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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

In re Patent Application of Date: Jan. 1 ., 2010 

Applicants: Bednorz et a!. Docket: YO91987074US5 

Serial No.; 08/479,610 Group Art Unit: 1751 

Filed: June?, 1995 Examiner: M. Kopec 

Appeal No. 2009-003320 

For: NEW SUPERCONDUCTIVE COMPOUNDS HAVING HIGH 
TRANSITION 

TEMPERATURE, METHODS FOR THEIR USE AND 
PREPARATION 

Mail Stop: Appeal Brief - Patents 

Commissioner for Patents 

United States Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1460 

SUBSTITUTE 
REQUEST FOR REHEQRING 
UNDER 
37 aF.R.§ 41.52 
Of 

Decision on Appeal dated 09/17/2009 

Sir: Please consider the following. 

Pursuant to 37 C.F.R, § 41 .51 (a)(1) appellants request rehearing of 
the Decision on Appeal dated 09/17/2009 (Board's Decision). 

NOTE 

Appellants request that this Substitute Request for Rehearing be considered in 
substitute for the Request for Rehearing submitted Nov. 19, 2009, This Substitute 
Request corrects typographical errors and language errors in Request for 
Rehearing submitted Nov. 19, 2009. 

Appellants request that this Substitute Request for Rehearing be considered with 
the following supplements to the Request for Rehearing: 

• Supplement 1 submitted on 12/10/2009, 

• Supplement 2 submitted on 12/18/2009, and 

• Supplement 3 submitted on 01/01/2010 . 

Appeal No. 2009-003320 Page 1 of 121 Serial No.: 08/479,810 



LIST OF 

ACRONYMS AND ABBREVIATIONS 

USED IN THIS PAPER 

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

1 . BP or Board's Decision for the Decision on Appea! dated 
09/17/2009; 

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

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

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

5. BV1 for Appeiiants Brief Volume 1 fiied May 15, 2008; 

6. BV2 for Appeiiants Brief Volume 2 fiied May 15, 2008; 

7. BV3 for Appeiiants Brief Volume 3 fiied May 15, 2008; 

8. BV4 for Appeiiants Brief Volume 4 fiied May 1 5, 2008; 

9. BV5 for Appeiiants Brief Volume 5 fiied May 1 5, 2008; 

10. APPELLANT'S BRIEF for BV1 , BV2, BV3, BV4 and BV5 coliectively. 

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

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

13. RBI for the Reply Brief Supplement 1 fiied October 21 , 2008; 

14. RB2 for the Reply Brief Supplement 2 fiied October 28, 2008; 

15. RB3 for the Repiy Brief Supplement 3 fiied November 6, 2008, 

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

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



Appea! No. 2009-003320 Page 2 of 121 Seria! No.; 08/479,810 



INITIAL COMMENTS 



The Board's Decision page 30, lines 8-10 states "the claims under revievv' 
are not iimited to ceramic compositions (i.e., compositions which can be 
made using i<nown principies of ceramic fabrication), Appeiiants 
respectfully disagree. The foilowing claims recite that the high To element of 
the claims from which these daims depend '^can be made according to 
known principles of ceramic science" or similar recitation: dependent claims 
322 to 360. 414 to 427. 436, 453 to 465, 473 to 475, and 484 to 491 and 
independent claim 522. Of these claims the following are allowed by the 
Examiner: 330, 335, 336. 346 and 358. Most of the dependent claims are in 
multiple dependent form. The Board's Decisions reversed the Examiner's 
rejection of parts of the other multiple dependent claims. Others remain 
with the E.Kaminer's rejections not reversed. 

In addition, 

• independent claims 59 is directed to "ajeram|cj,ike materjar and 

• independent claim 374 is directed to " a material comprising a 
ceramic characteristic. ', 

Dependent claim 351 depends from claim 59 and states that the "ceramic 

||,ke„materta|'l'lcan„„be,„^^ pri,nci,oles,„of„cerajmic 

science." 

Dependent claim 419 depends from claim 374 and states that the " the 
material comprising a ceramic characteristic ' " car> be made according 
to known principles of ceramic science." 

Some of these claims are listed below. 

Appeal No. 2009-003320 Page 3 of 121 Serial No.: 08/479.810 



Appeiiants note that at this web address of the Nobel Prize website 
Iittp://nobeipnz6.orq/nobel prize5/phv5ics/iSL.feaie5/1987/ 
the foiiovving announcement of Appeiiants^ award of the 1 987 Nobel Prize 
can be found. 




The Nobel Prize m Physics 1987 

Tiiis states that the 1987 Nobel Prize was awarded to Appellants "for their 
important break-through in the discovery of superconductivity in ceramic 
materials." The Board's Decision does not find enabled a claim 
commensurate in scope with the contribution for which they were awarded 
the Nobel Prize. 




Appea! No. 2009-003320 Page 4 of 121 Seria! No.; 08/479,810 



CLAIM 59 A combination, comprised of: 



a ceramtc-ttke materia! having an onset of superconductivity at an onset 
temperature greater than or equal to 26°K, 

means for passing a superconducting electrical current tfirougfi said 
ceramic-iike materia! whiie said material is maintained at a temperature 
greater than or equai to 26°K and iess than said onset temperature, and 

means for cooling said superconducting ceramtc-iti^e materia! to a 
superconductive state at a temperature greater than or equal to 26° K and 
less than said onset temperature, said materia! being superconductive at 
temperatures below said onset temperature and a ceramic at temperatures 

above said onset temperature. 

CLAiM 351 A combinatton accordmg to ciatm 59, wherein said 
ceramtc-ltke material can be made according to known principles of 
ceramic science. 

♦ 

CLAIM 374 A combination, comprised of: 

a„m,aterialj,om|?risi,n,a,j„^^ comprising an onset of 

superconductivity at an onset temperature greater than or equai to 26°K, 

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



Appeal No. 2009-003320 Page 5 of 121 Serial No.: 08/479,810 



means for cooling said superconducting materia! having a ceramic 
characteristic to a superconductive state at a temperature greater than or 
equai to 26°K and less than said onset temperature, said material being 
superconductive at temperatures beiow said onset temperature ar)d a 
ceramic at temperatures above said onset temperature. 

CLAiM 41 9 A combination according to ciaim 374^ wherein sa|d^materiai 
can be made by^^k^ 

♦ 

CLAIM 622 An apparatus comprising: 

a superconductive current carrying element comprising a To greater than or 
equa! to 26 °K 

said superconductive current carrying element comprises a 
composition^ Jhat^can^^^be^^^made^^^^^ 
ceramic science . 

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

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



Appeal No. 2009-003320 Page 6 of 121 Serial No.: 08/479,810 



♦ List of mutt J pie-dependent claims reciting limitation "made 
according to known principies of ceramic science" 

Underlined Referenced Claim Numbers - allowed by the Examiner 

Double Underlined Referenced Claim Numbers - Examiner's rejection 
reversed by the Board's Decision 

Referenced Claim numbers not underlined or double underlined 
remain rejected. 

CLAIM 326 An apparatus according to anyone of claims 93 to 95 or 138 . 
wherein said mixed copper oxide can be made according to known 
principies of ceramic science. 

CLAIM 327 {Previously Presented) A combination according to anyone of 
ciaims 64 or 1 35 . wherein said mixed copper oxide can be made according 

to known principies of ceramic science. 

CLAIM 329 A superconductive combination according to anyone of claims 

12 to 23, 1 10, 131, 132 or 367-370, wherein said superconductive 
composition can be made according to known principles of ceramic science. 

CLAIM 334 An apparatus according to anyone of ciaims 275, 276, 310 or 
311 , wherein said superconductive copper oxide can be made according to 
known pnncipies of ceramic science. 

CLAIM 337 A device according to anyone of ciaims 114 or 11 7. wherein 
said transition metai oxide can be made according to known principles of 
ceramic science. 



Appea! No. 2009-003320 Page 7 of 121 Seria! No.; 08/479,810 



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

CLAIM 355 (A combination according to anyone of claims 77. 78, 79. 80. 
81, 186, 379 or 38Q , winerein said mixed copper oxide composition can be 
made according to known principles of ceramic science. 

CLAIM 356 A device according to anyone of claims 124, 125 , 126, or 127, 
wherein said composition of matter can be made according to known 
principies of ceramic science, 

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

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

CLAIM 427 A apparatus according to anyone of claims 402, 403, 404, 405, 
406 , 4QLJ,Qa, 409. 410. 411. 412 or 41 3 , wherein said superconductive 
composition can be made by known principles of ceramic science. 

CLAIM 549 An apparatus according to anyone of claims 496 to 500, .§Q1, 
502, 503, 504. 505. 506. 507 . 508, ,5Q,9„„5„1Q, 511, 512, 513. 514or 515 . 
wherein said superconductive element can be made according to known 
principles of ceramic science. 



Appeal No. 2009-003320 Page 8 of 121 Serial No.; 08/479,810 



ARGUMENT 



1. SECTION 

BD page 7 footnote 4 states 

Ciaims 138 and 326/138 are not inciuded in the Examiner's 
rejection and therefore are not on appea! and are not under our 
jurisdiction. Nevertheless, Vv'e observe that these claims are not 
iimited to the subject matter described as enabled in the Answer 
(or in this Opinion), Under these circumstances, the Examiner's 
failure to inciude claims 138 and 326/138 in the § 112, first 
paragraph, rejection before us appears to be an inadverteiit 
oversight. 

BD page 2 in footnote 1 acknowiedges thai claims 138 and 326/138 are not 
on appeal since they are not in the iist or rejected ciaims in the Examiner's 



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



2. SECTION 



Although BD states at pages 2-4 that 

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



Appeal No. 2009-003320 Page 9 of 121 Serial No.; 08/479,810 



oxide, a composition, a ceramic characteristic, and a 
means. 

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

contained in many of Appellants claims which is that the high Tc 

superconducting element "can be made according to known principles 

of ceramic science" or similar recitation which can be found in dependent 

claims 322 to 360, 414 to 427, 435, 453 to 465, 473 to 475, and 484 to 491 

and independent ciaim 522. (These claims shail be referred to herein as 

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

following were allowed by the examiner; 330, 335, 336, 346 and 358 and 

the rejection was reversed by the Board's Decision for the following claiins 

407, 408, 509 and 51 0. See BV1 paragraph bridging pages 45-46, BV1 

page 52, lines 1-4 from the bottom and BV1, page 225, the first sentence of 

the iast paragraph which states: 

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



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

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

The Boards' Decision has selected to highlight, as examples claims 

12, 88, 1 15, 1 17, 374, and 438 as broadly stated independent claims. Of 

these independent claims, claims 88 and 1 1 5 do have a claim depending 

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

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

claims depending therefrom reciting "can be made according to known 

Appeal No. 2009-003320 Page 10 of 121 Serial No,: 08/479,810 



principles of ceramic science," Claim 239 depends from claim 12, 

Claim 337 depends from claim 115, Claim 419 depends from claim 374. 

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

and 453 recite "can be made according to known prfncfpfes of 

ceramic science. ' 

BV1 at page 9 states: 

Al! rejected claims are appealed. Claims 1-64, 66-72. 84, 
85. 88-96, 100-102, 109-112, 115-122, 126-134. 139. 141- 
143, 146-149. 153-155, 162-166, 182-184. 187. 188. 192- 
195. 198-212, 217-219, 222. 223, 227-230. 232-234, 237- 
240. 244-246, 253-257. 268. 273-275. 278. 279. 283-286, 
289-295, 302, 303, 308-310, 313, 314, 318-329. 331-334, 
337-345. 347-357. 359-374, 376. 382, 383. 389, 394, 395. 
402, 407, 408, 414-419, 421-424, 425-501, 508-510 and 
515-543. Each rejected claim is appealed individually. 
None of these claims are appealed in a group except as 
indicated in Preliminary Comment A in Volume 3 

BV3 at page 3 under heading Preliminary Comments A states"[a]ll the 
claims are individually appealed.'' 8V3 pages 13-1769 provides reasons for 
why each rejected claims is enabled by Appellants' teaching and why the 
Examiners reasons for rejecting those claims as not being enabled is legal 
error. The Board's Decision has not directly addressed those arguments. 



3. SECTION 

The Board's Decision states at page 6. iine 10-14 

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

Although the statement is correct it is incomplete: 



Appeal No. 2009-003320 



Page 1 1 of 121 Serial No,: 08/479,810 



Appellants' position is more compieteiy summarized at BV1 in the 

paragraph bridging pages 44-45 wiiich states: 

Since the known methods disclosed by Applicants are used to 
fabricate species within the scope of Applicants claims, it is 
Appiicants' position that persons of si<:tli in the art can determine 
those species without undue experimentation and consequentiy, 
Appiicants have enabled their claims to their fuli scope. When 
species are determinable without undue experimentation, the art 
is a predictable art. Even though a high Tc material is a chemical 
composition, all aspects of chemistry are not unpredictable. That 
chemistry is iiot per se uiipredictable is geiieraliy recognized by 
decisions of the Board and the Courts, for example at 427 F.2d 
833, 839 the CCPA in in re Fisher states "In cases involving 
unpredictable factors such as most chemical reactions." Thus all 
chemical reactions are [not] [sic]unpredictable [.] [sic] Applicants' 
evidence shows that the chemistry involved in fomiation of high 
Tc inaterials does not have to be understood to fabricate thein 
which is one reason for why species are readily determinable. If 
the chemistry does not have to be understood to fabricate 
species, it is improper to refer to the art of high Tc super- 
conductivity as unpredictable. Applicants' claims are directed to 
an apparatus using the high Tc material and not to a composition 
of matter. 

Appellants address the issue of the patent legal term "pf"ef^!Ctable versus 
non-predictable' meaning "determinable versus non-determinabie" in 
many placed in Appellants' Brief and Appellants' Replies. Appellants 
support this based on lega! authorities. See BV1 at page 47, lines 12-23 
which states: 

In In re Wands 858 F.2d 731 , 742 (Fed. Cir 1988); 8 U.S.P.Q 2D 
1400, 1408 Judge Newman concurring in part, dissenting in part 
stated "[The inventor] must provide sufficient data or authority to 
show that his results are reasonably predictable within the scope 
of the claiined generic invention, based on experiment and/or 
scientific theory. " Thus experiment or theory is sufficient to 
establish predictability And as stated above by the Examiner "a 
person of skill in the art, using the techniques described in the 
application, which included all principles of ceramic fabrication 
known at the time the application was initially filed, can make the 
known superconductive compositions." There is no requirement 
to know in advance all examples enabled by their teaching. Thus 
the field of High Tc superconductivity is predictable within the 



Appeal No. 2009-003320 Page 12 of 121 Serial No,: 08/479,810 



meaning of In re Wands, Species within the scope of Applicants' 
ciaims are determinable without undue expenmentation and by 
well known testing. 

Thus "experiment and/or scientific theory" Is sufficient to establish 
enablement. 



See BV1 paragraph bridging page 47-48 which states: 

The Examiner's reference to "subsequently discovered BSCCO or 
Tl-systems " suggests that it is the Examiner's view that for 
Applicants to be allowed a generic claim, Applicants must know in 
advance ail materials that can be used to practice Applicant's 
ciaims. The CAFC lias slated in Sri Int'i v, Matsushita Elec. Corp., 
775 F.2d 1107^ 1121 (Fed. Cir. 1985), 227 USPQ 577, 586 that 
this is not necessary: 

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



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

The CAFC has further stated: 

An applicant for patent is required to disclose the 
best mode then known to him for practicing his 
invention. 35 U S C. § 112. He is not required to 
predict ail future developments 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. 1983):39 USPQ2d 
1065. 



Appeal No. 2009-003320 Page 13 of 121 Serial No,: 08/479,810 



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

The CAFC further states m regards to future developments: 

Enablement does not require the inventor to foresee 
every means of implementing an invention at pains of 
losing his patent franchise. Were it othenA'ise, 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. Clontech Labs., Iiic., 429 F.3d 1052, 1071 (Fed. 
Cir, 2005)" And. "Our case law is clear that an applicant 
is not required to describe in the specification every 
conceivable and possible future embodiment of his 
invention." Rexnord Corp. v. Laitram Corp.. 274 F.3d 
1336, 1344, 60 U.S.P.Q.2D {BNA) 1851 (Fed. Cir. 
2001). 



The Examiner's position in regards to the enablement of Applicants' 
claims is inconsistent with the CAFC's position that "[e]nab!ement 
does not require the inventor to foresee every means of 
implementing an invention." Thus Applicants' claims are enabled and 
the rejection should be reversed. The Examiner uses the term 
predictable with the meaning of "foresee." The correct meaning of 
the term ^'predictable" for enablement purposes iS "determinable" 
without undue experimentation. 

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



BV1 paragraph bridging pages 51-52 states: 

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



Appeal No. 2009-003320 



Page 14 of 121 Serial No,: 08/479,810 



excessabie amount of guidance with respect to the direction 
in which the experimentation should proceed to enable the 
determination of how to produce a desired embodiment of 
the invention ciaimed. ' 217 USPQ 804, 807. Thus guidance 
is needed when the experimentation is not merely routine. 
Since there is no evidence in the present appiication that 
anything other that routine experimentation is needed to 
determine other species, than specif icaily described by 
Appiicants', the guidance provided by Appiicants' teaching is 
sufficient to satisfy enablement. 



Thus the Board's own precedent Ex parte Jackson states "a 
considerabie amount of expenmentation is permissibie if it is mereiy 
routine/' 



BV1 paragraph bridging pages 87-88 states: 

The CAFC in !n re Wright 27 USPQ2d 1510 (1993) supports 
Appiicants' view that a predictable art is one in which species 
within the scope of a ciaim under examination are determinabie 
whether or not a theory of the invention is known as of the fiiing 
date of the application under examination. The ciaims under 
examination in In re Wright are directed to a recombinant vaccine 
which confers immunity to chickens against a certain type of RNA 
tumor virus. These ciaims include in their scope vaccines against 
the AIDS virus. The CAFC states- 
Wright seeks aliowance, however, of ciaims which 
wouid provide, in varying degrees, a much broader 
scope of protection than the aliowed claims. 27 
USPQ2d 150, 1511. 

The CAFC further states: 

The Examiner made reference to the difficulty that the 
scientific community is having in developing generaily 
successfu! AIDS virus vaccines merely to iilustrate that 
the art was not even today as predictable as Wright 
suggested it was back in 1983![ In re Wright. 999 P.2£l 
1557 (Fed. Clr. 1993) 1 



No mention is made of the presence or absence of a theory. 
Thus in re Wright shows that an art is unpredictable when 
Appeal No. 2009-003320 Page 15 of 121 Serial No,: 08/479,810 



persons of skiii in the art do not "know how to make" species that 
come within the scope of the ciaims and is predictabie when 
people of skiii in the art know how to make species within the 
scope of the ciaims based on the teaching of the application 
under examination. 
Thus the patent legal term "predictabie" is not synonymous with the 

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

undue experimentation. 

