentation I heie is no tt-quuement in In ti 
Uanch for the "soinees or stalling mateuals' to be described in the 
Specification couesponding to the claims on appeal, it is onh requued 
that theie be readiK a\atiable and that what is claimed he 'be obtained 
ft oni teadih available sources or domed from teadih available stalling 
mateuals through toutine screening that does not require undue 
experimentation ' In the preseni application on appeal theie is no 
evidence that species (including Sithsetion 111 superconductors) within 
the scope of the claims foi which the Boatd's Decision has not re 1 * eied 
the EXamtneis" ie|easons cannot be "be obtained horn readilv available 
somces iir denved horn teadih available stalling materials thtough 
j online saeemng that does not tequue undue evpeitmentation 

17 B\ 1 paragiaph budging pages 228-22° citing Minaah Sepaiaiion, 
Ltd v I/uk , 242 I S 2<> \ 1 1° 1 0} states 

Minerals Sepaiation, ltd v fhde 212 1 S 261 , 2"*0~7 1 (1 *>16), in 
discu^smy the adequacy of the disclosme of the fiofh flotation pioeess of 
ore separation: 



1 No. 2009-003320 



Page 9 of 19 



Serial No.: 08/479,810 



Fquali\ untenable is the claim that the patent is m\ahd Jot 
the reason that the e\ ideiKe shows that when different oses 
die heated piehmmat\ tests must be made to determine the 
amount of oil and the extent of agitation ueeessaiA tn order 
to obtain the best lesults Such sanation of fitratiucut must 
he within the stupe of the claims and the certamh which 
the Saw leqimes in patents js not uicatet than is icasonable, 
kntnu icgani to then sub|ea-maUer I he composition of 
ores \aiics mfmiteh, each one presenting its special 
piohietn, and it is ohsnuislv impossible to specify in a patent 
the picesse tteatment winch would be most successful and 
economical m each case The ptoeess ts one for dealing with 
a Idi ge class of substances and the lange of tieattnent within 
the turns of (he claims while leaun^ something to ihe skill 
of persons appbutg the [mention iselearh suftieienth 
definite to miide those skilled in the ait to its success} ul 
application, as the exickiice abundant! \ shows Tins satisfies 
the law Mow it v Whitnev, 14 Wall 620; Ives v Hamilton, 
°2 S 42o and (\unegie Steel Co \ { ambna It on { o , 
iSS I S 4i»V4^, 

IS B\ 1 paiagiaph bndgnig pa^es 47-4S utsng ,V/ ////'/ 1 Muf^inhnii 
I A't Corp . 7?s 2d U07 227 ISPQ <77 (red Cir states 

The ( AH has stated sn Srs Intl \ Matsushita I Ice t oip "75 I 2d 1 107, 
1521 tied (u 227 TSPO ^77 Sfcfr (hat (his is not necessars 

The law does not require the im possible. Hence, it does not 
re quire that an applicant describe in his specification e\ery 
conceivable and possible future embodiment of his 
indention. The law iecogni?es that patent specifications are 
vuUiei! loi ihosu skilled m the ait and requires onh that the 
nnentot descitbetbc "best modi" known at the tmu to him of 
making and using the m\ ention ^ X S ( " ^ 1 1 2 

(Emphasis added.) 

19 B\ 1 page 2>3, lines! ^-2° citing If / (i<>ieA Issocfatc*. I>ic \ <hi/hhk, 
Uk ri\V 2d 1 MO 220 \ NPO >i» i red fn t^H) states 

1 he ( \VC adopted the Snpicme Couit MmeiaK \ Thde I nablement 
Statement sn \\ I Gote ^ Vssociates, Ine \ Oarlock, Inc stating 