BV1 paragraph bridging pages 94-95 states in regards to non- 

precedentia! Board decision Ex parte Chen: 

in Ex parte Chen, an unpublished decision reported at 61 USPQ 
1025, 1028, the Board of Patent Appeals and Interferences he!d 
ciaims to transgenic carp not unpatentable for Sack of 
enabiemenl staling: 

In responding to appellants* arguments, 
the examiner urges that the level of 
experimentation is undue and points to 
the success rate 1 % or 20 out of 1 746 
attempts for the integration of the gene 
into the embryos described in the 
specification, (Answer, pages 6 and 14). 
However, the examiner offers no evidence 
which would reasonably support a 
conclusion that one skilled in this art 
would regard this rate of success for the 
integration of the rtGH gene as evidencing 
undue experimentation. We remind the 
examiner that some experiimentation may 
be required as !oiig as it iS not undue In 
re Vaeck 941 F.2d^4S8. 496, 20 USPQ2d 
1438, 1445 (Fed. Cir. 1991). Appellants' 
disclosure explicitly describes the 
methodology to be used to arrive at the 
claimed transgenic carp. As the record 
now stands, the numbers emphasized by 
the examiner would reasonably appear to 
reflect the need for a repetitive procedure, 
rather than un-due experimentation by 
those wishing to practice the invention 



Notwithstanding that the specification in Ex parte Chen 
disclosed only a 1 % success rate in the examples described in 



Appeal No. 2009-003320 Page 16 of 121 Serial No,: 08/479,810 



the specification, the Board found the ciaims enabled since 
some experimentation may be needed to determine which 
examples work and which do not. The ciaims were found 
enabled since the experimentation was not undue. The need 
for a repetitive procedure to determine which examples have 
the desired result does not render the ciaims not enabled. 
That ts, there was 'how-to-make-and-use predictabtiity" in the 
Ex parte Chen invention even though there appeared to have 
been no "theoretical predictabiiity" and even though the Ex 
parte Chen applicant couid not foresee in advance, predict in 
advance or specificaily teach in advance of experimentation 
which species had the desired result. Thus, that Applicants' 
specification describes examples that either do not show a Tc 
greater than or equal to 7.26 K or examples that have phases 
with and without a Tc greater than or equal to 26 K does not 
mean that they have not enabled their genus ciaims. 

Thus a iow success rate, 1%, is not fatal to enablement when the 
experimentation is routine, i.e. species are determinable by routine 
experimentation. Routine repetitive procedures are sufficient to provide 
enablement 

BV1 page 95. last 17 lines, further states: 

That the species within this genus which have the desired high 
Tc property may be determined experimentally and not by a 
theoretical means according to the Board's decision in Ex parte 
Chen, does not mean that Applicants genus claims are not 
enabled. The CCPA agrees with this when it states. 
What the dissent seem to be obsessed with is 
the thought of catalysts v>^hich won1 work to 
produce the intended result. Applicants have 
enabled those in the art to see that this is a real 
possibility, which is commendabie frankness in a 
disclosure. 'Without undue experimentation or 
effort or expense the combinations which do not 
work will readily be discovered and, of course, 
nobody will use them and the ciaims do not 
cover them. The dissent wants appellants to 
make everything predictable in advance, which is 
impracticable and unreasonable, in re Angstadt. 
190 USPQ214, 219. 

From this it is clear that 35 U S C. 112, first paragraph, does not 
require everything to be predictable in advance and permits the 
Appeal No. 2009-003320 Page 17 of 121 Serial No,: 08/479,810 



determination of the combinations thai wil! and wi!l not work by 
experimentation that is not undue. 

BV1 page 95, lines 1-18, states 

The USPTO Board of Patent Appeals and Interferences in Ex 
parte Jackson 217 USPQ 804 (Bd, App. 1982) states at 217 
USPQ 804, 806-807; 

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

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

BV1 page 98. iines 19-24 states 

The Court in in re Geerdes further states at 180 USPQ 993 
"The Board expressed concern that 'experimentation' is 
invoived in the selection of proportions and particle sizes, but 
this is not determinative of the question of scope of 
enabiement, it is only undue experimentation that is fatal." 
There is no evidence that undue expehmentation is needed "to 
make" materials to practice Applicants' claims The Examiner 
refers to none. 



BV1 paragraph bridging pages 101- 102 states: 



Appea! No. 2009-003320 Page 18 of 121 Serial No,: 08/479,810 



The CCPA !n re Angstadt and Griffin further states that; 



we cannot agree with the Board that Appeiiants' 
disciosure is not sufficient to enable one of 
ordinary $ki!i in the art to practice the invention 
without undue experimentation. We note that 
many chemical processes and catalytic processes 
particuiarSy, are unpredictable, ... , and the scope 
of enablement varies inversely with the degree of 
unpredictability involved... The question, then, 
Vv'hether in an unpredictable art, section 112 
requires the disclosure of a test with every species 
covered by a claim. To require such a complete 
disciosure will apparently necessitate a patent 
application or applications with 'thousands ' of 
examples... . More importantly, such a 
requirement would force an inventor to seek 
adequate patent protection to carry out a 
prohibited number of natural experiments. This 
would tend to discourage inventors in filing patent 
applications in an unpredictable area since the 
patent claim would have to be limited those 
embodiments which are expressly disclosed. A 
potential infringer could readily avoid 'infringement 
of such claims' by merely finding another 
aiialogous (example) which could be used 190 
USPQ 124,^218. 

Thus Applicants do not have to specifically identify in the 
specification aii species that come within the scope of their claims. 

BV1 page102, line 6-10, states; 

The CCPA in re Asigstadt further goes on to say 



having decided that appellants are not required to disclose 
every species encompassed by the claims even in an 
unpredictable art such as the present record presents, each 
case must be determiiied on its own facts. 190 USPQ 214, 218. 
(emphasis in the original). 

BV1 Page 103, lines 7-15, states; 
In re Angstadt further states at 190 USPQ 219: 



Appeal No. 2009-003320 Page 19 of 121 Serial No,; 08/479,810 



We note that the PTO has the burden of giving reasons, 
supported by the record as a whoie, Vv'hy the specification is 
not enabling. In re Armbruster, 512 F.2d 676, 185 USPQ 152 
(CCPA 1975). Showing that the disclosure entaiis undue 
experimentation is part of the PTO's initial burden under 
Armbruster; this court has never held that evidence of the 
necessity for any experimentation, however siight, is sufficient 
to require the applicant to prove that the type and amount of 
experimentation needed is not undue. 

As will be gone over in detail below the Board's Decision ignores thiS 
support in legal authority and merely states that they are unconvinced. 



4 SECTION 

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

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

§. SECTION 

DB1 pageslO- 1 1 under heading "Finding of Facf and under 
subheading "The Examiner's Evidence" quotes selected sections of the 
Examiner's Evidence which were for the first time introduced into the 
Appeal No. 2009-003320 Page 20 of 121 Serial No,: 08/479,810 



prosecution of this application in the Finai Action and referred to in the 

Examiner's Answer. That evidence is- 

I. the Schuller articie "A Snapshot View of High-Temperature 

Superconductivity 2002," BD footnote 2 at page 6, and 

!l. the article entitled "Expioring Superconductivity." (Appellants 

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

on the internet and is not currently avaiiabie on the internet. ) 

BD footnote 3 at page 6 

BD pageT lines 8-12, state: 

Unpredictability in this art also is supported by the 
Examiner's uncontested findings that the Specification 
discloses numerous compounds or coinposilions 
which fal! within the compositional definitions of the 
rejected claims yet fail to exhibit superconductivity at 
temperatures greater than or equal to 26''K (Ans., first 
full para, at 9, para, bridging 11-12), 
(Emphasis added.) 

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

numerous compounds or compositions which fall within the compositional 

definitions of the rejected claims yet fail to exhibit superconductivity at 

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

have never agreed to or acknowledged there are such "numerous 

compounds or compositions ' disclosed in their Specification. Neither the 

Total Final Action, the Examiner's Answer nor the Board's Decision 

specifically ideiitify such "numerous compounds or compositions' disclosed 

in their Specification. The paragraph quoted above from the Board's 

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

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

paragraph of page 9 which states: 

The present specification actually shows that known 
forms of "a transition metal oxide", "a composition", and "a 
copper-oxide compound" do not show the onset of 
superconductivity at above 26/K. At p. 3, line 20, through 
p. 4, !ine 9, of their disclosure, the applicants state that 

Appea! No. 2009-003320 Page 21 of 121 Serial No,: 08/479,810 



the prior art inciudes a "Li-Ti-0 system with 
superconducting onsets as high as 13.7/'K." Officiai Notice 
is taken of the weli-known fact that Ti is a transition metal. 
That disclosure also refers to "a second, non-conducting 
CuO phase" at p. 14, line 18. Accordingly, the present 
disclosure is not deemed to have been fully enabling with 
respect to the "transition metal oxide" of claim 24., the 
"composition" of ciaim 88, or the "copper-oxide 
compound" of claim 96. 

This paragraph only refers to one material Li-Ti-0. that has a Tc less 
than 26 K and refers to "a second, non-conducting CuO phase" at page 14, 
line 1 8 of the Specification. This is only two examples. The second example 
is a mixed phase material that is superconducting with Tc greater than or 
equal 26 K. Thus this second example is not an example of a material that 
''faii[s] to exhibit superconductivity at temperatures greater than or equal to 
26°K." See BV1 page 118, lines 2-3. Appellants' claims are not directed to 
100% superconductive matehal. 



The paragraph bridging pages 11-12 of the Examiners 
Answer states: 

V\^th a 1 : 1 ratio of {Ba, La) to Cu and an x value of 0.02, the 
La-Ba-Cu-0 form (i.e., "RE-AE-TM-0", per p. 8, line 11) 
shows "no superconductivity". With a 2-.1 ratio of (Ba, La) to 
Cu and an x value of 0.15, the La-Ba-Cu-0 form shows an 
onset of superconductivity at "Tc 26/K". !t should be noted, 
however, that al! of the claims in this application require the 
critical temperature (Tc) to be "in excess of 26/K" or "greater 
than 26/K", 



There is only one example of a material in this quoted language from the 
Examiner's Answer that is not superconductive. 

Thus the sections of the Examiner's Answer referred to by the 
Board's Decision in the paragraph quoted above refers to at most two 
matenals that are not superconductors as claimed by Appellants', one of 
which is a previously know material that is metallic. Thus the Examiner's 
Answer does not show that Appelianfs Specification discloses numerous 
Appeal No. 2009-003320 Page 22 of 121 Serial No,: 08/479,810 



compounds or compositions which fail witiiin the compositional definitions of 
ttie rejected ciaims" as stated by the Board's Decision quoted above. 
Appellants do not believe two is numerous. 

6. Section 

The Summary of Appeiianfs Evidence at BD pages 11-13 highlight only 
selected portions of AppelSants" evidence. 

7. Section 

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

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

In re Wright, 999 F.2d 1557 (Fed. Cir. 1993), and 

in re Wands, 858 F.2d 731, (Fed. Cir. 1988) 
listed at these pages accurately reflect the law of enablement as it should 
be applied to the claims for which the Board^s Decision has not reversed the 
Examiner's rejections for iack of enablement under 35 U.S.C. 112, first 
paragrapii. Each of these three CAFC decisions is direct to enablement of 
biotechnology inventions. For each of these CAFC decisions the Board's 
Decision "divorces the court's holding from the facts upon which it was 
rendered. '' Ricgl:L.Co,,.Ltd,js(,..:riyMi^^ 
(F-6d. Cir. 2008) 

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

Jackson 217 USPQ 804 (Bd. App. 1982). BV1, page 97, lines 1-7. states 

The Board in Ex parte Jackson further states at 217 USPQ 
808 "The problem of enablement of processes carried out 
by microorganisms were uniquely different from the field of 
chemistry generally Thus, we are convinced that such 
recent cases as in re Angstadt 537 F.2d 498, 190 USPQ 
214 (CCPA 1976) and In re Geerdes 491 F.2d 1260, 180 
USPQ 789 (CCPA 1974) are m apposite to this case." 



Appeal No. 2009-003320 



Page 23 of 121 Serial No,: 08/479,810 



Therefore, since the present appiication is not directed to 
biotechnoiogy or microorganism invention, the decision of 
Ex parte Jackson does not appiy, but in re Angstadt and in 
re Geerdes do apply. 

The Board's Decision has essentially ignored In re Angstadt and In re 
Geerdes which the Board's precedent Ex parte Jackson says should apply. 
Appeiiant^s Brief and Appeiiant^s Replies are primarily focused on in re 
Angstadt and the decisions which re!y on it and apply it.. The Board's 
Decision is primarily based on Genentecti, inc. v Novo Nordisk which is not 
relied on by the Tota! Final Action or the Examiners Answer. The Board's 
Decision secondarily reiies on In re Wngttt v^hlch the Examiner s Answer 
oniy cursoriiy cites at page 26, Sines 9-15, but does not explicitly apply. Also 
the Totai Final Action oniy cursoriiy cites in re Wright wh\ch it does not apply. 
The Board's Decision thirdly relies on In re Wands which is not relied on by 
the Total Final Action or the Examiner's Answer. Each of these three 
decisions is a biotechnology decision.. For the reasons given in Appellants' 
Request that Prosecution be Reopened submitted with this Request for 
Rehearing, Appellants' request that prosecution be reopened so that 
Appellants will not be responding to arguments presented for the first time in 
the Board s Decision in this Request for Rehearing. 

!t s Appellants position that the decision that should be applied to the 
facts and technology of the claims on appeal is the United States Supreme 
Court decision Minerals Separation. Ltd, v. Hyde, 242 U.S. 261 (1916) which 
in re Angstadt ^ 537 F.2d 498, 503-504 (C.C.P.A. 1976) 190 USPQ 214 
relies on for its holding. (BV1 page 228 last full paragraph) , Minerals 
Separation, Ltd. v. Hyde is the most recent United States Supreme Court 
decision on enablement. The applicability of l\/!inerats Separation, Ltd, v. 
Hyde Minerals Separation, Ltd. v. Hyde to the rejected claim is explained in 
detail at BV1 pages 228-237, The Board' Decision has made no comment 
on Minerals Separation, Ltd. v. Hyde. This has resulted in errors of law in 
the Board's Decision. The Board's application of, Genentech, Inc v. Novo 



Appeal No. 2009-003320 



Page 24 of 121 Serial No,: 08/479,810 



NordiskA/S, 108 F.3d 1361, In re Wright and In re Wands to the claims of 
the present application is inconsistent with the Supreme Courts' decision 
in Minerals Separation, Ltd. v. Hyde. Thus the manner in which the Board 
has applied these CAFC decisions is an error of law, 

8, Section 
in re Wright, 999 F.2d 1557 

The Board's Decision at BD page 13, line 3 to 8D page 14, line 2 
quotes and paraphrase passage from in re Wriglit These quoted passages 
and paraphrases are accurate, but ieave out substantia! parts of the In re 
Wngfit decision that has resulted in the Board's appiication of in re Wrigiit 
being an error of law. The Board's Decision inappropriately "divorces the 
court's holding from the facts upon which it was rendered," Ricoh Co , Ltd. 
,viOMrlaCoim^^^ resulting in 

the errors of iaw, 

in re Whght states" [t]he claims on appeal are directed to processes 
for producing iive, non-pathogenic vaccines against pathogenic RNA viruses 
..vaccines produced by these processes ,,. and methods of using certain of 
these claimed vaccines to protect living organisms against RNA viruses .. 
Wright's specification provides a general description of these processes, 
vaccines, and methods of use, but only a singie working example." in re 
.W(:ic^il.99S F„2dJ557,J559.i.Fe 

in re Whgiit further states "[t]he Examiner argued that Wright's singie 
working example merely evidenced that Wright had obtained successfully a 
particular recombinant virus vaccine, and that this single success did not 
provide 'sufficient likelihood' that other recombinant RNA viruses could be 
constructed without undue experimentation." jnieA^vViabiJSiiLEJ^^^^ 
l&§lL(.L§-d J2ir.-,1^^^^ In contradistinction, Appellants' specification is not 
limited to one example and is not directed to living organisms. Applicants 
note that the Board's precedential decision in Ex parte Jacl<son supra 

Appea! No. 2009-003320 Page 25 of 121 Serial No,: 08/479,810 



recognizes that enabiement is applied differently in different contexts wtien 
it says at 217 USPQ 808 "[tjhe probiem of enablement of processes carried 
out by microorganisms were uniquely different from the field of chemistry 
generally. '~ (BVIsentece bridging pages 141-142.) 

In re Wright further states "that many of the appealed claims 
encompass vaccines against A!DS viruses and that, because of the high 
degree of genetic, antigenic variations in such viruses, no one has yet, 
years after his invention, developed a generally successful A!DS virus 
vaccine." 

J.D...!1.. W[:ia(:Lt:...9&9..f:.-..2ii.i557 1 ^ I n contrad i st i net ion , it 

is undisputed that vi^ithin a very short time after Appellants' discovery it was 
duplicated and other species Vv'ithin the scope of their claims were found in a 
short time, as corroborated by Poole 1988 (Brief Attachments AF and AW) 
which states that the chemistry involved in making high To superconductors 
does not have to be understood to make these superconductors. (BV1 page 
134, lines 16-20.) 

In re l/Vh'g/)f further states in regards to an article published 5 years 
after the Wright patent application was filed that the article showed that ~ the 
physiological activity of RNA viruses was sufficiently unpredictable that 
Wright's success in developing his specific avian recombinant virus vaccine 
would not have led one of ordinary skill in the art to believe reasonably that 
all living organisms could be immunized against infection by any pathogenic 
RNA virus by inoculating them with a live virus containing the antigenic code 
but not the pathogenic code of that RNA virus. The general description 
and the single example in Wright's specification, directed to a uniquely 
tailored in vitro method of producing in chicken C/0 cells a vaccine against 
the PrASV avian tumor virus containing live RAV-Ac virus particles, did 
nothing more in February of 1983 than invite experimentation to determine 
whether other vaccines having in vivo immunoprotective activity could be 
constructed for other RNA viruses. \lai§..WdiadLMi£;M^^ 
Or. 1S93) (Emphasis added.) In contradistinction, there is no 

Appeal No. 2009-003320 Page 26 of 121 Serial No,: 08/479,810 



corresponding pubiication in the present appeal and in contradistinction the 
Pooie 1988 Enabiement Statement (BV3 pages 6-7), the Poole 1995 
Enablement Statement (BV3 page 7) and the Poole 1996 Enablement 
Statement (BV3 pages 7-8) state directly to the contrary. 

In re Wright further states 'tt]he Examiner made reference to the 
difficulty that the scientific community is having in developing generally 
successful AIDS virus vaccines mereiy to illustrate that the art iS not even 
today [years after the initia! filing date] as predictable as Wright has 
suggested that it was back in 1983.'' in re Wi-iaht. 999 F-.2d 1557. 1563 
iE;M-...Cij::...1393i, In contradistinction there is no evidence in the present 
record that persons or ordinary skill in the art have any difficulty making and 
testing samples that come Vv'ithin the scope of Appellants' claims 

In re Wright further states "Wright has failed to establish by evidence 
or arguments that, in February of 1983 [Wrights filing date], a skilled 
scientist would have believed reasonably that Wright's success with a 
particular strain of an avian RNA virus could be extrapolated with a 
reasonable expectation of success to other avian RNA viruses, indeed, 
Wright has failed to poiiit out with any particularity the scientific literature 
existing in February of 1983 that supports his position/' In re Wright, 999 
f .2c 1557^ 1564 (Fed C:r. 1993) in contradistinction, Appellants extensive 
evidence shows that the methods of making high Tc superconductors 
described in their application where the same methods used to make 
materials prior to the earliest filing date and that other materials were made 
shortly after their discovery by the same methods aiid in addition Appellants' 
have pointed out with extensive and specific particularity scientific literature 
existing prior to their earliest filling date which supports this position. See 
affidavits in Brief Attachments AH, AL AJ, AK, AL AM, AN and AO (the last 
three of which are referred to as the DST Affidavits) referred to throughout 
Appellants' Brief and in Appellant's Replies all of which are based on 
methods of making materials known prior to Appellant's earliest filing 
date, (See for example RB page 6, lines 7-10.) And, see the Poole 1988 

Appeal No. 2009-003320 Page 27 of 121 Serial No,: 08/479,810 



Enablement Statement (BV3 pages 6-7), the Poole 1995 Enablement 
Statement (BV3 page 7) and the Poole 1996 Enabiement Statement (BV3 
pages 7-8) which refer to materials made after Appellants' discovery, but 
which expiicttiy show that known methods were used to make those 
materials. It is unrebutted in the persecution of the present application, 
including in the Board's Decision, that only method know prior to Appellants' 
discovery and describe in their Specificafion are used to make and test 
species that come within the scope of Appellant's claims. Thus persons of 
ordinary skill in the art as of Appellants' earliest filing date had a reasonable 
expectation of success of making and testing species that come within the 
scope of Appellant's claims. 

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

9. Section 

GmBfttecfi, Inc. v. Novo NordiskA/S, 108 F.3ci 1361 

The Board's Decision at BD page 14, line 3 to BD page 16, line 3 quotes 
passage from Genentech, Inc. v. Novo Nord!SkA/$.(Genentech) These 
quoted passages are accurate, but ieave out substantial parts of the 
Genentech decision that has resulted in the Board's application of 
Genentech being an error of law. The Board's Decision inappropriately 
"divorces the court's holding from the facts upon which it was rendered." 
Ricoh Co., Ltd. V. Quar\ta Computer Inc.. 550 F.3d 1325, 1339 (Fed. Gir. 
2008] resulting in the errors of law. 

In Genetech the claim found not enabled was directed to a method of 
producing an encoded protein consisting essentially of amino acids of 
human growth hormone 'reciting that the encoded protein has an amino 
acid sequence and includes the step of cleaving this conjugate protein. This 
process of expressing a DNA encoding a conjugate protein and using an 

Appeal No. 2009-003320 Page 28 of 121 Serial No.: 0S./479,81O 



enzyme to cieave off an undesired portion of that protein is generally known 

as cSeavabie fusion expression." Genentech, Inc. v. Novo Nordisk A/$, 108 

F.3d 1361. 1363 (Fed Or. 1S97; 

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

the beginning of the first sentence "[wje agree with Novo" Genented:L...jrjc. 

.v..NovoMC91skA^^^^^ Thus this 

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

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

Genentech, inc. v. Novo Nordisk A-'S, 108 F,3d 1361 
1366 (Fed Cir 1997) 

In redacted form this states "Novo asserts that at the time of filing, 
trypsin [was] used only to digest proteins, not to ... cleave 
conjugate proteins to yield intact, useful proteins, and that the 
British pater\i explicitly indicates that trypsin would not be useful for 
the cleavable fusion expression of arginine-containing proteins ... 
Novo further argues that neither the specification nor the 
references cited by Genentech suggest a single amino acid 
sequence,.. that wouid vieici hGH in a useful forni when cleaved 
from the conjugate protein ... using an enzyme to cleave off an 

Appeal No. 2009-003320 Page 29 of 121 Serial No,: 08/479,810 



undesired portson of that protein is generalSy known as cleavabSe 
fusion expression. Genenlech. Inc. v. Nqvg Nordisk A/S, 108 
F.3d 1361. 1363 (Fed C\r. 1S97; (Emphasis added.) 

!n regards to the evidence presented by the plaintiff 
Genetech states "[t]here is no dispute that the portion of the 
specification chiefiy relied upon by Genentech ... does not describe 
in any detaiS whatsoever how to ma!<e hGH using cieavabie fusion 
expression. For example, no reaction conditions for the steps 
needed to produce hGH are provided; no description of any specific 
cieavabie conjugate protein appears. The relevant portion of the 
specification merely describes three (or perhaps four) applications 
for which cieavabie fusion expression is generally well-suited and 
then names an enzyme that might be used as a cleavage agent 
(trypsin), along with sites at which it cleaves ... Thus, the 
specification does not describe a specific material to be cleaved or 
any reaction conditions un<ier which cieavabie fusion expression 
would work. 'Genentech. Inc. v. Novo Nordisk A/S. 108 F.3d 1381 
1365 (Fed, Csr, 1997) 

Genetech states in regards to the patent in dispute "the 
specification .... does not provide a specific enabling disclosure 
concerning what the new claim recites, viz., obtaining hGH by 

cieaving an hGH-containing conjugate protein Genentech is 

attempting to bootstrap a vague statement of a problem into an 
enabling disclosure sufficient to dominate someone else's solution 
of the problesTJ. This it cannot do." Genentech, Inc. v. N oyojsiordisk 
A/S. 108 F,3d 1361, 1366 (Fed. Cir. 1997) 

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

Appeal No. 2009-003320 Page 30 of 121 Serial No,: 08/479,810 



invented a process "obtaining iiGH by cieaving an iiGH -containing 
conjugate protein/' 

There is no corresponding evidence in the prosecution of the 
present application. In contradistinction Appeiiants' Specification 
teaches specific working exampies tinat are species within the 
scope of every ciaim rejected as not enabled including those for 
which the Board's Decision did not reveres the Examiner s 
rejection. This is undisputed in the present application. Those 
species were made and tested by methods know prior to 
Appellants' earliest filing date. This is undisputed. It is aiso 
undisputed that nothing more is needed than these know methods 
to make and test other species within the scope of Appellant's 
ciaims. What is new in Appellants' invention is not a method of 
making and testing species that come within the scope of their 
ciaims, but that ceramic materials which were not know to be high 
temperature superconductors were in fact superconductors having 
a Tc greater than of equal to 26K. There is no evidence that there 
are species within the scope of Appellant's ciaiiTis for which the 
Board's Decision did not reverse the Examiner's rejection that can 
not be made and tested by the methods described in Appeliants' 
Specification. 

Genetech further states that the evidence showed that ^no 
one had been able to produce any human protein via cleavable 
fusion expression as of the application date, if, as Genentech 
argues, one skilled in the art, armed only with what the patent 
specification discloses... could have used cleavabie fusion 
expression to make a human protein without undue 
experimentation, it is remarkable that this method was not used to 
make any human protein for nearly a year . . . , or to make hGH for 
five years... . This failure of skilled scientists, who were supplied 
with the teachings that Genentech asserts were sufficient and who 

Appeal No. 2009-003320 Page 31 of 121 Serial No,: 08/479,810 



were clearly motivated to produce human proteins, indicates that 
producing hGH via cieavabie fusion expression was not tiien within 
the skii! of the art " GenerAtecrLinc..v,.Noyo^ 
13S1, 1367 i Fed. Cir. 1997) Thus in Genetech what Genelech was 
claiming was new, the method of 'cleavabie fusion expression/' 
was not used prior to filing their patent appiications and what their 
method claimed as being made "hGh" was not used to make hGh 
untii 5 years after their fiiing date. It is clear from Genetech that the 
Genetech patent did not show that the inventors understood how to 
practice xleavable fusion expression'' but were alleging in the 
litigation that persons of skill in the art couid practice xleavable 
fusion expression" from their teaching without undue 
experimentation, Genetech holds that since xleavable fusion 
expression" is the new feature of the invention, how to do this had 
to be descnbed. In contradistinction, the methods used in 
Appellants' Specification to make and test species were know prior 
to Appellants^ earliest filing date and were applied quickly after their 
discovery by others following their teaching to iTiake and test other 
species as stated by Poole 1988, Poole 1995 and Poole 1996 ( See 
the Poole 1988 Enablement Statement (BV3 pages 6-7), the Poole 
1995 Enablement Statement {BV3 page 7) and the Poole 1996 
Enablement Statement (BV3 pages 7-8) The evidence in the 
present application indicates exactly contrary to what the evidence 
indicates in Genetech. What Appellants' evidence shows is 
undisputed. Appellants' evidence shows that all that was needed to 
make and test other species is what Appellants' Specification 
teaches about the method to make and test other species. This is 
undisputed. 

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

Appeal No. 2009-003320 Page 32 of 121 Serial No,: 08/479,810 



been expressly disclosed in the specification, and in the usuai 
detail. Patent drat^smen are not loath to provide actual or 
constructive examples, with details, concerning how to make 
what they wish to ciaim." Genentech, inc. v. Novo Nordisk A'S. 
108 F.3d 1361. 1367 (Fed. Cir 1997). (Emphasis added.) in 
contradistinction, Appeiiants' Specification has provided "actual 
^andl constructive ex am pies, with details, concerning how to make [ 
and test] what they [have claimedl" 

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

The Board's Decision at BD page 15, iine4 to BD page 15, last iine, 
quotes passage from in re Wands. These quoted passages are accurate, 
but ieave out substantia! parts of the In re Wand decision that has resulted 
in the Board's application of in re Wand being an error of law. The Board's 
Decision inappropriately "divorces the court's holding from the facts upon 
which it was rendered." Ricoh Co., Ltd. v. Quanta Computer Inc.. 550 F.3d 
1325. 1339 (Fed C sr. 2008) resulting in the errors of law. 

Appellants note that In re Wands is directed to a 
biotechnology invention. But, unlii^e In re Wright and Genentecti 
the claims under review for iack of enablement in in re Wands 
were found enabled. 

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

lines 4-7, is : 

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

in re Wands. 858 F.2d 731 737 (Fed C:r. 1988) 

In the Board's Decision the citations in footnote 19 are left out 
which are: 

Atlas Powder Co. v. EJ. DuPoni De Nemours & Co. , 
750 F 2d 1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 

Appea! No. 2009-003320 Page 33 of 121 Serial No,: 08/479,810 



1984); In re Angstadt 537 F.2d at 502-504, 190 
USPQ at 218; In re Geerdes, 491 F.2d 1260. 1265. 
180 USPQ 789, 793 (CCPA 1974); Minerals 
Separation, Ltd v. Hyde, 242 U.S. 261, 270-71, 61 L. 
Ed. 285, 37 S. Ct. 82(1916). 

In each of these decisions claims being reviewed for iack of enablement 
were found enabled essentialiy because only "routine screening' was need 
to find species the came within the scope of the ciaims under review. The 
claims under review in in re Wands were found enabled essentially for the 
same reasons. Appellants^ Brief argued that only routine experiments are 
needed to make and test specses within the scope of ail claim rejected for 
lack of enabiement. Appeliants' agued that In re Wands, In re Angstadt and 
Minerals Separation. Ltd. v. l-tyde Minerals Separation. Ltd. supported their 
argument.. The Board's Decision has essentialiy ignored Appellants' 
argument by not responding to it or acknov^^ lodging it. These decisions 
found "routine screening" using known techniques was sufficient to 
determine species that came with in the scope of the claim under view 
which were thereby enabled. This is the principle of law that should apply to 
the claims presently under appeal and for v^^hich the Board's Decision has 
not reversed the Examiners rejection. Appellants" Brief and Appellants' 
Replies refers to in re Angstadt at BV1 , pages 46, 49, 70, 73, 74, 95, 97, 
98, 101 -108 (these pages have a comprehensive discussion of this 
decisions applicability to the claims rejected in the present application), 128, 
135, 136, 138, 146, 152, 154, 169, 223, 224, 232 and RB pages 20, 21 and 
23. Appellants" Brief refers to Minerals Separation, Ltd. v. Hyde Minerals 
Separation, Ltd. v. Hyde at BV BV1 pages 228 to 237. 

The second quotation from In re Wands listed by the Board's 
Decision at page 15, lines 9-17, includes the following quotation from in re 
Angstadt the statement "[t]he test is not merely quantitative, since a 
considerable amount of experimentation is permissible, if it is merely 
routine, or if the specification in question provides a reasonable amount of 



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guidance with respect to the direction in which the experimentation shouid 
proceed." (Emphasis added.) It is undisputed in the present appeal that the 
experimentation to determine other species of high Tc materials within the 
scope of the claims is what was know prior to Appeliants" earliest filing date 
which ts thus routine. Thus following In re Wands a considerable amount of 
this type of experimentation is permissible. 

Appeliants note that the passage quoted above from In re Wands 
states that a "considerable amount" of Toutine" experimentation or 
"reasonable guidance_with respect to the direction in which the 
experimentation shouid proceed" is needed to satisfy enablement but not 
both routine experimentation and reasonable guidance is needed. 

!n re Wands states in regards to the claims under review "[t]he nature 
of monocionai antibody technology is that it involves screening hybridomas 
to determine which ones secrete antibody with desired characteristics. 
Practitioners of this art are prepared to screen negative hybridomas in order 
to find one that makes the desired antibody." !njiL!v!!i£Ql?u--§5::^ ^ c < o1 
740 (Fed. Gir 198S) Similarly, in Appellants^ claims only require routine 
methods of fabrication and testing which practitioners in the art are prepared 
to do in order to find other high Tc materials to practice the claimed 
invention. 

Appellants' Brief shows why //? re Wands supports their argument 
that their ciaims are enabled at BV1 pages 46, 47, 49, 69,83, 91 , 111 , 124, 
125 to128, 170, 223, and 224 and RB page 52. These arguments are 
unrebutted in the Board's Decision. 

11, Section 

Minerals Sepamtton, Ltd. v. Hyde Minerals Separation, Ltd. v. Hyde 
242 as. 2m 

The paragraph bridging BV1 pages 228 229 states; 



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

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

Equally untenable is the claim that the patent is invalid for 
the reason that the evidence shows that when dilTerent 
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 
obviously impossible to specify in a patent the precise 
treatment which would be most successful and 
economical in each case. The process is one for dealing 
with a large class of substances and the range of 
treatment within the terms of the claims, while leaving 
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. Mowry v. 
Whitney, 14 Wall. 620; Ives v. Hamilton, 92 U.S. 426, and 
Carnegie Steel Co. v. Cambria Iron Co., 185 U.S, 403, 436, 
437 [Emphasis added.] 



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



12. Section 

The Board's Decision states at page 17, lines 17 -20: 

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



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

Appellants Reply page 3, iines 3-7 states: 

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



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

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

At page 12 of the Examiner's Answer, the first sentence of 
the last paragraph states "{ipe Applicants also have 
submitted three affidavits attesting to the applicants' status 
as the discoverers of materials that superconduct > 26'^K. " 
At page 15 of the Examiner s Answer, lines 14-15 states "3 
affiants." As stated in the Brief in this passage the Examiner 
incorrectly states Applicants submitted three affidavits. Prior 
to the Office Action of 07/28/2004 [which is incorporated into 
the Final Action at page 4 thereof] Applicants submitted the 
five affidavits of Brief Attachments AH, A!, AJ. AK, AL of 
Mitzi, Dinger, Tsuei, Shaw and Duncombe, respectively. 
Subsequent to the Office Action of 07/28/2004 Applicants 
submitted the expanded affidavits of Shaw, Tsuei and Dinger 
of Brief Attachments AM, AN and AO, respectively [referred 
to in Appeilar^ts' Brief as the DST Affidavits], The 
expanded affidavits set forth particular facts to support the 



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condusions that ali superconductors based on Applicants' 
work behave in the same way and that one skilled in the art 
can make those superconductors without undue 
experimentation !n the Answer the Examiner has not 
responded to these affidavits, in addition subsequent to the 
Office Action of 07/28/2004 Applicants submitted the Newns 
Affidavit (Brief Attachment AP) and declaration of co- 
inventor Georg Bednorz (Brief Attachment AQ) [Appellants 
note that the News Affidavit and the Bednorz 
Deciaratton were submitted in response to new 
arguments in the Final Action and were thus submitted 
subsequent to the Final Action] In the Ansvv'er the 
Examiner has not responded to the Newns Affidavit or the 
Bednorz declaration. The Examiner has not rebutted this 
evidence (including the other evidence submitted by 
Applicants) and thus has not made a prima facie case of lack 
of enablement. 



Thus as agued in the Request to Reopen Prosecution the Board's 
Decision's reliance on facts and arguments not relted on by the Examiner's 
Answer results in the Board's Decision being more in the nature of an action 
on the merits than a decision on appeal. Appellant's request the Board 
grant Appellants' Request to Reopen Prosecution submitted herewith, 
13. Section 



The Board's Decision from BD page 17, two lines from the bottom to 

page 19 5 lines from the bottom, focuses on specific types of material taught 

in Appellant's Specification, it is noted that it is unrebutted that all of 

Appellants' claims have written description support in the specification. 

Appellant's Brief at BV1 page 104, lines 10-16, states: 

The CCPA in in re Marzocchi. 58 CCPA 1069, 439 F. 2d 220, 
169 USPQ 367, 369-370 (1971) states: 

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



Appeal No. 2009-003320 Page 38 of 121 Serial No,: 08/479,810 



This quoted language from In re Mai'zocchil is directed to enablement in tiie 

context of a chemical. Thus "broad terminoiogy" is sufficient to satisfy 

enablement and specificaliy identifying species that come within the scope 

of the claims is not and absolute requirement. 

The legal authority cited by Appellant supports this position. 