1 \o 2009~0(0:>20 



Page Jl'oi 10 



SemilXo 08 4"9 8I0 



fbe dismct eouit m\ ahdated both patents lot indefiniieness 
because ol sis view thdt some "tna! and uioi" ssould be 
needed to deteimme the "losses limns" of stiueh rate abosc 
10% per second at sanous temperaUiies abose degiees 
C t hat ss as crux Vssuming some experimentation were 
needed, a patent is uot iusalid because of ;i need for 
experimentation. Minerals Separation, Ltd. v. Ihde, 
242 I .S. 2ft K 270--I. ol L. i d. 28o. 3~ S. Ct. 82 (1«M6). 
\ patent is invalid onl\ when those skilled in the art are 
required to engage in undue experimentation to 
practice the intention. In re Angstadt. 537 F.2d 4*J8. 
503-04. 190 I M>Q 214, 218 ((TP A 1076). Thete was no 
ewdence and the court made no tlndtng that undue 
experimentation was ic-quited 

\\ ! GoieA. Associates Inc \ Gatlock !nc,721 ) 2d 
1M0, 11^7 t Fed Or i ( >8^)22t> t SPQ <B\A> *<>i 
{ (} mphasis added } 

20 B\ 1 page 102, lines i i-r cites hue -In^raJr ^7 b 2d 4% (B\ \ 
page 102, lines 1 1-17) which cites helds \ Conosej which states 

a disclosuic complies with the ho\s -to-make icquucment of >5 I SC 
I 12 e\ en though "some expenmentation pto\ uled Jt ss not an undue 
amount" (and ptosided that it does not leqimc mgenuits boson J that to 
be expected of one of oj dinars skill in the ait), is sttli jequned to adapt 
the ins ention to pattfutlai settings 

■ i< Id* , Ono.,ei v i O ^ \ 1 ^ C C V \ W! } 

None of these 20 decisions lequue that the starting matetiais and staking conditions k>t 
all species that come within the scope of {he damn undei seuess he desutbed m the 
specification cottcsponding to those claims as lequued bs the per se tule of the Roaid s 
Decision The i 20 decisions cited abos e can be summauzed bs these selected excerpts 
fiom duse decisions v Applicants ate uot tequtrul to disclose eseis species en com passu! 
bs thesr daims, e^ en in an unpiedictable ait J tco B/othcfn " Vn applicant fot patent is 
leqmied to disclose the best mode then knoun to htm lot piaeuung his ins entton 
FSC 1 1 2 He is nut requited to piedict all luiuie des elopments \\ Inch enable the 
piacticc of his invention in substantial the same ssas. ////y//c\ Vnnfft < >> 
' [ \jppei!ants aie not lequued io disclose e\ers species encompassed bs the claims esen 
m an unpiedictable art " In w Ingstttift ' Enablement does not requite the inventor to 
ibtesee eseis means of implementing an imention at pains of losing Ins patent franchise 



Appeal \o 200^~00?:>20 



Page 1 1 oi 10 



Seital\o 08 4"9 8I0 



Oui case lav* is dear that an appheani is not lequned io desuihe in the specification 
e\ en concen able and possible futuic embodiment of his ms ention " IL'xnonf 'I lie law 
dues not requne the impossible Hence it does not require that an applicant desaihe in 
Ins specification every conceivable and possible futuic embodiment of his (mention ' Sn 
hit't " Assuming snme expenmentation uete needed. <i patent is n<U invalid because of a 
need foi experimentation Minerals Sepauibon ltd \ Ihde. 242 1 S 2ol, 270~i. ol L 
Fd 2S6 i^S ti ^(lOld) A patent is invalid oniv when those skilled m the art are 
f equued to engage in undue expei unentation to pi actice the m\ ention in ie \ngstadt. 
<^7 \- 2d4°«, S(^4)4 i«0 C SPQ 2J4 2H <C0) J \ Wo) * if/ (,W Fxpeumemation 
is ' not an undue amount" when 'it does not tequue in^emnh; bevond that to be expected 
of one of oi dinars skill m the ait " / iclth Wheie "[i]he process is one fen dealing with a 
large class ot substances f \ anes infinitels' jand the range of treatment within the teims 
(>f the claims, while leaving something to the skill of pewns appKmg the invention is 
death suffieienih deiimtu to imule those skilled m the ait to lis sttccessiii! application as 
the e\ idence abundant I \ shows"* Minerals enablement is satisfied 