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

The CAFC has stated in Sri int'i v. Matsushita Elec. Corp., 775 F.2d 
1 107, 11 21 (Fed. Cir, 1985); 227 USPQ 577, 586 that this is not 
necessary; 

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



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

The CAFC has further stated; 

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



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

The CAFC further states in regards to future developments: 

Enablement does not require the inventor to foresee 
every means of implementing an invention at pains 
Appeal No. 2009-003320 Page 39 of 121 Serial No,; 08/479,810 



of iosing his patent franchise. Were it otherwise, 
ciaimed inventions would not include improved 
modes of practicing those inventions. Such narrov/ 
patent rights would rapidly become worthless as 
new modes of practicing the invention developed, 
and the inventor wouid lose the benefit of the patent 
bargain. Invitrogen Corp. v. Ciontech Labs., Inc., 
429 F.3d 1052. 1071 (Fed. Cir. 2005/' And, ^'Our 
case iaw is ciear that an applicant is not required to 
describe in the specification every conceivable and 
possible future embodiment of his invention.' 
Rexnord Corp. v. Laitram Corp., 274 F.3d 1336. 
1344, 60 U S.P.Q.2D (BNA) 1851 (Fed Cir. 2001). 

The Examiner's position in regards to the enablement of 
Applicants' claims is inconsistent with the CAFC's position that 
"(ejnabiement does not require the inventor to foresee every 
means of implementing an invention." Thus Applicants' claiiTis 
are enabled and the rejection should be reversed. The 
Examiner uses the term predictable with the meaning of 
"foresee." The correct meaning of the term 'predictable' for 
enablement purposes is ''determinable" without undue 
experimentation. 

The Board^s Decision has not commented on nor rebutted 
Appellants' citation to and application of Rexnord to show why their 
claims on appeai are enabled, including those for which the Board 
has not reversed the Examiner's rejections, and that enablemeiit 
"[ejnabiement does not require the inventor to foresee every means 
of implementing an invention" as stated in Rexnod . That is, 
enablement does not require inventors to predict or foresee "every 
conceivable and possible future embodiment of [their] invention ' at 
the time the application is filed 



BV1 page 113, 8 lines from the bottom to page 1 14, line 15, states; 
The CCPA in In re Robins 166 USPQ552, 555 has stated 

Both the Examiner and the board seem to have taken the 
position that in order to "justify/' as the Examiner said, or to 
"support," as the board said, broad generic language in a 
claim, the specification must be equally broad in its 



Appeal No. 2009-003320 



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meaning, and use in examples, of representative 
compounds encompassed by the claim language. This 
position, however, misapprehends the proper function of 
such disclosure. Mention of representative compounds 
encompassed by genenc claim language cieariy is not 
required by §112 or any other provision of the statute. But, 
where no explicit description of a generic invention is to be 
found in the specification (which iS not the case here) 
mention of representative compounds may provide an 
impiicit description upon which to base generic claim 
language. ... Similarly, representative examples are not 
required by the statute and are not an end in themselves. 
Rather they are a means by which certain requirements of 
the statute may be satisfied. Thus, inclusion of a number of 
representative examples in a specification iS one way of 
demonstrating the operabiiity of a broad chemical invention 
and hence, establishing that the utility requirement of § 101 
has been met. !t also is one way of teaching how to imake 
and/or how to use the claimed invention, thus satisfying that 
aspect of § 112, 

Thus Applicants are not limited, as the Examiner has done, to claims 
only covering the specific examples that they have described in the 
specification. 

The Board^s Decision has not commented on nor rebutted Appellants' 
citation to and application of In re Robbins to show why their claims on 
appeal are enabled, including those for which the Board has not reversed 
the Examiner's rejections, and that the scope of enablement in a broadiy 
described and claimed invention, even in a chemical art, iS not limited by 
the representative examples described in Appellants' Specification which is 
what the Board's Decision appears to have done. Since, enablement does 
not require inventors to predict or foresee "every conceivable and possible 
future embodiment of [their] invention" at the time the application is filed, as 
stated in Rexnord Corp. v. Laitram Corp (Supra), the examples sited in 
Appellants^ Specification, following In re Robbins, does not limit enabled 
claims to these examples it is Appellants' position that this applies to the 
claims for which the Board's Decision has not reversed the Examiner's 
rejection. It is Appellants' position that under the facts and circumstances of 



Appeal No. 2009-003320 



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the present appiication this applies to what the Board's Decision has 
indicated is aiiowabie at page 7, lined 2-7, i e. Appellants should not be 
limited to this scope of enablement , 

Appellants' Brief at BV1 page 127, lines 6-15 quoting the MPEP 



The fact that expenmentation may be compiex does not 
necessarily make it undue, if the art typically engages in 
such experimentation, in re Certain Limited-Charge Gel! 
Culture Microcarriers, 221 USPQ 1 165, 1174 (Int'l Trade 
Comm'n 1983). affd. sub nom., Massachusetts Institute 
of Technology v. A.B. Portia, 774 F.2d 1104. 227 USPQ 
428 (Fed, Cir. 1985). 

See also in re Wands, 858 P.2d at 737, 8 USPQ2d at 
1404. The test of enablement is not whether any 
experimentation is necessary, but whether, if 
experimentation is necessary, it is undue. In re 
Angstadt, 537 F.2d 498, 504. 190 USPQ 214. 219 
(CCPA1976). 



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



BV1 paragraph bridging pages 124 and 125, states 

The CAFC in Enzo at 52 USPQ2d 1 129, 11 38 cites in re Vaeck 20 
USP02d 1438 stating; 

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

It is undisputed that Appellants have provided "illustrative examples or 
temiinology to teach those of ordinary skill how to make and use the 



Appeal No. 2009-003320 



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invention as broadly as it is daimed "(Emphasis added.) Thus terminology 
alone is sufficient to satisfy enablement even in an unpredlctabie art. As 
stated throughout Appellants' Brief, the chemistry involved in making 
samples that come within the scope of the claims that the Board's Decision 
has not reversed the Examiner's rejection does not have to be understood 
to make samples by known methods and to test them by known methods. 
Thus the art of making high Tc superconductors does not have the so called 
unpredictability, that is undetermlnabiiity, that is associated with "most 
chemical reactions." Appellants note that In re Fisher 427 F,2d 833 does 
not Include all chemical reactions as unpredictable. ( See BV1 page 44, lines 
1-7.) 

BV1 page 232, line 14 to page 233, line 32, states: 

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

USPQ 214 commenting on the dissent states- 

The dissent's reliance on tn re Ralner, 54 CCPA 1445. 377 
F.2d 1006. 153 USPQ 802 (1967), iS misplaced, if Rainer 
stands for the proposition that the disclosure must provide 
"guidance which wiil enable one skilled in the art to 
determine, with reasonable certainty before performing the 
reaction, whether the claimed product will be obtained" 
(emphasis in original), as the 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 Examiner's position (proposition) is 
requiring what the CCPA states is not required and "[s]uch 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 Examiner is requiring is beyond 
what the Supreme Court requires and what the Patent Act requires. 



Appeal No. 2009-003320 



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The CCPA applies the Supreme Court Minerais v, Hyde 
Enablement Statement in in re Bosy. S3 CCP A. 1231. 1254-1255 
iCA)PAJJ66j 149 U.S.P.Q. (BNA) 789 stating: 
The Supreme Court set out some guidelines with 
reference to the sufficiency of a specification to disclose 
an invention in such a manner as v/\\\ enable one of 
ordinary skiil in the art to make it in Minerals 
Separation, Ltd. v. Hyde. 242 U.S. 261 (1929), at 270- 
271: [Stating the Supreme Court Minerals v. Hyde 
Enablement statement quoted above.] 

The CCPA aiso cite Minerals Separation, Ltd. v. Hyde. 242 U.S. 261 in 
in re Gorr. 52 C.C.P.A. 1505, 1508 (C.C.P.A. 1965) 146 U.S.P.Q. 
(BNA) 69 and states "The certainty required in patents is not greater 
than that vi/hich is reasonable, having regard to the subject matter 
involved. Minerals Separation, Ltd, v. Hyde, 242 U.S. 261." in re 

The CAFC adopted the Supreme Court Minerals v, Hyde 
Enablement Statement in W.L. Gore & Associates, Inc. v, Gariock, 
Inc., stating: 

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

14, Section 

Appellants note that the Board's Decision at page 20 , lines 17- 20, 
in referring to the category of claims it has identified under Subsection 11 at 



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page 17 states (this will be referred herein as BD Category II Claims and 

the materiais referred to as BD Category I! Materiais) ; 

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

contend otherwise 

and at BD page 22 line 7, states: 

[only] limited and routine experimentation [is] necessary to 
mal<e and test such materials 

It has been Appellants' position throughout the prosecution of this 
application which is restated throughout Appellants' Brief and Appellants' 
Replies that oniy routine experimentation is needed to practice all of 
Appellants' ciaims. For example BV1 page 115, lines 11-12, instates 
'tt|he Examiner cites no example of a species that comes within the scope 
of Applicants' claims that cannot be made foilowing Appiicants' teaching." 
RB page25, lines 13-19, states " [\]n the present Application the Examiner 
has provided not [no, sic] reason for why species that come within the scope 
of the claiims rejected for lack of enablement cannot be made and used, " 
The Total Final Rejection or Examiners Answer identifies none - the 
Board's Decision identifies none. The two passages quoted above from the 
Board's Decision are stated in association with the following statement from 
BD page 20, lines 16-20, in regards to theSubsection I! category of 
materials,: 

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

In essence the combination of these three quoted sections of the Board's 
Decision states that there is a finite, relatively small number of materiais in 
the Subsection II category of matehals and since only routine 
experimentation are necessary to make and test these materia!, they are 



Appeal No. 2009-003320 



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enabied. Appeiiants agree with this conciusion as it applies only to such 
materials, but not with the impiication that Appellants' ciaims (for which the 
Board has not reversed the Examiners rejections) which capture species 
outside of BD Subsection !l Materials are note enabled. 

As has been argued in details throughout the prosecution of this 
appiication and in Appellants' Brief and Appellants' Replies and as will be 
argued m detail below in response to the new arguments appearing for the 
first time in the prosecution of this application in BD pages 17-21 only 
routine screening iS involved in finding other species including outside of BD 
Subsection !! Materials but which come within the scope of those claim for 
which the board has not revered the Examiners rejection. Collectively such 
species will be referred to herein as the Delta Genus. Claim for which the 
Board's Decision did not reverse the Examiner's rejections shall be referred 
to as Subsection Ml Claims.. Appellants note that their specifically made 
embodiments are species within the scope of every claim including of each 
Subsection HI Claim. Appellants also note that the BD Subsection !! 
Materials are a subgenus of the broadest recitation of the high Tc element 
of the broadest claims of the Subsection !l! Claims. Since some of the 
Subsection lil Claims have other limitations there is significant overlap with 
those. Thus the Delta Genus(s) are not directed to an invention of a 
different kind than the ciaims directed to BD Subsection i! Materials. There 
is no evidence that species of the Delta Genus(s) cannot be made and 
tested in the same way as the BD Subsection H Materials which the Board's 
Decision has found enabled Each Subsection III ciaim has within its 
scope a species found enabled by the Examiner and a species found 
enabled by the Board's Decision and there is no evidence that any of the 
other species cannot be made and tested following Appellants' teaching. In 
particular the Known Principles of Ceramic Science Claims are explicitly 
limited to what a person of ordinary sl^ili in the art could make as of 
Appellants' earliest filing date. Appellants note, as stated in the Brief (see 
Exaiminer's Third Enablement Statement BV3 page 4) Appellants claims are 

Appeal No. 2009-003320 Page 46 of 121 Serial No,: 08/479,810 



not chemica! composition daims. Appeliants' chemical composition claims 
were found anticipated over known matertais which inherently had the high 
Tc property. The Board s analysis appears to forget that important issue. 
{See Examiners Second Enablement Statement V83 pages 3~ 4.) 



15. Section 

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

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

page 1 7 states: 

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

The implication of this statement is that the In re Wands factor ''the amount 

of direction or guidance presented'' necessarily requires the specific 

identification of species for there to be enablement. Appellants respectfully 

submit that this implication is an error of law. 

BV1 page 2T lines 4-4, states: 

As described below no undue experimeiitation is needed to 
mai<e such species and therefore. Applicants do not have to 
provide "guidance" on how to do experimentation to make such 
species. Guidance is only needed when undue experimentation 
would be needed without such guidance to make species by 
experiments that were not actually performed by Applicants. 

BV1 Page 51 lines 9-18, states: 

Again as with the patent legal terms "predictability" and 
"unpredictability," the patent legal term "guidance" is 
directed to "the inanner 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 carry out the experiment can resuit in 
enablement even though the experimentation is not recorded 
as a performed example in the specification. As noted in the 
summary of the invention section above Applicants' teaching 
identifies properties that Applicants' examples possess 
which later discovered species also possess. Thus 



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Applicants' teaching has more than is minimaliy necessary to 
satisfy enablement. 

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

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



It is undisputed that the methods to make and test species that come within 
the scope of the claims for which the Board has not reversed the 
Examiner's rejection were known prior to Appellants earliest filing date. 
Guidance is not predicting in advance what species will work, but is 
guidance on how to "make and use" the claimed invention as explicitly 
stated in 35 USC 112, paragraph one. See the iegal authority cited in 
Appellants' Brief and Appellants' Replies, some of which is reproduced 
herein, in particular in Section 13. If ail species that come within the scope 
of a claim do not have to be foreseen in advance to satisfy enablement then 
the implication of the Boards' statement quoted above is legal error. 



BV1 page 96, lines 19-33, state in regard to the Board's precedent Ex pare 
Jackson: 



The Board states at 217 USPQ 806 "The issue squarely raised by [the] 
rejection [of claims] is whether or not a description of several newiy 
discovered strains of bacteria having a particularly desirable i-netabolic 
property in terms of the conventionally measured culture characteristic 



Appeal No. 2009-003320 



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and a number of metaboiic and physioiogicai properties would enable 
one of ordinary skil! in the relevant art to independently discover 
additional strains having the same specific desirable metaboiic 
property, i.e., the production of a particular antibiotic." Thus Appiicants' 
respectful iy submit that the Board in Ex parte Jackson -would find a 
disclosure enabling that permits "one of ordinary skiil in the relevant art 
to independently discover additional" htgh Tc materials that come 
within the scope of Applicants" generic claims, in particular in view of 
the Examiners' finding that "The examiner does not deny ... that once 
a person of skill in the art knows of a specific type of composition 
which is superconducting at greater than or equal to 26K. such a 
person of skiil in the art, using the techniques described in the 
application, .. can make the kiiown superconductive compositions." 
{Emphasis in the original ) 

The Board^s Decision is in conflict with the Board^s pi-ecedent and it is thus 
legal error to require knowledge in advance of species that fall outside of the 
scope found allowable by the Board's decision but within the scope of the 
claims that the Board's Decision has not reversed the Examiner's rejections. 



As noted above at BD page 22 line 7, the Board's Decision acknowledges 
referring to Subsection il Materials that "[only] limited and routine 
experimentation [is] necessary to make and test such materials ' There is 
no evidence that anything other than this "limited and routine 
experimentation [is] necessary to make and test .materials" that fall outside 
the scope of the Subsection li materials, but within the scope of the 
materials recited as elements of he claims for which the Board's decision 
has not reversed the Examiner's rejections. 



16. Section 

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

For reasons detailed below, the art of high temperature 
superconductivity is generally unpredictable in that there is 
generally no reasonable expectation of successfully 
achieving high temperature superconductivity. 



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Appeiiants' disagree that "predictability' as that term is used in the patent 
iavv requires that there be a "reasonable expectation of successful !y 
achieving high temperature superconductivity;' but means within the 
meaning of the patent iaw a reasonable expectation of success in mai<^fng 
samples for which there ts a reasonabie expectation of success tn testing to 
determine if those sampies have high temperature superconductivity. 
Appeliants arrived at this position in Appellants' Brief and Appellants' 
Replies by a close and detailed analysis of iega! authorities. The Board's 
Decision has not responded to that analysis nor commented on it. if ali 
species that come within the scope of a ciaim do not have to be foreseen at 
the time of filing of an application (See iega! authority cited in Section 1 3 
above, e.g. enablement does not require inventors to predict or foresee 
'every conceivable and possible future embodiment of [their] invention" at 
the time the application is fiied, as stated in Rexnord Corp. v. Laitram Corp 
(Supra),), to satisfy enablement in the context of the present application 
there does not have to be a reasonable expectation of foreseeing ail 
species that have the high temperature property. Since what the Board's 
Decision states is equivalent to what the cited legal authority says is not 
necessary, the Board's statement above is iegai error. The statement 
quoted from the Board's Decision above requires "foreseeabiity" and is thus 
legal error, 

!t is Appellants' position as extensively stated in Appellants' Brief and 
Appellants' Replies that if species within the scope of a claims are 
"determinable" by experiment that only involves known methods to make the 
materials, known methods to test the materials and there is no evidence that 
species cannot be made by those inethods, the genus claims to those 
species are enabled. It is Appellants' position that this iS a predictable art 
because it is understood how to make and test species that are made to 
determine if those species have the desired property. Appellants' evidence 
conclusively shows this. BV1 page 46 last 15 lines to page 47, line 7, state 



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(This is referred to as the Poole 1 988 Enabiement Statement See BV3 page 
6): 

Applicants have clearly shown that only routine experimentation \s 
needed to fabricate other samples to practice Applicants' claimed 
invention. See the DST AFFIDAVITS (Affidavits of Shaw of 
04/14/2005, Affidavit of Dinger of 04/04/2005 and Affidavit of Tsuei 
of 04/04/2005, Bnef Attachment AM. AN and AO. respectiveiy, 
coliectively referred to herein as the DST AFFiDAViTS ). Applicants 
respectfully disagree that the field of High Tc superconductivity is 
unpredictable vi/ithin the meaning of the US patent iaw as 
suggested by the Examiner. See the affidavit of Nevv'ns submitted 
04/12/2006 (Brief Attachment AP). The complex chemistry does 
not have to be understood to fabricate samples as stated in the 
book "Copper Oxide Superconductors" by Charles P. Poole, et a!. 
(See H 48 of DST AFFIDAVITS and Brief Attachment AW) which 
states at page 59; 

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

Poole further states at page 51 : 

[i]n this section three methods of preparation wiil be 
described, namely, the solid state, the coprecipitation, 
and the sol-gel techniques (Hatfi). The widely used 
solid-state technique permits off-the-shelf chemicals 
to be directly calcined into superconductors, and it 
requires little familiarity with the subtle 
physicochemical process involved in the 
transformation of a mixture of compounds into a 
superconductor. 

It is undisputed that the materials that come within the scope of Appellants^ 
claims are note difficult to synthesize and little familiarity with the chemistry 
going on is required. Species within the scope of Appellants' claims are 
readily determinable. Appellants take this to mean predictable. 

In re Wands (Supra), In re Angstadt (Supra) and Mineral Separation 
V. Hyde (Supra) support Appellant's position and doe not support the 
Board^s Decision. It is unrebutted in the persecution of the present 

Appeal No. 2009-003320 Page 51 of 121 Serial No,: 08/479,810 



appiication that species within the scope of Appeiiants ciaims for which the 
Board has not reversed the Examiner's rejection reciting a superconducting 
eiement outside of the scope of a Subsection !l materiais are 
'determinable" by experiment that only involves known methods to make the 
materials, known methods to test the materiais and that there ts no evidence 
that these species cannot be made by those methods. The only issue 
appears to be whether the effort to determine them should be considered 
'undue experimentation." It is Appellants^ position that this is not undue 
experimentation. Since the effort to determine whether one particular 
species, which can be made and tested by known methods to determine if 
the species has the high temperature superconductive property, is not 
undue, it is Appellants' position that the effort to determine whether a large 
number of such species in the aggregate is not undue. In re Wands 
(Supra), //? re Angstadt (Supra) and Mineral' Separation v. Hyde (Supra) 
support this view. Appellants' Brief and Appellants' Replies show why in re 
Wands supports their argument that their claims are enabled at BV1 pages 
46, 47,49, 69,83, 91, 111 124, 125to128, 170, 223, and 224 and RB page 
52. Appellants' Bnef and Appellants' Replies show why In re Angstadt 
supports their argument that their claims are enabled at t BVl pages 46, 
49, 70, 73, 74. S5, 97, 98, 101 -108 (these pages have a comprehensive 
discussion of this decisions applicability to the claims rejected in the present 
application), 128, 135, 136, 138, 146, 152, 154, 169, 223, 224, 232 and RB 
pages 20, 21 and 23. Appellants' Brief and Appellants" Replies show why 
Minerals Separation, Ltd. v Hyde Minerals Separation, Ltd. v. Hyde 
supports their argument that their claims are enabled at BV1 pages 228 to 
237, 

In re Wands is directed to a biotechnology invention wherein a broad 
method claim was found enabled based "[olnly nine hybridomas [that] were 
actually analyzed beyond the initial screening for HBsAgbinding. Of these, 
four produced antibodies that fell within the cl a im s , '7r? m Wands. 858 F . 2d 



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!n re Angstadt states "there is no magical relation between the 
number of representative examples and the breadth of the claims" with 
respect to enablement, in re Borkowski. 57 CCPA 946, 952-53, 422 F.2d 
904, 910, 164 USPQ 642, 646 {1970). .inj;e ArK^st^^^^^^^^ 



Notwithstanding the invention in In re Angstadt is characterized as 
unpredictable a relatively small number of examples was sufficient to 
enable a very broad claim: "[ajlthough appellants' specification shows 
some 38 examples (embodiments) within the broad scope of the claims, this 
number is minute in comparison with the immense number of combinations 
of organometallic catalysts and alkylaromatic hydrocarbons within that 
scope. "In re Angstadt. 537 F.2d 49S. 507 (C.C.P.A. 197S) 

in Mineral Separation v, Hyde (Supra) a claim was found enabled to 
a method of treating ores base on a small number of examples even though 
'[t]he composition of ores varies infinitely." See the Mineral Separation v. 
Hyde Enablement Statement above. 

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



The Board' Decision at page 26, last line to page 27 line 4 states; 



We do not share Appellants' premise that the capability of an 
artisan to make and test embodiments other than those allowed 




17. Section 



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by the Examiner establishes predictability in the art of high 
temperature superconductivity. On this record, Appeilants have 
not shown the asserted correiation between capability and 
predictabitity. 

Appeiiants' have contended that the patent !aw term "predictable" has the 
meaning of determinable and has supported that by citations to legal 
authority. The Board s Decision does not rebut Appellants^ argument and 
has made no comment on that argument but on!y has stated what is quoted 
in the above paragraph !n in re Wands Judge Newman disagrees with this 
comment from the Board^s Decision. page 47, line 13-24, states: 



!n In re Wands 858 F.2d 731 742 {Fed. Cir, 1988); 8 U.S.P.Q,2D 
1400, 1408 Judge Newman concurring in part, dissenting in part 
stated "[The inventor] must provide sufficient data or authority to 
show that his results are reasonably predictable within the scope of 
the claimed generic invention, based on experiment and/or 
scientific theory, " Thus experiment or theory is sufficient to 
establish predictabiiity. And as stated above by the Examiner "a 
person of skill in the art, using the techniques described in the 
appiication, which included a!i principles of ceramic fabrication 
l<nown at the time the application was initially filed, can make the 
known superconductive compositions " There is no requirement to 
knovv^ in advance all examples enabled by their teaching. Thus the 
field of High Tc superconductivity is predictable within the meaning 
of in re Wands. Species within the scope of Applicants' claims are 
determinable without undue experimentation and by well known 
testing. 

Thus the statemeiit from the Board s Decision quoted above is legal error 
since "predictability" can be "based on experiment and./or scientific theory" 
as stated by Judge Newman. The Board's Decision at BD page 27, iine 
3—4 states lo]n this record, Appellants have not shown the asserted 
correlation between capability and predictability." Appellant's respectfully 
disagree, Judge Newman in the passage quoted above establishes the 
correiation. in addition the correlation is clearly established by the Poole 
1988 Enabiement Statement (See BV3 page 6), quoted above which states 
that little familiarity with the chemistry involved is required in making species 
Appea! No. 2009-003320 Page 54 of 121 Serial No,: 08/479,810 



that come within the scope of Appellants' claims and are not difficult to 
synthesize. 

18. Section 

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

The last paragraph of BV1 page 43 states- 

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

Claims 438, 440 and 536 have been rejected under 35 U.S.C. 1 12.first 

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

The Board's Decision does not provide a construction of the limitation 

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

give this means plus function limitation a construction. Without the required 

construction Appellants do not knov^ what meaning the Board considers this 

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

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

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

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

In In re Donaldson the GAFC states; 

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



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in re Donaldson Co.. 16 F.3d 1189, 119S (Fed. Cir. 1994) 

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

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

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

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

claim construction by the PTO is a question of law that we 
review de novo, see in re Freeman, 30 F.Sd 1459, 1464. 
31 

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

Appeliants request the Board to provide its construction of the 
limitation "means for conducting a superconductive current'' in 
ciaims 438, 440 and 536 as required by the cited decisions and to 
grant Appellants' request to reopen prosecution so that Appeliants 
can properiy respond to this rejection. 

The oniy comment that the Board's Decision make in regard to 
ciaims 438, 440 and 536 is in the last paragraph of page 23 and the first 
paragraph of page 24. The last paragraph of the Boards' Decision at BD 
page 23 states in regards to Appeliants* argument in the Brief lt]his 
argument is based on the proposition that ciaims 438, 440. and 536, 
because of their means plus function form, have the same scope as the 
ciaims which are considered to be enabled by the Examiner," and states in 
the first paragraph at BD page 24 " 

This argument is unconvincing. As Appeliants 
acknowledged during the Oral Hearing of 10 June 2009, the 
sixth paragraph of 35 U.S.C. § 112 requires that the means 
plus function language of the claims under review cover not 
only the corresponding structure or material described in the 
Specification but also the equivalents thereof whereby these 
claims are broader than those considered to be enabled by 
the Examiner (see Hearing Transcript 3-5). Therefore, the 

Appeal No. 2009-003320 Page 56 of 121 Serial No,: 08/479,810 



mere fact that the Examiner considers more narrow claims 
to be enabled is an inadequate reason to consider broader 
claims 438, 440, and 536 to be enabled. !t foliows that this 
argument reveals no error in the Examiner's rejection of 
these claims. 

Under 35 U.S.C.112, paragraph 6, a means plus function element is to be 
construes as limited to the corresponding structure disclosed in the 
specification and equivalents thereof. Appellants' Brief at BV1 first 
paragraph stating "[t]hus since the Examiner has aliovv'ed claims to specific 
examples described in the specification, the claims in means plus function 
form can not be rejected as not being enabled and the rejection should be 
reversed" construed the specific examples of Appellants' specification, i.e., 
the claims that the Examiner allowed, to be the 1 12 paragraph six 
'corresponding structure." The Examiner did not dispute this and the 
Board at the oral hearing did not dispute this. The statue mandates that the 
clam inciude equivalents. The Board's Decision does not identify what the 
equivalents are and also why those equivalents are not enabled., in view of 
the Board's Decision Appellants adopthe following new construction of the 
112 paragraph six "corresponding structure" to be what the Board's 
Decision says is enabled at 8D page 7 first paragraph, which is; 



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

The statue mandates that Appellants are entitled to this claim. Appellant do 
not understand how a 112 paragraph 6 equivalent cannot be enabled if the 
corresponding structure is enabled and the Board's Decision doe not 
explain this. Appellants request the Board to reverse the rejection of 



Appeal No. 2009-003320 



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claims 438, 440 and 536 with this new claim construction. If boarder claims 
are subsequently found enabled, Appellants' adopted that as a construction 
of the 112 paragraph six "corresponding structure" and request reversal of 
the rejection of claims 438, 440 and 536 with that broader construction. 

Appellants request their Request that Prosecution be Reopened 
submitted concurrently herewith be granted with a statement of the Board's 
construction of the means plus function element {"means for conducting a 
superconductive current" ) of these claims. 

19. Section 

The Board's Decision from DB page 24, linel 1 to the end of the argument 
before the title "Conciusions of Law" at BD page 41 of the Board's Decision 
only mentions claim 12 in its analysis of claims for which the Board's 
Decision is not reversing the Examiner rejections. Appellants note that each 
claim has been appeal individually and arguments in BV3 are given for why 
each claim in enabled. The Board's Decision does not respond to the 
arguments 

At BD page 24 the text of ciaim 12 is quoted. Appellants note that 
the claim is directed to a superconductive element that is an 
"superconductive oxide." Appellants note that specific embodiments 
reported on as having been fabricated and tested by undisputed known 
means are 'superconductive oxides." Thus those fabricated and tested 
species arevvithin the scope of claim 12. Appellants note that claim 329 
which depends form claim 12 is one of the The Know Principles of Ceramic 
Science Claims. The text of this claim is 

CLAiM 329 A superconductive combination according to 
anyone of claims 1 2 to 23, 11 0, 1 31 , 1 32 or 367-370. 
wherein said superconductive composition can be made 
according to known principles of ceramic science. 



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Neither the Board's Decision nor the Examiner have found this claim 
enabled even though it is explicitly limited to methods of fabrication know as 
of Appellants' earliest fifing date, 

20. Section 

As noted above the Board^s Decision at BD page 27, line 3 — 4 states '[o]n 
this record, Appeilants have not shown the asserted correlation between 
capability and predictability/' And as noted above Appellant's respectfuliy 
disagree, since Judge Newman in the passage quoted above establishes 
the correiation. in addition the correlation is clearSy established by the Poole 
1988 Enabiement Statement (See BV3 page 6), quoted above, which states 
that iittle familiarity with the chemistry involved is required in making species 
that come within the scope of Appeilants' claims and they are not difficult to 
synthesize. Immediately following the passage quote above from he 
Board's Decision at BD page 27, line 3—4 the Board^s Decision goes on to 
state at BD page 27, lines 5-12: 

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

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

(Schulier 7) 

The News Affidavit (Brief Attachment AP).address the stement in Schulier 
'ttjhus far, the existence of a totally new superconductor has proven 
impossible to predict from first principles" Appellants Brief at BV1 page 202, 
lines 5-1 1 relying on the News Affidavit states:: 

Appeal No. 2009-003320 Page 59 of 121 Serial No,: 08/479,810 



Thus the statement in the Schulier articie in paragraph 5 of 
the Newns Affidavit (Schuiler Paragraph 2 above) "Thus far, 
the existence of, a totally new superconductor has proven 
impossibie to predict from first principles" was shown by the 
work of Marvin L. Cohen and Steven Louie published 
shortly after the article of Schulier aiso to foe not totally 
accurate. Moreover, the highlighted section of the abstract 
refers to layered as a property of the materials just as 
Applicants' specification has identified layered as a property 
of high To superconductors. See Applicants' original claim 9. 

This is unrebutted in the Board's Decision. 



The Board's Decision goes on to state at BD, line 17 to page 28, line 



Specifically, Appellants urge that their predictability 
position is supported by Schuller's reference to new 
superconductor discoveries as based largely on empirical 
approaches, intuition, and serendipity since these bases 
are typically used by scientists during the discovery 
process as evidenced by the Newns affidavit (id.). 
However, Appellants have not established their 
proposition that predictability is indicated by the use of 
empiricai approaches, intuition, and serendipity in the 
research and discovery methodology of scientists. 
Contrary to this proposition, vi/e regard predictability in 
the context of enablement as involving a reasonable 
expectation of success. See Wright, 99S F.2d at 1564 
("Wright has failed to establish by evidence or arguments 
that. . . a skilled scientist would have believed 
reasonably that Wright's success with a particular strain 
of an avian RNA virus could be extrapolated with a 
reasonable expectation of success to other avian RNA 
viruses"). 

This passage from the Board's Decision states 'Appellants have not 
established their proposition that predictability is iiidicated by the use of 
empirical approaches, intuition, and serendipity in the research and 
discovery methodology of scientists" as a comment on or criticism of the 
News Affidavit, 

The following language is quoted from BV1 page 1 1 4, lines 23-27: 
Appeal No. 2009-003320 Page 60 of 121 Serial No.: 0S./479,810 



The Examiner has provided no reason for why the 1 .132 
Deciarations of Mitzi, Tsuei, Dinger and Shaw (Brief 
Attachments AH, A!, AJ, AK and AL) are not persuasive and 
the Examiner has made no comment on the DST Affidavits 
(Brief Attachments AM to AO) or the declaration of Bednorz 
(Brief Attachment AQ) or the Affidavit of Newns (Brief 
Attachment AQ [s\c.,, AP]). 

Appeliants' Repiy states at page 5, iines 4-5, '[tjhe Examiners' 
Ansvv'er is essentiaiiy verbatim copied from the Office Action dated 
07/28/2004 and the Final Action ' Thus the Examiner's Answer adds no 
new facts, decisions or augments not found in the Tota! Final Action 

Thus for the first lime in the prosecution of the present application 
there is a comment and criticism of the News Affidavit (Brief Attachment 
AP). Appellants should not re required to respond in a Request fro 
Rehearing to comments on, criticisms of and notations of deficiencies that 
have been made for the first time in the Decisions on Appeal. These 
comments should have been made by the Examiner in prosecution and to 
the extent that they are being made in the Decision on Appeai, the Board is 
acting as an examiner and not in its appellate capacity. In view there of 
Appellants request that their Request to Reopen Prosecution be granted. 
Because the Board has introduce arguments comments on, criticisms of 
and notations of deficiencies in the News Affidavit (Brief Attachment 
AP). Appellants are compelled to introduce rebuttal comments. Attached to 
this rehearing is a rebuttal affidavit of Dr. News. It wili be designated 
ATTACHE ME NT BN which is next Attachment designation after the 
Attachment previously submitted with RB3. 

21. Section 
Dr. News Affidavit ^Attachment BN) 

Paragraph 3 of Dr, News new affidavit states: 

in my prior affidavit 1 commented on the USPTO response dated 
October 20, 2005 (Office Action) which at page 4 regarding the 
Appeal No. 2009-003320 Page 61 of 121 Serial No,: 08/479,810 



subject application cites Sciiuiler et a I "A Snapshot View of High 
Temperature Superconductivity 2002" (report from workshop on 
High Temperature Superconductivity heid April 5-8, 2002 in San 
Dtego) which the examiner states "discusses both the practical 
applications and theoreticai meclianisnns relating to 
superconductivity." 



Paragraph 4 of Dr, News new affidavit states- 

As stated in paragraph 4 of my Prior Affidavit the Examiner at 
page 4 of the Office Action cites page 4 of Schulier et al which 



"Basic research in high temperature 
superconductivity, because the compiexity of the 
materials, brings together expertise from 
materials scientists, physicists and chemists, 
expenmentaiists and theorists... it \s important to 
realize that this field is based on complex 
materials and because of this materials science 
issues are crucial. Microstructures, crystaiiinity, 
phase variations, nonequilibrium phases, and 
overall structural issues play a crucial role and can 
strongly affect the physical properties of the 
materials. Moreover, it seems that to date there 
are no clear-cut directions for searches for new 
superconducting phases, as shown by the 
serendipitous discovery of superconductivity in 
iVlgBa. Thus studies in which the nature of 
chemical bonding and how this arises in existing 
superconductors may prove to be fruitful. Of 
course, "enlightened" empirical searches either 
guided by chemical and materials intuition or 
systematic searches using well-defined strategies 
may prove to be fruitful, it is interesting to note 
that while empirical searches in the oxides gave 
rise to many superconducting systems, similar 
(probable?) searches after the discovery of 
superconductivity in Mg8- have not uncovered 
any new superconductors." 

Paragraph 5 of Dr, News new affidavit states- 



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As stated in paragraph 5 of my Prior Affidavit tiie Examiner at 
pages 4 -5 of tiie Office Action cites pages 5- 6 of Schuiler et a! 
which state: 

"The theory of high temperature 
superconductivity has proven to be eiusive to 
date. This is probabiy as much caused by the 
fact that in these complex materiais it is very 
hard to establish uniquely even the expenmenta! 
phenomenology, as vvei! as by the evolution of 
many competing modeis, vt'hich seem to 
address only particular aspects of the problem. 
The Indian story of the blind men trying to 
characterize the main properties of an 
elephant by touching various parts of its body 
seems lo be paiticularly reSevanl, !t is not even 
clear vs/hether there is a single theory of 
superconductivity or whether various 
mechanisms are possible. Thus it is impossibie 
to summarize, or even give a complete genera! 
overview of all theories of superconductivity and 
because of this, this report v/ill be very limited in 
its theoretical scope " 

Paragraph 6 of Dr, Hevvs new affidavit states; 

As stated in paragraph 6 of my Prior Affidavit the Examiner at 
page 5 of the Office Action cites page 7 of Schulier et al which 
states: 

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

Paragraph 7 of Dr, News new affidavit states: 

My Prior Affidavit was submitted to clarify what is meant by 
predictability in theoretical solid state science and to comment on 
the passages quoted above in paragraphs 4, 5 and 6. 



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Paragraph 8 of Dr, News new affidavit states; 

! am submitting this affidavit to comment on certain remarks made 
in the Decision on Appeal of the Board of Patent Appeais and 
Interferences of the United States Patent and Trademark Office 
(Board's Decision) dated 09/17/2009." 