The Board s Decision make** no attempt to reconcile the lucousistencv between its 
pei se uile and the holding of these 2(» decisions These 20 decisions as applied in 
Appellant s Hi ief appellants Replies the Initial Request Supplement 1 and this 
Supplement 2 suppoit \ppeiiatits' position thai the Subsection 111 claims die enabled and 
do not support the Boaid s Decision that the Subsection Hi daims ase not enabled 

3 Section 

BV1, page 105, lines 12-17 cites/?* re Calkmni, 56 i F.2d 220, 195 USPQ 150 

(CCPA 1977) stating: 

IheFvimmef cued in te( oltannt i 1 -^ 5 'SPQ Ml) which \ppltcants believe 
is not on point since in in ie Cohanm "[tjheie is not a single specific 
example or embodiment b\ v\a\ of an tliusiration oi how ihe claimed 
method is to be practiced " ^105 USPQ I ^0, \^2) in coiurdjisttnujon as 
noted ahose, there are uumeious examples cited in \pplicants* specification 
and incoipoiated teieienees Thus this decision is not on point 



Appeal \o HOCM-OlO >20 



Page J 2 oi jo 



SenaiXo 08-T9 8I0 



//; rc Hands cites /// re ( 'ohatmi for the proposition "However, experimentation needed 
to practice the invention must not be undue experimentation In re Wands, 85$ F,2d ?."> I 
!^10:.ei,(jLj08<SJ (See Wands footnote 20.) 



Vs stated above and m Supplement 1 Inn Wotich expressls permits reliance on 
vxhat is teadtix available t known) to pes sons or skill in the art and not explrcstix descnhed 
in the spec ft! cati on to detesmme othei species that come within the scope ot the claim but 
which ate n<U expiicuh descitbed < kiti.'itn\ h cites hi n- ll\i>nh ?as descttbed m 
Supplement I page 22 last lull patagiaph) Consequentlx ( n'iHnu\ h cannot haxe 
announced the pet se rule applied bs the Boasd's Decision using deiisnfeih to find 
Appellants Subsection III claim not enabled (}eftcfth\h decided 20 \eais latei is pist 
another \ et sn>n of c \ffunifi' tn < h ncf*h\ h thet e w as not <>ne embodied example see 
the discussion m Supplement i at page 20 lines 13-23 which states 

In this quoted lan^ua^e the CAI ( is icier tin*! to the moxel <ispect " 
which tn the (. \F( made cleat m tegards to the < fieri fee Ji claim is 
'cieasable iusson e\ptessjon of hOH ' The ( \K is stating when no 
example is provided of how to achieve "cleavable fusion expression oi 
hGH " undue cvpcttmeiuatton is tcquued if as S<iter discussed in 
iicusfthtfi the experimentation to determine how to achieve 
'cleaxdhfe fusion expression oi'h(i!l" is not ottix tout me 
expei imentatn>n In the passage quoted abox- e the C A>C states "w hen 
there ts no disclosute of am specific starting mateuai oi c>f am of the 
conditions under which a process can be earned out, undue 
experimentation is requued" (Emphasis added } Bv the use of the 
wouis v a process ' it is clear indication that the C-VIV is refuting here 
to the fact that the ( n'fh'tth't h specification pi ox ided no example of 
how to practice 'cleavable fusion expiessson of hGH " 



The Board's Decision page 14 lines 2~i(i cpiotes the following from in'tiaiu^h 

{ Ajfgnments, tocusecl almost exelusrxelv on the lex el of skill in the ait 
ignoie the essence of the enablement retjttsiement Patent protection ts 
gutnted in return fui an enabling disclosuie of an inxenfion not lor xagne 
intimations of ucnciai ideas that mas or mas not be wotkablc ,Ste Bictmci 
w MattoAt. 383 L.S. 519. f5.i5-J.io. 8o S. 1 1 1033, 1042-43, io L.Ld 2d oo 