Paragraph 9 of Dr, News new affidavit states; 

Apparently motivated by my Prior Affidavit and the arguments 
made by the patent applicants base on my Prior Affidavit the 
Board's Decision makes the following comments at page 1 0 in 
regards to a paragraph from page 7 of the Schulier article (quoted 
above in paragraph 6); 

As support for the finding of unpredictability in the high 
temperature superconductor art, the Examiner relies on 
the Schuller article 'A Snapshot View of High- 
Temperature Superconductivity 2002", which discloses: 

Thus far, the existence of a totally new 
superconductor has proven impossible to predict 
from first principles. Therefore, their discovery has 
been based on largely on empirical approaches, 
intuition, and even serendipity. This 
unpredictability is at the root of the excitement that 
the condensed matter coiTim unity displays at the 
discovery of a new material that is 
superconducting at high temperature. (Schuller 7). 

Paragraph 10 of Dr, News new affidavit states: 

"Boards' Decision page 26, lines 15-19, states 

Appellants urge that their predictability position is 
supported by Schuller's reference to new 
superconductor discoveries as based largely on 
empirical approaches, intuition, and serendipity 
since these bases are typically used by scientists 
during the discovery process as evidenced by the 
Newns affidavit (id). Hovv'ever, Appellants have 



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not established their proposition that predictability 
is indicated by the use of empirical approaches, 
intuition, and serendipity in the research and 
discovery methodology of scientists. 

Paragraph 1 1 of Dr, News new affidavit states: 

The first few sentences of paragraph 7 of my Prior Affidavit 



I am submitting this declaration to clarify what is 
meant by predictability in theoretical solid state 
science. A theory of a solid is based on 
approximate mathematical formalisms to 
represent these interactions, A theoretical solid 
state scientist makes an assessment using 
physical intuition, mathematical estimation and 
experimental results as a guide to focus on 
features of the complex set of interactions that 
this assessment suggests are dominate [sic, 
dominant] in their effect on the physical 
phenomena for vi'hich the theorist is attempting to 
develop a theory. This process results in what is 
often referred to as mathematical formalism. This 
formalisin is then applied to specific examples to 
determine whether the formalism produces 
computed results that agree with measured 
experimental results. This process can be 
considered a "theoretical experiment." 

Paragraph 12 of Dr, News new affidavit states- 

"The last few sentences of paragraph 9 of my Prior Affidavit state 

referring as an example to a well understood theory in 

semiconductors ; 

Moreover, that a theoretical computation is a 
"theoretica! experiment" in the conceptual 
sense [is] not different than a physical 
experiment. The theorist starting out on a 
computation, just as an experimentalist staring 
out on an experirnent, has an intuitive feeling 
that, but does not know whether, the material 
studied will in fact be a semiconductor. As 
stated above solid state scientists, both 
theoretical and experimental, are initially 



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guided by physical intuition based on prior 
experimenta! and theoretical work. Experiment 
and theory complement each other, at times 
one is ahead of the other in an understanding 
of a problem, but which one is ahead changes 
over time as an understanding of the physicai 
phenomena develops. 
These comments equally apple to high Tc superconductivity. 

Paragraph 13 of Dr, News new affidavit states: 

It is my position that the Board^s Decision as quoted in 
paragraphs 9 and 1 0 above is inconsistent with what i stated in 
my Prior Affidavit as indicated by the representative examples 
from my Prior Affidavit quoted in paragraphs 1 1 and 12 above. ! 
refer the complete text of my Prior Affidavit for all the details. 

Paragraph 14 of Dr, News new affidavit states. 

I disagree with the Board's Decision quoted in paragraph 10 
above where it states "Appellants have not established their 
proposition that predictability is indicated by the use of empirical 
approaches, intuition, and serendipity in the research and 
discovery methodology of scientists." 

Paragraph 15 of Dr, News new affidavit states 

Thysicai intuition" to an experimenta! scientist is developed from 
the experimental techniques and apparatus they use and the data 
that they measure. This is their "empirical approaches." 

Paragraph 16 of Dr, News new affidavit states 

Thysical intuition" to a theoretical scientist is developed from the 
mathematical and calculation techniques they use (which includes 
numerical calculations on computers), the equations they develop 
and the data that they calculate. This iS their empirical 



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approaches. \Nhere 1 use empirica! here as ! use the term 
"theoretica! experimenf in my Prior Affidavit, 

Paragraph 17 of Dr, News new affidavit states; 

Both experimental and theoretical scientists are primariiy guided 
by this developed "physicai intuition," 

Paragraph 18 of Dr, News new affidavit states; 

A theoreticai scientist does not make random calculations and an 
experimental scientist does not make random experiments. Such 
a random approach would not resuit in useful resuits. 

Paragraph 19 of Dr, News new affidavit states 

VWien a theoretical scientist chooses to go into a particular 
theoretical direction or when an experimenta! scientist chooses to 
go in a particular experimental direction, that direction is guided 
by "physical intuition" with a reasonable expectation of success in 
carrying out the experiment or calculation and arriving at a 
measured or calculated result 

Paragraph 20 of Dr, News new affidavit states: 

Both theoretical and experimental scientists are primarily guided 
by "physical intuition" which is developed by educational training 
and the theoretical work or experimental work that they do. 

Paragraph 21 of Dr, News new affidavit states : 

When a theoretical or experimental result is achieved, that result 
is systematically explored to develop a fuller theoretical or 
experimental understanding which further develops or enhances 

the scientist "physical intuition." 



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Paragraph 22 of Dr, News new affidavit states; 

Systematic exploralion to a theoretical scientist may for exampie 
include varying certain parameters used in a calculation, 
modifying approximate equations used in the caicuiation or 
modifying a numerica! computational approach. Ail of this is done 
with a reasonabie expectation of getting successfuily caiculated 
results. 

Paragraph 23 of Dr, News new affidavit states; 

Systematic expioration to an experimentai scientist may for 
example include varying certain experimentai conditions, e.g. 
temperature, time, pressure, mix of constitutes, etc, used in an 
experiment in fabricating samples, modifying measurement 
apparatus to better measure the physical parameters, and 
measuring more and different physical parameters to get a fuller 
set of measured data . Ail of ttiis done witti a reasonable 
expectation of getting successfully fabricated samples and 
measured results. 

Paragraph 24 of Dr, News new affidavit states 

! turn now to Scbuller's use of the term "serendipity." 

Paragraph 25 of Dr, News new affidavit states; 

Both experimental and theoretical scientist uses the term 
"serendipity/' But, an experimental or theoretical observation that 
they make which they refer to as "serendipitous" was not a 
random caicuiation, a random fabrication of a sample or a random 
measurement of a sample. Both the theoretica! scientist and the 
experimental scientist set out based on physical intuition ., as I 
have described it above based on 'physical intuition" with a 
reasonabie expectation of success that they Vv'ould successfully 

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make a sample, measure a sample, or perform a calculation. No 
reasonable scientist of ordinary scientific skil! in their scfentific 
discipline would set out on an experiment, measurement or 
calculation without a reasonable expectation of success. A 
reasonable scientist of ordinary scientific skil! in a scientific 
discipline does not perform random and arbitrary experiments, 
calculations and measurements. 

Paragraph 26 of Dr, News new affidavit states; 

The term "serendipity" to a reasonable scientist of ordinary 
scientific skill in a scientific discipline means thai they recognize 
that based on their 'physical intuition" they have chosen the 
correct direction out of a possibility of many directions that may 
not have yielded as successful a result. 

Paragraph 27 of Dr, News new affidavit states 

! understand Schuller's use of the term "serendipity or 
serendipitous" in this context. 

Paragraph 28 of Dr, News new affidavit states: 

Thus when Schuiler in the section for the Schuller article quoted 
in paragraph 4 above refers to "the serendipitous discovery of 
superconductivity in MgB2%" he is using the term "serendipitous" in 
this context and with this meaning, 

Paragraph 29 of Dr, News new affidavit states: 

! note that Schuller is not an author on the paper first reporting 
superconductivity in MgB2" The Schuller article at page 7, first 
paragraph, refers to reference 8 for the "discovery in 2001 [8] of 
MgB2"" being a superconductor See reference 8 at page 39 of the 
Schuller article. Schuller is not listed as an author, 
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Paragraph 30 of Dr, News new affidavit states; 

The Schulier articles characterization of the discovery of 
superconductivity in MgBa' as "serendipitous" is Schuiler's 
statement and not tiiat of the discoverers , i.e. the authors of the 
articie. 

Paragraph 31 of Dr, News new affidavit states 

The authors of the article reporting superconductivity in MgBr 
may consider it a resuit of their intuition and systematic study 
based on the work of the inventors, Bernorz and Mueller, of the 
above identified patent appiication. 

Paragraph 32 of Dr, News new affidavit states; 

As i staled in paragraph 19 of my Prior Affidavit "Schuler refers 
the discovery of MgBa citing the paper of Nagarmatsu et ai. Nature 
Vol. 410, March 2001 in whidi the !VlgB2 is reported to have a To 
of 39 K, a layered graphite crystal structure and made from 
powders using known ceramic processing methods, MgB2 has a 
substantially simpier structure than the first samples reported on 
by Bednorz and Muiler."" 

Paragraph 33 of Dr, News new affidavit states; 

I also note that that IVlgBa was made at least as early as 1964, 
more than 30 years prior to Bednorz and Mueller's discovery of 
High Tc superconductivity, as reported in the following articie: 

Hie Preparation and Structure of Magnesium 
Boride, MqBi 

Morton E, Jones and Richard E. Marsh 

J. Am. Criem. Soc; 1954; 76(5) pp 1434 - 1436; 

Paragraph 34 of Dr, News new affidavit states: 
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! also note that fVlgBa is iayered, which is one of the properties 
that the Bednorz and Mueller patent application says is a property 
of the materials that they discovered to be high Tc 
superconductors. 

Paragraph 35 of Dr, News new affidavit states; 

! also note that Mg and B are elements that are constituents of 
materials know to be superconductors prior to the discovery of 
Beroorz and Muelier. 

Paragraph 36 of Dr, News new affidavit states; 

Thus to the authors of the article reporting superconductivity in 
MgBz it may not have been "serendipitous" that a previousiy made 
materia!, that is layered and made of elements known to have 
been constituents of know superconductors, were high Tc 
superconductors, but that their result was consistent with their 
intuition. 

Paragraph 37 of Dr, News new affidavit states: 

! will not repeat here everything that ! said in my Prior Affidavit, 
but refer to it for the details. 

Paragraph 38 of Dr, News new affidavit states; 

In closing I note that the concept of a "theory ' as used in solid 
state science or other sciences in the broadest sense refers to the 
"physical intuition" that scientist has about a physical 
phenomenon based on which the scientist forms a 
"phenomenological understanding" which may not be amenable to 
being put into an easily used form for straightforward calculation. 
This "phenomenological" understanding is part of the "physica! 
intuition" that guides both the experimental and theoretical 
scientist to pursue a particular direction in their research. This is 
to be contrasted with the more specialized meaning of the term 

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"theory" which 1 wiil refer to as a "formai theory" which means 
formai anaiytical expressions in mathematica! form based on first 
principles as I described in my Prior Affidavit, Experimenta! 
scientists generally do not develop or work on "formal theories" 
since thts requires extensive training in the mathematical 
formalisms. Tiieoretical scientists generally do not perform 
physical experimentation since this requires extensive training in 
tiie experimentaS techniques. As stated above both experimental 
and theoretical scientists use "physical intuition" and develop and 
use their own form of "phenomenoiogical theory" which is their 
physical understanding of a phenomenon which guides them and 
others vi/orking in the field in further research and development. 
The inventors, Bednorz and Mueller, described their physical 
understanding of their discovery in their publications and patent 
application and others used it in iooi^ing for other high Tc 
superconductors. 

22. Section 

Dr. Newns^ second affidavit (attachment 8N) (News New Affidavit) 
addressed the Board's comments at BD page 27. News New Affidavit 
establishes Appellants' proposition that predictability is indicated by the use 
of empirical approaches and intuition in the research and discovery 
methodology of scientists. Moreover, Nev/s New Affidavit clarifies what the 
Schuller article means by "discovery ...based on serendipity" in the research 
and discovery methodology of scientist 

23. Section 

The Board's Decision folloy/ing the statement addressed in the preceding 
section ( "Appellants have not established their proposition that predictability is 
indicated by the use of empirical approaches, intuition, and serendipity in the 



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research and discovery methodology of scientists") in tiie sentence bridging 

pagers 27 and 28 states 

Contrary to this proposition, we regard predictability in 
the context of enablement as involving a reasonable 
expectation of success. See Wright, 999 F.2d at 1564 
("Wright has failed to establish by evidence or arguments 
that .. a skilled scientist would have believed reasonably 
that Wright's success with a particular strain of an avian 
RNA virus could be extrapolated with a reasonable 
expectation of success to other avian RNA viruses"). 

As stated in Appellants' Bnef and Appellant's Replies, above in this paper 
and in the Nevi/ns Second Affidavit there is a reasonable expectation of 
success in making and testing species that come within the scope of 
Appellants' claim for which the Board's Decision has not reversed the 
Examiner s rejection This is unrebutted. Also as stated above numerous 
legal authority state that all species that come within the scope of a claim do 
not have to be foreseen or known in advance to satisfy enablement. 
Appellants have shown that a skilied scientist would have believed 
reasonably that "(Appeliants'3 success with ... particular [high materials in 
ideiitifying them as having the high Tc property] could be extrapolated with a 
reasonable expectation of success to other [materials]." Thus Appeiiants 
have satisfied this statement from In re Wright. Thus the Boards' Decision 
stating to the contrary is legal error. 



24. Section 

The Board's Decision states at BD page 28, line 3 -12; 

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



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Superconductivity", last para.). The absence of such a 
theory supports the Examiner's unpredictability position. 

As noted above in Section 20 the Tota! Finai Rejection and the Examiners 
Ansvver made no comment on the Bednorz Deciaration (Attachment AQ). 

Thus for the first time in the prosecution of the present appSication 
there is a comment and criticism of the Bednorz Declaration (Attachment 
AQ). Appeilants should not re required to respond in a Request for 
Rehearing to comments on, criticisms' of and notations of deficiencies that 
have been made for the first time in the Decisions on Appeal. These 
cominents should have been made by the Examiner in pi-os6culion and to 
the extent that they are being made in the Decision on Appeal, the Board is 
acting as an examiner and not in its appellate capacity. In viev^ there of 
Appellants request that their Request to Reopen Prosecution foe granted. 
Because the Board has introduce arguments comments on, criticisms of 
and notations of deficiencies in the Bednorz Declaration (Attachment AQ) 
.Appellants are compelled to introduce rebuttal comments. Attached to this 
rehearing iS a rebuttal declaration of Dr. Bednorz. It will be designated 
ATTACHEMENT BO. 

. The last sentence from the Board's Decision quoted above states Itjhe 
absence of such a theory supports the Examiner's unpredictability position." 
This conclusion is an error of law^. As stated above in in re Wands 858 F.2d 
731, 742 (Fed. Cir. 1S88); 8 U S.P.Q.2D 1400, 1408 Judge Nevi^man 
concurring in part, dissenting in part stated "[The inventor] must provide 
sufficient data or authority to show that his results are reasonably predictable 
within the scope of the claimed generic invention, based on experiment 
and/or scientific theory. " Thus expenment or theory is sufficient to establish 
predictability. As stated above It is undisputed that the materials that come 
within the scope of Appellants' claims are note difficult to synthesize and 
little familiarity with the chemistry going on is required. Species within the 
scope of Appellants' claims are readily determinable. Appellants take this to 
Appeal No. 2009-003320 Page 74 of 121 Serial No,: 08/479,810 



mean predictable and to be consistent with Judge Newman's statement. 
Aiso as stated above numerous iegal authority states tliat all species that 
come within the scope of a claim do not have to be foreseen or knovi^ in 
advance to satisfy enablement. 



25. Section 

New Declaration of Bectrorz (Attachment BO) 

Paragraph 3 of the Bednorz Second Declaration states: 

I previously submitted a declaration date February 2, 2006. 
(Prior Declaration) 

Paragraph 4 of the Bednorz Second Declaration states; 

In my Prior Declaration t responded to the USPTO response 
dated October 20, 2005 at page 7 which cites the following 
wefopage 

http://www.nobelchannel.com/leamingstydio/introduction.sps7id-2 

95&e!d--0 

Which states 

It is worth noting that there is no accepted theory to 
explain the high-temperature behavior of this type of 
compound. The BCS theory , which has proven to be a 
useful tool in understanding lower-temperature materials, 
does not adequately explain how the Cooper pairs in the 
new compounds hold together at such high temperatures. 
When Bednorz was asked how hsgh-temperature 
superconductivity works, he replied, "if I could te!l you. 
many of the theorists working on the problem would be 
very surprised." 

Paragraph 5 of the Bednorz Second Declaration states: 

! am submitting this affidavit to comment on certain remarks made 
in the Decision on Appeal of the Board of Patent Appeals and 



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Interferences of the United States Patent and Trademark Office 
(Board s Decision) dated 09/17/2009. 



Paragraph 6 of fhe Bednorz Second Declaration stales; 

The Board's Decision states at page 27, lines 3-10, in regards to 

my Prior Affidavit: 

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



Paragraph 7 of the Bednorz Second Declaration stales; 

I respectfuliy disagree that 1 have attempted to "undermine" 
what i was reported to have said in the Exploring 
Superconductivity Articie. 



Paragraph 8 of the Bednorz Second Declaration states; 

in the iast paragraph of my Prior Deciaration i deciared that vi/hat ! 
staled therein vi'as a true statement. ! reaffimi that here. 

Paragraph 9 of the Bednorz Second Declaration stales; 

In my Prior Deciaration t expiain the meaning of the statement 
attributed to me "If I couid tel! you, many of the theorists wor!<ing 
on the probiem would be very surprised" in response to a 



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question from the interviewer about tlie mechanism of High Tc 
superconductivity. 

Paragraph 10 of the Bednorz Second Declaration states; 

It appears from the comment in the Board's Decision quoted in 
paragraph 6 above that it is not clear what the distinction is 
between an experimental scientist and a theoretical scientist is 
and how they think about the research work that they do. 

Paragraph 1 1 of the Bednorz Second Declaration states; 

The statement attributed to me in the Exploring Superconductivity 
Article was to my recollection made between October 1987 and 
December 10 1987, I know it was before December 10, 1987 
since that is when the Nobel Prize Award ceremony took place. 
This was shortly after my co-inventor, Aiex Mueller, and I revealed 
our discovery. 

Paragraph 12 of the Bednorz Second Declaration states; 

Since, as stated in my Prior Deciaration, I am an experimental 
scientist, t would not have stopped my experimental work to work 
on developing a formal mathematical theory To do so would 
have been a professional mistake. It would have required a 
substantial amount of in mathematical techniques that existing 
theoretical scientist were expert in. Moreover, by continuing my 
experimental work 1 was able to make further contributions to my 
experimenta! work. 

Paragraph 13 of the Bednorz Second Declaration states; 

! disagree with the Board's Decision quoted in paragraph 6 above 
where it states "[s]ignificantly, the Bednorz affidavit fails to 
address the article disclosure which states that 'there is no 
accepted theory to explain the high-temperature 
[superconductivity] behavior of this type of compound' CExpioring 



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Superconductivity', last para,). The absence of such a theory 
supports the Examiner's unpredictability position;' 

Paragraph 14 of the Bednorz Second Declaration states: 
It is my position that the statement in the Exploring 
Superconductivity Articie ""there is no accepted theory to explain 
the high-temperature |superconductivity| behavior of this type of 
compound"" as quoted in the Board's Decision is referring to a 
formal mathematicai theory." 

Paragraph 1 5 of the Bednorz Second Declaration states; 

! expressed my physical understanding of the phenomenon that 1 
observed in my initial papers and in my patent appiication. 

Paragraph 16 of the Bednorz Second Declaration states; 

Both experimental and theoretical scientist work by using 
"physical intuition,". 

Paragraph 16 of the Bednorz Second Declaration states; 

"Physical intuition" to an experimental scientist is developed from 
the experimentai techniques and apparatus they use and the data 
that they measure. This is their "empirica! approaches." 

Paragraph 18 of the Bednorz Second Declaration states: 

"Physical intuition" to a theoretical scientist is developed from the 
mathematical and calculation techniques they use (which includes 
numerical calculations on computers), the equations they develop 
and the data that they calculate. This is their empirical 
approaches. . 

Paragraph 19 of the Bednorz Second Declaration states; 
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Both experimental and theoretical scientists are primariiy guided 
by this developed "physica! intuition." 

Paragraph 20 of the Bednorz Second Declaration states: 

A theoretica! scientist does not make random calculations and an 
experimenta! scientist does not make random experiments. Such 
a random approach would not result in useful results. 

Paragraph 21 of the Bednorz Second Declaration stales; 

When a theoretical scientist chooses to go into a particular 
theoretical direction or when an experimental scientist chooses to 
go in a particular experimental direction, that direction is guided 
by "physical intuition" with a reasonable expectation of success in 
carrying out the experiment or calculation and arriving at a 
measured or calculated result 

Paragraph 22 of the Bednorz Second Declaration states; 

Both theoretical and experimental scientists are primarily guided 
by "physical intuition" vi^hich is developed by educationai training 
and the theoretical work or experimental work that they do. 

Paragraph 23 of the Bednorz Second Declaration states: 

\A^en a theoretical or experimental result is achieved, that result 
is systematically explored to develop a fuller theoretical or 
experimental understanding which further develops or enhances 
the scientist "physical intuition." 

Paragraph 24 of the Bednorz Second Declaration states; 

Systematic exploration to a theoretical scientist may for example, 
include varying certain parameters used in a calculation, 
modifying approximate equations used in the calculation or 
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modifying a numerica! computational approach. All of this is done 
with a reasonabie expectation of getting successfuily calculated 
results. 

Paragraph 25 of the Bednorz Second Declaration states: 

Systematic expioration to an experimentai scientist may for 
example include varying certain expehmentai conditions, e.g. 
temperature, time, pressure, mix of constitutes, etc, used in an 
experiment in fabricating samples, modifying measurement 
apparatus to better measure the physical parameters, and 
measuring more and different physical parameters to get a fuller 
set of measured data . All of this done with a reasonable 
expectation of getting successfuliy fabricated samples and 
measured results. 

Paragraph 26 of the Bednorz Second Declaration states; 

In closing i note that the concept of a "theory" as used in solid 
state science or other sciences in the broadest sense refers to the 
^physical intuition" that scientist has about a physical 
phenomenon based on which the scientist forms a 
"phenomenoiogical understanding" which may not be amenable to 
being put into an easily used form for straightforward calculation. 
This "phenomenoiogical" understanding is part of the"physica! 
intuition" that guides both the experimental and theoretical 
scientist to pursue a particular direction in their research. This is 
to be contrasted with the more specialized meaning of the term 
"theory" which 1 will refer to as a "formal theory" which means 
formal analytical expressions in mathematical form based on first 
principles. Experimental scientists generally do not develop or 
work on "formal theories" since this requires exteiisive training in 
the mathematical formalisms. Theoretical scientists generally do 

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not perform physica! experimentation since this requires extensive 
training in the experimentai techniques. As stated above both 
experimenta! and theoretical scientists use "physical intuition" and 
develop and use their own form of 'phenomenoiogical theory" 
which is their physical understanding of a phenomenon which 
guides them and others working in the fieid in further research 
and development. My co-inventor. Alex Mueiier, and ! described 
our physical understanding of our discovery in our pubiications 
and patent application and others used it as a guide in looking for 
other high Tc superconductors. 



26. Section 

The Board's Decision states at BD page 28, line 13-23: states: 

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

For the reasons given in Appellants' Brief. Appellants' Replies and 
in the Newns Second Affidavit, the Bednorz Second Declaration the 
Schuller articie and the "Exploring Superconductivity" article when 
properly viev^^ed from the point of viev^^ of a person of ordinary skill in that 
art do not support the Board's position that the high temperature 
superconductor art is unpredictable (in the patent law meaning) but 
support Appellants' position that the high temperature superconductor 
art is determinable . Thus the position of the Board's Decision "that the 



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high temperature superconductor art is unpredictable" is an error law 
and an error of fact,. 

In addition the above quoted passage from the Board's Decision 
states '[tjhis position also is supported by the above-noted dtsciosure in 
Appellants' Specification of compounds or compositions which fal! within the 
compound and composition formulae of the appealed claims but which 
nevertheless faiS to exhibit high temperature superconductivity." As noted 
above this statement is based on an error of fact. As stated above in the 
last paragraph of Section 5, the sections of the Examiner's Answer referred 
to by the Board's Decision in the paragraph at BD page1 , lines 8-12, above 
refers to at most two materials that are not superconductors, one of which is 
a previously know material that is metallic. Thus the Examiner's Answer 
does not show that Appellant's Specification discloses numerous 
compounds or compositions which fail within the compositional definitions of 
the rejected claims" as stated by the Board s Decision quoted above. 
Appellants do not believe two is numerous. 

!n addition the above quoted passage from the Board's Decision 
states "Appellants' arguments and evidence in support of their opposing 
View are deficient for the reasons detailed earlier. Based on the record 
before us, therefore, we agree with the Examiner that the art of high 
temperature superconductivity is unpredictable." For the reasoiis given 
above Appellants disagree that their evidence is deficient. For the reasons 
given above the statement "the art of high temperature supercoiiductivity is 
unpredictable" is an error of fact and law. 

27. Section 

The paragraph bridging pages 28 and 29 of the Board's Decision states: 

This unpredictability supports a prima facie case of non- 
enablement. The scope of the claims in this subsection 
also supports prima facie non-enablement. While 

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Appeiiants' Specification provides reasonable guidance 
for the mixed transition meta! oxides discussed 
previousiy, there is insufficient if any guidance in the 
Specification for the other materiais embraced by the 
claims under review as correctiy indicated by the 
Examiner (see Ans. 23-24). For example, the 
Specification provides 23 pages of disciosure concerning 
these mixed transition metai oxides and their constituent 
elements (i.e., transition metais, rare earth and rare 
earth-iike eiements, and aikaiine earths) but does not 
provide any disciosure at ail of making high temperature 
superconductors from any other specificaily identified 
elements See Genentech, 108 F. 3d at 1366 ("[W]hen 
there is no disclosure of any specific starting materia! or 
any of the conditions under which a process can be 
carried out, undue experimentation is required"). Under 
these circumstances, we are unconvinced by Appellants' 
argument that the Examiner has failed to establish a 
prima facie case of non- enablement for the ciasms 
discussed in this subsection. 



As stated above it is Appellants position that the Board's conclusion on 
unpredictability is an error of law and an error of fact. Thus it is 
Appellants position that the conclusion in the passage quoted above that 
"[tjhis unpredictability supports a prima facie case of non-enablement." is 
an error of law. Thus it is also Appellants position that the conclusion in 
the passage quoted above that "[t[he scope of the ciaiins in this 
subsection also supports prima facie non-enablement" is an error of lavv*. 
As stated throughout the prosecution of this application (including in BV 
and RB) aiid in this paper there is no evidence that anything more is 
needed thatn what is taught in Appellants' Specification to make an test 
species that come within the scope of Appellants' claims for which the 
Boards' Decision has not reversed the Examiners rejections. This is 
unrebutted !t is also unrebutted that the legal authority cited by 
Appellants hoid that all species that come within the scope of Appellants' 
claims do not have to be known in advance. 



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!t is Appellants position that the foiiowing statement from the passage 
quoted above "[w]hi!e AppeiSants' Specification provides reasonabie 
guidance for the mixed transition metal oxides discussed previously, 
there is insufficient if any guidance in the Specification for the other 
materials embraced by the claims under review as correctly indicated by 
the Examiner (see Ans. 23-24).' Appeiiants disagree, tnitiaiiy the oniy 
stement from the Examiner's Answer at 23-24 relevant to this comment 
is '[wjhat is not a 'matter of routine experimentation' in this complex, 
unpredictable art is arriving at superconductive compositions outside the 
scope of the allov^/'able claims." There is no evidence in the record that 
workers in the field made many unsuccessful attempts at making 
species Vv'ith in the scope of the claims for Vv'hich the board's Decision 
has not reversed the Examiner's rejections, it is undisputed that the 
materials that come within the scope of Appellants' claims are note 
difficult to synthesize and little familiahty with the chemistry going on is 
required. Thus the ExaiTiiner's statement from the Examiners Answer iS 
not supported by any facts and the Board's reliance on it in the Board's 
Decision is an error of law. There is no evidence in the record that a 
person of ordinary skili in the art has to engage in undue 
experimentation to make and test species for the high temperature 
superconductor property within the scope of the claim for which the 
Board Decision has not reversed the Examiner's rejections. Every one 
of these claims includes within their scope species made and tested by 
Appellants and reported on in their Specification. The Subsection Hi 
materials that the Board's Decision has stated are not enabled includes 
species that come within the scope of these claims In re Wands 
supports Appellants position. In re Wands states '[ejnabiement is not 
precluded by the necessity for some experimentation such as routine 
screening" lnj5LWancls,..85^^^^^^^^^ All that is 

involved in finding species not explicitly descnbed in Appellants' 
specification is making them by routine methods and testing them by 

Appea! No. 2009-003320 Page 84 of 121 Serial No,: 08/479,810 



routine methods ~ this is routine screening that !n re Wands states is 

sufficient to support enablement. In re Wands further states quoting 

from Ex parte Jackson: 

The determination of what constitutes undue experimentation in a 
given case requires the application of a standard of 
reasonableness, having due regard for the nature of the invention 
and the state of the art. Ansul Co. v. Uniroyai, inc. [448 F.2d 872, 
878-79; 169 USPQ 759. 762-63 (2d Cir. 1971), cert denied. 404 
U.S. 1018, 30 L. Ed. 2d 666, 92 S. Ct. 680 (1972)]. The test is not 
merely quantitative, since a considerable amount of 
experimentation is permissible, if it is merely routine, or if the 
specification in question provides a reasonable amount of 
guidance with respect to the direction in which the 
expenmentation should proceed 

\n re Wards, 858 F.2d 731, 737 (Fed. Cir 1988) 

This quote from In re Wands includes the following quotation from Ek parte 
Jackson "[t]he test is not merely quantitative, since a considerable amount 
of experimentation is permissible, if it is merely routine, or if the 
specification in question provides a reasonable amount of guidance with 
respect to the direction in which the experimentation should proceed." 
(Emphasis added.) It is undisputed in the present appeal that the 
experimentation to determine other species of high To materials within the 
scope of the claims is what was know prior to Appellants' earliest filing date 
which is thus routine. Thus following In re Wands a considerable amount of 
this type of experimentation is pennissibie. Appellants note that the 
passage quoted above from In re Wands states that a "considerable 
amount" of Toutine" expenmentation or "reasonable guidance_with respect 
to the direction in which the experimentation should proceed" is needed to 
satisfy enablement but not both routine experimentation and reasonable 
guidance is needed 

The paragraph quoted above from the Board's Decision states 
"Appellants' Specification provides reasonable guidance for the inixed 
transition meta! oxides discussed previously, there is insufficient if any 
guidance in the Specification for the other materials embraced by the claims 
Appeal No. 2009-003320 Page 85 of 121 Serial No,: 08/479,810 



under review .... For exampie, the Specification provides 23 pages of 
disclosure concerning these mixed transition metal oxides and ti^eir 
constituent elements." As stated above these 23 pages contain species 
within the scope of the claims for which the Board's Decision had not 
revered the Examiner's rejections. As In re Wands states guidance of the 
type the Board's Decision appears to state is necessary is in fact not 
necessary since the experimentation required is oniy routine. This stement 
of the Board's Decision that it is necessary is an error of iaw. !t is also in 
conflict with the many decisions (legal authority) cited in Appellants" Brief 
and Appellants' Repiies that ail species do not have to be know in advance 
and is thus an error of law. 

The paragraph quoted above from the Board's Decision states in regard 
to the 23 pages of ' disciosure concerning these mixed transition metal 
oxides and their constituent elements (i.e., transition metais, rare earth and 
rare earth-iike elements, and aikaiine earths) but does no! provide any 
disclosure at ali of making high temperature superconductors from any other 
specifically identified elements. See Genentech, 108 F,3d at 1366 ("[VVIhen 
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")." As pointed out above in Genentech there 
was no enabled species at ali that came within the scope of the claim being 
reviewed for enablement. The passage quoted by the Board's Decision 
from Genentech is directed to this situation, that is there is a total faiiure to 
enable anything which came within the scope of the Genentech claim. 
That is not the situation here. Every claim for which the Board's Decision 
did not reverse the Examiner's rejection includes within its scope enabled 
species (either found enabled by the Examiner or by the Board's 
Decision.). The Board is applying Genentech in a way not intended by this 
decision. Therefore, the manner in which the Board's Decision is applying 
Genentech against Appellants' claims is legal error. What the Board's 
Decision is stating, if not explicitly, at least implicitly, is that even though a 

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ciaim, such as c!aim 12 (or any of the other ciaims for which the Board's 
Decision did not reverse the Examiner's rejection,) includes within its 
scope what the Board's Decision has found enabled subject mater, subject 
matter outside of that range within this ciaim, is not enabled because "there 
is no disclosure of any specific starting material or any of the conditions 
under which a process can be carried out." Wnat the Board's Decision is 
stating here is that all species that come within the scope of such a ciaims 
must be known in advance. How eise wouid one know what the starting 
materia! wouid be except if you know what the species is in advance. This 
is in conflict with the legai authority cited by Appellant that states such 
species do not have to be known in advance. Enablement does not require 
inventors to predict or foresee "every conceivable and possible future 
embodiment of [their] invention" at the time the application is filed, as stated 
in Rexnord Corp. v. Lai tram Corp (Supra). This is only one decision 
supporting this proposition. Thus the application of Genentech in the 
Board's Decision is legal error. In the passage quoted by the Board's 
Decision from Genentech the conclusion "undue experimentation is 
required" again applies when there is no species that comes within the 
scope of the claim that isunder review. What Genentech is saying is if there 
is no species that is enabled that comes within the scope of the claim under 
review, there is merely a concept disclosed of what is being asserted as a 
"new, useful and not obvious" iiiveiition, but there is not disclosure of how to 
make and use it as required under 35 USC 112, first paragraph.. This 
means that undue experimentation is needed to figure out an enabled 
embodiment which is how to make and usethe claim under review. In 
contradistinction, when there is taught in the specification enabled species 
that come within the scope of the claim, other embodiments that are made 
and used in the same way are enabled if they can be determined without 
undue experimentation. 

Thus the conclusion in the paragraph quoted above form the Board' 
Decision "[u]nder these circumstances, we are unconvinced by Appellants' 

Appeal No. 2009-003320 Page 87 of 121 Serial No,: 08/479,810 



argument thai the Examiner has failed to establish a prima facie case of 
non- enablement for the claims discussed in this subsection" is an error of 
law. The Board's Decision does not make a prima facie case of lack of 
enablement since it does not cite any evidence that persons of ordinary skill 
in the art had or have any difficulty making such species. 



28. Section 

The paragraph bridging pages 29 and 30 of the Board's Decision states; 

As rebuttal to a prima facie case of non-enablement, 
Appellants argue that they "have shown extensive evidence 
that persons of skill in the art can determine species within 
the scope of [the claims in this subsection] without undue 
experimentation" (App. Br., vol. 3, p. 35; see generally App. 
Br., vol 3, pts. 1-8). These arguments and evidence are 
unpersuasive for two fundamental reasons. First, they do not 
carry Appellants' burden of showing enablement with respect 
to "the full scope of the claimed invention" as defined by the 
claims under consideration. Wright, 999 F.2d at 1561. 
Second, Appellants' arguments and evidence that these 
claims are enabled inappropriately rely on the knowledge 
and skill of the artisan, whereas "[ijt is the Specification, not 
the knowledge of one skilled in the art, that must supply the 
novel aspect"s of an invention in order to constitute adequate 
enablement". Genentech, 108 F.3d at 1366. The follovv'ing 
discussion is a more detailed exposition of the deficiencies of 
Appellants' arguments and evidence. 



Appellants disagree with the statement that they have not carried their 

"burden of showing enablement with respect to 'the full scope of the claimed 
invention' as defined by the claims under consideration." initially Appellants 
do not agree that the burden has shifted to them 
BV1 page 102. lines 7-15 state 

in re Angsladt further slates at 190 USPQ 219; 



We note that the PTO has the burden of giving reasons, 
supported by the record as a whole, why the specification is 
not enabling. In re Armbruster, 512 F.2d 676. 185 USPQ 152 



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(CCPA 1975), Showing that the disciosure entaiis undue 
experimentation is part of the PTO's initia! burden under 
Armbruster; this court has never held that evidence of the 
necessity for any experimentation, however slight, is sufficient 
to require the applicant to prove that the type and amount of 
experimentation needed is not undue. 