Appeal No. 2009-003320 



Page 1.3 of 50 



Serial No.: 08/479.810 



148 USPQ 689, 696 {1966} {staling, in context of the utility requirement, 
that "a patent is not a hunting license, h is not a reward for the search, but 
compensation for its successful conclusion."). Tossing out the mere germ 
of an idea does not constitute enabling disclosure. While every aspect of a 
generic claim certainly need not have been carried out by an inventor, or 
exemplified in the Specification, reasonable detail must be provided in 
order to enable members of the public to understand and cany out the 
invention. 

ikfientech, Inc. v. Novo NordiskAS. 108 F 3d 1361, 1366 (fed Cir. 1997). 

Appellants state at BVI page 108, line 15 to page 109, line 10. 

At page 7 of the Office Action of 07. 28. 2004 in footnote 5 the Examiner cited 
Brenner v Manson 1 48 USPQ 68° for the statement : ~a patent is not a hunting 
license. It is not a reward for the search, but a reward for its successful 
conclusion. The claim in question was in Brenner v. Manson a method of 
making a composition. The composition had no known use To issue a patent 
for such a process would be granting a hunting license for a utility that may 
occur in the future. The method was found to Sack utility under 35 USC 101 
and thus was found not be patentable subject matter. 

Even if it were appropriate to apply this quote from the Brenner decision, it 
would only apply if undue experimentation were necessary to fabricate samples, 
not specifically fabricated by Applicants, that come within the scope of 
Applicants' claim. As clearly shown by Applicants, undue experimentation is 
not needed to practice the inventions of Applicants' rejected claims. All further 
developments were based on Applicants' teaching. Applicant's have taught 
'liow to make and use" species within the scope of their claims. This is all that 
is necessary for enablement The Brenner v. Manson statement mav be 
applicable in the situation of enablement when an applicant seeks a claim for 
which it is not known "how to make and use" the invention. Under such a 
circumstance the applicant would be waiting with an issued patent as a 'limiting 
license*' for someone to discover 'how to make and use' 1 the invention. This is 
not the situation in the present application since Applicants have taught "how to 
make and use*' their claimed invention. 



Thus the way Appellants have shown the relevance of Brenner v. Sanson to enablement 
and how it supports Appellants* position that their claims, including the Subsection 01 
claims, are enabled is the same way that the CAFC has applied it to enablement in 
Genen/ech. Thus Brenner r. Mention supports the enablement of Appellants' Subsection 
HI claims and does not support the Board's Decision that these claims are not enabled 



4 Section 

Appeal No. 2009-003320 Page 14 of 19 Serial No.: 08/479,810 



Appellants note that to satisfy the enablement requirement to the full scope of a claim, a 
patent applicant Joes not have to be in possession of a fust principle* die on explaining 
the principles undeilsmg the mxention I his is well settled law as statu! h\ In ie Isaacs 
3i"l 2d m\ 1 Ao I SPO (COP V \ at B\ 1 i 70 ana A^'i. v Oingg HH h 2d 
i ^7\ 1 1 I SPQ21) ! {rod Cu 1^0) ,u B\ i I -0 Thus the Boards apparent iehance 
cm the statement from the Sehuliei \itieie "fi"|hu» fat the existence of a total i\ new 
superconductor has pi oxen impossible to predict from first principles" to find the 
Suhseuion Hi claims not enabled is an enoi of law \s noted abo\e ' [a]n applicant for 
patent is tequued to disclose the best mode then known to him loi pi actio nt: his 
invention l^l s( ^\\2 He is not tequued to pi edict ai! kituie developments winch, 
enable the practice ot his itn entton in substantial the same was." Hughes Uraafi < '*> 
1 bus a first principles theor\ to predict all futttie developments in the high temperatme 
supetconductoi ait is not tequued and the lack of one if this for the sake of argument is 
assumed to be true, does not mean Appellants Subsection UKlaims aie not enabled Vs 
descubed in detail in the fust Affida\ it of Newns {Bi icf Attachment AP) e\en if a first 
principles theuiv fui high temperature supei conductivity existed ai the iune of Appellants 
iiist filing date, that would not ha\e permitted a person of ordinary- skill m the ait to 
' foresee" oi "piedief othet species without doing a ' iheoreftcal expetunent ' as that 
term is described m the first News Affidavit which is equivalent of doing a physical 
expenment as descubed m die fust News viftdavit fjRtief Attachment VP paragraphs 7, 
S, ° and i 8 ) 1 1nis the abiltfv to deTetnune other species by routine experimentation ami 
testing is equixaiem to fuiMiig a first pnncipies theoi\ ^See die fiist Affidavit of Newns } 
Ihis is essenfiaih the reason for the icsult in Minerals Separation \. H\ck and Inn 
t 'oak And infinite amount of toutine expt-ii mentation stated m \Imetals Separation v 
H\ile and an equivalent unlimited amount of loutme calculation as stated in hi ie < \»>k ts 
not fatal to enablement \s stated b\ Vppeilants ' predictability m the patent law means 
detenmnabilttv without mgenuuv bexond that of a peison of ordinal) skill m the art 
bvpci indentation is undue when it invokes ingenuity besond that of a person oi oi dinars 
skill in the att but is not undue li it involves an infinite amount or louttne 
e\pu i mentation I hat is what the I nited States Supteme Court stated m Miner ah 
Appeal \o 2000-O(0:>20 Page J 5 oi 10 Serial \o 08 4"9 810 



Separation v. Hyde. Since it is wei! settled law that ah species that come within the 
scope of a claim do not have to be foreseen or predicted by an Appellants" Specification 
to satisfy e the enablement requirement, this means that reasonable expectation of success 
cannot mean knowing those species in advance or knowing the starting materials and 
starting conditions in advance to make those species It is only necessary that how to 
make and test those species be readily available to persons of skill in the art once there 
are explicitly described working embodiments in Appellants' Specification and the other 
species are determinable by routine experimentation as is the case with regards to 
Appellants' Subsection iff claims. The requirement of the Boards' Decisions that the 
starting materials and starting conditions be described in Appellants' Specification for 
superconductive species that come within the scope of the Subsection Hi claims but 
outside of what the Board's Decision has indicated is enabled is contrary to the 20 
decisions quoted above, in particular it is contrary to the United States Supreme Court 
decision in Minerals Separation v. Hyde. Enablement means to empower a person of 
ordinary skill in the art to practice a claim to its full scope, which Appellants have done 
in regards to the Subsection Hi claims, in particular those reciting that the superconductor 
can be made by known principles of ceramic science and/or directed to ceramic like 
materials. Enablement does not mean describing in the Specification all of those species 
as the 20 decisions cited above state. The Board" s Decision if applied to these 20 
decisions would find that these 20 decisions were decided in error including the United 
States Supreme Court decision in Minerals Separation r. Hyde.. Thus the Board's 
Decision finding the Subsection HI claims not enabl ed is an error of law. 

5 Section 

As stated m Section of Supplement 1 submitted hetevuth ate a cops oi 

♦ hue ( \ >oK \tt ichment 

♦ I M7m<m Attachment \Q 

♦ the file histojs ot I S i71o04X Attachment 4R 

6 Section 



Appeal No. 2009-003320 



Page 16 of 19 



Serial No.: 08/479,810 



The Initial Request page 4 referring to the announcement of Appellants award of 
the i c >87 Nobel Prize states: 

Ihks states th.it the i°8~ Nobel Prize was awarded to \ppel i ants ' for 
then important bieak-through m the dist„u\u\ oi supetcondueinm 
m ceKimie matt-nate ' i he Board s Decision does not find cnabieJ a 
claim commensurate m scope with the contribution for which thxN 
were awarded the \obcl Pn/e 



The Boards" Decision at page 35 Hues 5-9 from the bottom states 

I'him ( iffh'th Vi s v I h'Kalh < n'tian \ G>rp 1 1 s f *d H ^ I MO < K'd 
( u 200 1) Kuther, the ^lasu < ninth decision affiims that pioneering 
smenhuiks (e g , Appellants' Nobel pi ize winning discox en of high 
temperature supu conductor) ate not entitled to a lowei standaid of 
enablement. Sd. at 1341-42. 

Appellants ha\c neser aigucd that thev ate entitle to a lowei standaid of enablement 
became thev won a \obei Puce or because thev asserted that then invention was a 
ptoneen ng i n\ entum 1 n tin s tvpe of come st Appei lanfs run e onl v i eli ed on the Boards' 
pi credential decision Lxpan<j Jiitkuvi B\'i page 97 fust paragraph states 



1 he Board in b\ parte Jackson futthei states at 2 i~ I SPQ 808 " The 
problem ot enablement of processes earned out b\ micioorgamsms 
were untqueh different ftom the Held of ehemisttx goner a! K Thus, \\c 
are com meed that such recent cases as In te \ngstadt 337 f- 2d ^H, 
l ( K) I SPQ 214 (UT \ 107o) and in re Geetdcs40j F 2d !2o0 180 
t'SPQ 78« (( CPA 1974) are in apposite to this ease " Therefore smce 
the present application is not dnected to biotechnolouv oj 
microorganism invention, the decision of E\ parte laeksou does not 
appK but In ic \ngstadt and In re freer dos do appb 

fhe Boatcfs Decision is almost e\clusi\eK based on tlnee hioteehnologv decisions 
( fefuntixii hui }\ light and /// it U'at>J\ and snbsUtrUkiih tgnotes /// tc AttgvaJt and In 
a- < lectins As noted above it is Appellants position that the Board s Decision has 
applied these decisions mcotiectK resulting m ettois of law \s noted above //; ic 
'higshiJt cxpltcith quotes ftom and telses on the i mted States Mrpte me Court decision 
Vtmiais Sq\!/<(ttofi v lh<k' Although Appellants" Bnef and Appellants Replies 
Appeal \o 2000-0(0320 Page 17 ot 10 Serial \o 08 4"9 810 



espltcith and e\tensnoh lehes on this I mted States Supreme ( outt decision and 
decisions apphmg it, such as A?/*.' i/i^iaJr, the Board's Decision has run commented on 
thus anah sis but lifts ignored f t Vppel hints ha\ e supported their \ teu bv e\tenst\ e 
quotations fn>m the legal authoiuv, that thes ha\e rehed on the Boaicfs Decision has 
cssentiaih made no lOinment on this hut has ignoted it The facts of the Subsection 111 
claims ase almost identical to those of \/m<./aA Sipaniiion \ H\Je It js \ppelhmtV 
position that under the holding of \f/fh'>i/h Sspanui'W i W\iL' the Subjection III claims 
are enabled m particulai for those claims reciting that the superconductive element can he 
made b\ know pnnetpies of ceramic science- and or being a ce-tannc ceramic like mate-tial 
of having a ceiamic chaiaaenstic as identified in the Initial Request for Rehearing 

7 Section 
CONCLUSION 

For the reasons given in the Initial Request for Rehearing, Supplement I and this 
Supplement 2 Appellants request the Boart to reverse the rejection of the Subsection HI 
claims found not enabled in the Final Action and for which the Board's Decisions did not 
reverse the Examiner's rejections, in particular for those claims reciting that the 
superconductive element can be made by know principles of ceramic science and/or being 
a ceramic, ceramic like material of having a ceramic characteristic as identi fied in the 
Initial Request for Rehearing. 

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

Respectfully submitted, 



■'Daniel P Morris 1 ' 

Dr. Daniel P Morris. Esq. 
Lead Attorney 

Appeal No. 2009-003320 Page 1 8 of 1 o Serial No. . 08/479.8 10 



Reg. No. .32,053 
945-321 7 



IBM CORPORATION 
Intdkvtua! Prnpeitv f in\ Dcpt 
PO Box 218 

Yorktown lk>tght«. New Yc«k i<*5°S 



Appea! No. 2009-003320 



Page 19 of 19 



Sella! No.: 08/479,81.0