Appeiiants do not beiieve that the burden has shifted to them since the 

Board's Decision has not shown that persons of ordinary skiii in the art 

cannot make species that come within the fuSI scope of the ciaim for vMch 

the board has not reversed the Examiner's rejections and Appellants are not 

required to know in advance al! species that come within the scope of their 

claims. Even if the burden has shifted to Appellants, Appellants evidence 

shows that persons of skiii in the art can make and test the species that 

come within the scope of their claims using only what is disclosed in their 

specification. Appellants do not have to know at the time of filing their 

application all species that come within the scope of their claims when they 

can be determined without undue extermination as is the case here. 

Appellants note that in the passage quoted above the Boards" 

Decision states "Appellants' burden of showing enabieiment with respect to 

1he full scope of the claimed invention' as defined by the claims under 

consideration. Wright, 99S F.2d at 1561." As stated above \n In re Wright 

there was a single embodiment and there Vv'as evidence that years after the 

Wright application was filed there was difficulty practicing the invention. 

There is no such evidence in the present application. The full text 

containing the language "the full scope of the claimed invention" is 

Although not explicitly stated in section 112 to be enabling, the 
specification of a patent must teach those skilled in the art how 
to make and use the full scope of the claimed invention without 
"undue expehmentation," Vaeck, 947 F 2d at 495, 20 USPQ2d 
at 1444; Wands. 858 F 2d at 736-37. 8 USPQ2d at 1404; !n re 
Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 {CCPA 1970) (the 
first paragraph of section 112 requires that the scope of 
protection sought in a claiin bear a reasonable correlation to the 
scope of enablement provided by the specification). Nothing 
more than objective enablement is required, and therefore it is 

Appeal No. 2009-003320 Page 89 of 121 Serial No,: 08/479,810 



irreievant whether this teaching is provided through broad 
terminoiogy or iiiustrative exampies. in re Marzocchi. 439 F.2d 
220, 223, 169 USPQ 367, 369 (CCPA 1971). 

in re Wri g hi. 999 F.2d 1557, 1561 (Fed, Cir. 1933^ 

As stated many times species can be made and tested by known methods. 
Thus oniy routine screening is snvoived and thus there is no undue 
experimentation invoived to practice the fuii scope of the claimed inventtoh. 
Appellants have used objective enablement based on "broad terminology or 
illustrative examples.' "[njothing more... is required' 

Appellants disagree with this statement from the passage quoted 
above that 

Appellants' arguments and evidence that these claims are 
enabled inappropriately rely on the knowledge and skill of the 
artisan, whereas "[i]t is the Specification, not the knowledge of 
one skilled in the art, that must supply the novel aspects of an 
invention in order to constitute adequate enablement". 
Genentech, 1 08 F 3d at 1 366. 

Appellants disagree that they rely for enablement on "the knowledge and 
skill of the artisan." Appellants' Specification teaches method of making 
and testing species. \t is unrebutted that those methods can be used to 
make a test species that come within the scope of the claims for which the 
Board's Decision had not reverse the Examiner's rejection and wherein the 
superconducting element fails outside of the Subsection H Materials, Thus 
Appellants' are not relying on the knowledge of the skill in the art as 
suggested by the Board's Decision. The Board's Decision relies on this 
stement from Genentech "[s|t is the Specification, not the knowledge of one 
skilled in the art, that must supply the novel aspects of an invention in order 
to constitute adequate enablement". As stated above this applies to the 
situation where there is no enabled species that comes within the scope of 
the claim under review. That is, a patent application cannot be directed to 
a "novel" concept only relying on persons of skill in the art knowing how to 



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impiement the "noveP' concept of the ciaimed invention. That is not the 
case for the daims under appeal, inciuding the Subsection \\\ daims, in the 
present application. As stated above every c!aim un6er appeal include 
within their scope species found enabled by the Examiner or the Board's 
Decision, For example, if a claim has two elements A and B where A is old 
and B is new or novel, it is necessary for the patent application to describe 
how to make B. The patent application cannot rely on what iS known to a 
person of skill in the art to make 8 but can rely on what is know to a person 
of skill in the art to make A. in the present application some of the 
superconducting elements will be made of old materials. Only routine (old) 
testing needs to be done to screen for them or to determine if they have the 
desired superconducting property. Others will have to be made by the (old) 
known principles and tested by the old routine testing described in 
Appellants' Specification to determine if they have the high temperature 
superconducting property. This analysis is supported by Genentech which 
states 

a specification need not disclose what is well known in the 
art. See, e.g.. Hybritech inc. v. Monocional Antibodies. Inc., 
802 F.2d 1367, 1385, 231 U.S P.Q. (BNA) 81, 94 (Fed. Cir 
1986). However, that general, oft-repeated statement is 
merely a rule of supplementation, not a substitute for a basic 
enabling disclosure. 

Genentech. Inc. v^NoyoNordLsk AJSJOB F.3d 136t 1366 
(Fed Cir. 1997) 



The novel aspect of the present invention is not the method of making the 
materials, not the method of testing the materials and not the materials. 
The novel aspect is having a Tc greater than or equal to 26 K. For 
example, the Schuller article refers to MgB2 which was made more than 30 
years before Appellants' discovery. It just had to be tested by methods 
known since 1911. 



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Appeiiants note that the Board's Decision reiies on the statement "[ijt is 
the Specification, not the knowiedge of one skiSied in the art, that must 
supply the novel aspects of an invention in order to constitute adequate 
enablement". Genentech, 108 F.3d at 1366, but does not identify vvhat the 
Board considers to be the novel aspect, it is not possible for Appellant to 
respond without knowing what the Board considers to be the nove! aspect. 
Appellants request that the Board grant Appellants' request to reopen 
prosecution and state what the Board considers the novel aspect to be. 



29. Section 

The Board Decision at page 30, line 6-13. are directed to the 
"Examiner's first enabiement Statement." BD page 30. lines 6—1 3 states 



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



As stated above Appellants note the Board's Decision does not identify what 

the Board considers the novel aspect of Appellants' invention to be. Thus 

Appellants cannot adequately respond to the board's comments and in view 

thereof as requested above Appellants request the Prosecution be 

reopened. The CAFC clarified Genentech stating; 

Our ruling in Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 
1361 (Fed. Cir. 1997), is not to the contrary. Although extrinsic 
evidence cannot be used to supplement a non-enabling 
specification, such evidence can shed light on whether the 
specification is itself enabling. 

Appeal No. 2009-003320 Page 92 of 121 Serial No,: 08/479,810 



(Fed, Cir, 2007) 

Thus extrinsic evidence can be used to show that the specification is 
enabling. The extensive evidence Appellants have submitted in the 

prosecution of their application is Just for this purpose, that is to shovi^ that a 
very large variety of materials can be made by the methods described in 
their Specification, This is unrebutted. This extensive evidence has not 
been used to supply missing information necessary to made the "novel" 
aspect. 

The passage quoted above from the Board's Decision states "the 
claims under review are not limited to ceramic compositions (i.e., 
compositions which can be made using known principles of ceramic 
fabrication)," Appellants respectfully disagree. The following claims recite 
that the high Tc element of the claims from which these claims depend "can 
be made according to known principles of ceramic science" or similar 
recitation: dependent claims 322 to 360, 414 to 427, 436, 453 to 465, 473 to 
475, and 484 to 491 and independent claim 522. Of these claims the 
following are allowed by the Examiner; 330. 335. 336, 346 and 368, Most of 
the dependent claims are in multiple dependent form. The Board s 
Decisions reversed the Examiners rejection of parts of the these multiple 
dependent claims. Others remain with the Examiner's rejections not 
reversed. 

In addition, 

• independent claims 59 is directed to ''ajerami^c^J^|ke^^^mater|a|;° and 

• independent claim 374 is directed to "a materia! compnsmg a 
ceramic characteristic. 



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Dependent claim 351 depends from claim 59 and states that the "ceramic 
like materiar' "can be made according to known principtes of ceramic 
science." 

Dependent ciaim 419 depends from claim 374 and states that the "the 
material comprising a ceramic characteristic " ' can be made according 
to^^known^^^^^j3r|nc^|j3|es^Qf 

Some of these claims are listed foeiow. 



Appea! No. 2009-003320 



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Appeiiants note that at this web address of the Nobel Prize website 
Iittp://nobeipnz6.orq/nobel prize5/phv5ics/iSL.feaie5/1987/ 
the foiiovving announcement of Appeiiants award of the 1987 Nobei Prize 
can be found. 




The Nobel Prize m Physics 1987 

This states that the 1987 Nobel Prize was awarded to Appellants "for their 
important break-through in the discovery of superconductivity in ceramic 
material." The Board's Decision does not find enabled a ciaim 
commensurate in scope with the confribution for which they were awarded 
the Nobel Prize. 




Appeal No. 2009-003320 



Page 95 of 121 Serial No,: 08/479,810 



CLAIM 59 A combination, comprised of: 



a ceramtc-ttke materia! having an onset of superconductivity at an onset 
temperature greater than or equal to 26°K, 

means for passing a superconducting electrical current tfirougfi said 
ceramic-iike materia! whiie said material is maintained at a temperature 
greater than or equai to 26°K and iess than said onset temperature, and 

means for cooling said superconducting ceramtc-iti^e materia! to a 
superconductive state at a temperature greater than or equal to 26° K and 
less than said onset temperature, said materia! being superconductive at 
temperatures below said onset temperature and a ceramic at temperatures 
above said onset temperature, 

CLAiM 351 A combination accordmg to claim 59, wherein said 
ceramic-like materiai can be made according to known principles of 
ceramic science. 

♦ 

CLAIM 374 A combination, comprised of: 

a„m,aterialj,om|?risi,n,a,j„^^ comprising an onset of 

superconductivity at an onset temperature greater than or equai to 26°K, 

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



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means for cooling said superconducting materia! having a ceramic 
characteristic to a superconductive state at a temperature greater than or 
equai to 26°K and less than said onset temperature, said material being 
superconductive at temperatures beiow said onset temperature ar)d a 
ceramic at temperatures above said onset temperature. 

CLAiM 41 9 A combination according to ciaim 374^ wherein sa|d^ma|eriai 
can be made by 

♦ 

CLAIM 622 An apparatus comprising: 

a superconductive current carrying element comprising a To greater than or 
equa! to 26 °K 

said superconductive current carrying element comprises a 
composition^ Jhat^can^^^be^^^made^^^^^ 
ceramic science . 

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

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

30. Section 

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The Boards' Denison at page 30, lines 14-23 is directed to the 
Examiner's Second Enablement Statement. The Boards Decision state at 
page SOJines 20-23 

Contrary to Appellants' presumption, a reference such as the 
Asahi Shibum article need not be enabled in order to qualify as 
prior art for the purpose of determining obviousness under § 
103. Symbol Techs.. Inc. v. Gpticom. Inc.. S35 F.2d 1569, 1578 
(Fed, Cir. 1991). 

Appeliants do not disagree with this statement since it is consistent with 
what Appeliants stated. For the Asahi Shibum article to render Appellants' 
claims obvious even if it is not enabling itself a person of oi"dinary skill in the 
art must be abie to practice the invention that is considered obvious. The 
missing information must come from some where else such as other 
documents or from what is know to a person of skill in the art. The 
Examiner rejected the claim over the Asahi Shibum Article alone. Thus it 
was and still is the Examiner's view that nothing more than knowing that a 
material was discovered having the high Tc property was sufficient for a 
person of skiil in the art to practice Appeliaiits' claimed invention to their full 
scope. The Boards Decision agrees with Appellants. Once the 
"novelaspecf - the high Tc property - was disclosed every person of skill in 
the art knew how to make more of them. Thus the Board s Decision agrees 
with Appellants that how to make and test species was sufficient to find ail 
other high Tc materials, without providing more information than is 
contained in Appellants' Specification. This is what Appellant said at BV1 
page 1 58, first sentence of the last paragraph 'Thus in the Office Action of 
7-30-98, the Examiner is effectively stating that everything within Applicants' 
non-allowed claims rejected under 35 USC 103 over the Asahi Shinbum 
article alone can be practiced by a person of skill in the art with what is 
taught in the Asahi Shinbum article in combination with what is known to a 
person of skill in the art. ' Something which is obvious cannot be not 
enabled at the same time The Board's Decision agrees with this. The 
Appeal No. 2009-003320 Page 98 of 121 Serial No,: 08/479,810 



United States Supreme Court agrees with this in Loom v Higgins. See BV1 
page 238. 

31. Section 

The Board's Decision in the paragraph bridging pages 30 and 
31 ts directed to the Examiner's Third Enabiement Statement. Appellants 
disagree with the Board's statement that they see no merit in this argument. 
The Schulier Article refers to MgBa which was made more than 30 years 
prior to Appellants' discovery, its high Tc property is inherent. . There is 
nothing novel about making it ant testing it Thus persons or ordinary sl<i!l in 
that art are enabled to mai<e and test it. From the Shuiier article it was 
found to have the high Tc property motivated by Appellants discovery, it 
has a layered structure, an attribute taught by AppelSants' specification. 
This is similar to the reasons identified under the Examiner's Third 
Enablement Statement that Appellant was denied claims to the chemical 
compositions disclosed in their Specification that is they were enabled by 
prior art structures identified by the Examiner. 



32. Section 

The Boards' Decision at page 31 , lines 9 to page 32 line 2, is directed to the 
Fourth Enabiement Statement. BD paragraph bridging pages 31 and 32 
states in regards to the Examiner's Fourth Enablement Statement. 

We do not agree with Appellants that the Examiner's 
statement constitutes the above-quoted acknovviedgement. 
Further, vv'e do not agree with Appellants that the mere 
capability to make and test compositions encompassed by the 
claims under review satisfies the enablement requirement. 
Rather, enablement requires the Specification to teach those 
skilled in the art how to make and use the fuli scope of the 
claimed invention without undue experimentation wherein it is 
the Specification, not the knowledge of one skilled in the art, 
that must supply the novel aspects of an invention in order to 
constitute adequate enablement. Genentech. 108 F.3d at 
1365-1366. 



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Appeiiants disagree with this statement. Appeiiants respectfuiiy summit it is 
an error of law. The Examiners Fourth Enablement Statement 
acknowledges that persons of skii! in the art know how to control the 
materials they fabricate through their acknowiedged high level of skiil to, as 
stated in the Schulier Enablemetn Statement, systematically fabricate and 
test materials to determine without undue experimentation whether they 
have the desires high Tc property. According to the CAFC in !n re Wands 
(BV1 pages 125-128), the CCPA in in re Angstadl (BV1 pages 76-80), and 
the United States Supreme Court in Mineral Separation v. Hyde(BV1 pages 
228-237) the routine screening satisfies the enablement requirement. This 
is the controlling precedent. As stated above the manner in which the 
Board's Decision is applying Genentech is an error of law. As stated above 
the Board's Decision does not identify what it considers to be the "nove! 
aspecf of Appeiiants claims. Appellants therefore cannot properly respond 
to this comment. Appeiiants are not reiying on knowledge of persons of skili 
in the art for the novel aspect (as defined above by Appeiiants) of their 
invention and as stated above there is no evidence that undue 
experimentation is needed to practice the full scoop of their claims 

33. Section 

The Board's Decision at BD page 32, lines 5-1 1 , comments on 
the Pool 1988 Enablement Statement. (BV3 pages 6-8). The Poole 1988 
Enablement statement is independent corroboration of the truth of the 
teaching of Appellants' Specification. The implication of Board's Decision is 
that Appellant is relying on Poole 1988 to supply novel aspect of Appellants' 
claimed invention. This is an error of fact. Since the Board's Decision does 
not define what it means by this, the Board s Decision is inconclusive. It is 
Appellants' position that the statement of the Board' Decision "[as] 
explained earlier, the capability of an artisan to fabricate such materials is 
by itself inadequate to establish enablement" is for the reasons given above 
an error or law. This stateiment iimplicitly requires the all species that come 

Appeal No. 2009-003320 Page 100 of 121 Seria! Na; 08/479,810 



within the scope of a ciaim must be known in advance for a claim to be 
enabled. This is an error of iavv. Appellants have cited numerous decisions 
(legal authority) that clearly state that ail species that come v^ithin the scope 
of a claim doe not have to be foreseen to satisfy enablement. If is 
Appellants' position that the statement of the Board's Decision 'this 
capability relates to the knov/ledge and skili of an artisan rather than to the 
requirement that a Specification suppiy the novel aspects of a claimed 
invention in order to provide enablement. Genentech, 108 F.3d at 1366' As 
applied in the Board's Decision Is an error or iavv Again the Board's 
Decision does not define what it means as the "novei aspect" of Appellants' 
claimed invention. Thus this stement is an error of fact, inconclusive, and 
an error of law. 



34. Section 

The Board's Decision at BD page 32, lines 12 to page 33, line 
3-1 1 , comments on the Pool 1 995 Enablement Statement and the Pooie 
1996 Enablement Statement Enablement Statement (BV3 pages 6-8) 
which states: 



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



Appeal No. 2009-003320 



Page 101 of 121 Serial Na; 08/479,810 



supply the novel aspects of an invention in order to constitute 
enablement. Genentech, 108 F.3d at 1366. 

In the paragraph quoted above tiie Board's Decision states lw|e do not see 
and Appellants do not explain why enablement is evidenced by the fact that 
the same characteristics are exhibited by superconductors known in the 
prior art and the superconductors discovered by Appellants. " Appellants 
have not provided the referenced explanation since this has never been 
made an issue in the prosecution of this application. For the first time this 
is being raised in the Board's Decision. Appellant should not be required to 
respond to such a question in a Request for Reheanng. Appellants request 
that the Request to Reopen Prosecution be granted so that new factual 
inquiries and questions such as these can be properly responded to during 
prosecution. Enablement is evidenced by the fact that the same, similar or 
related charactehstics are exhibited by superconductors known in the prior 
art and the superconductors discovered by Appellants because this shows 
that the behavior of the materials either superconductive or not 
superconductive are understood and their behavior is thus predictable and 
determinable. This is vv^hat establishes or evidences enablement. This 
also evinces or established how species are selected to make and test for 
the desired high Tc property. The quoted passage above again quotes "[ijn 
any event, we again remind Appellants that it is the Specification, not the 
knowledge of one skilled in the art, that must supply the novel aspects of an 
invention in order to constitute enablement. Genentech, 108 F.3d at 1366. 
The full citation from Genentech is 



the omission of minor detaiis does not cause a specification to 
faii to meet the enablement requirement. However, when there 
is no disclosure of any specific starting materia! or of any of the 
conditions under which a process can be carried out, undue 
experimentation is required; there is a failure to meet the 
enablement requirement that cannot be rectified by asserting 



Appeal No. 2009-003320 



Page 102 of 121 Serial Na; 08/479.810 



that a!i the disciosure reiated to the process is within the skiii of 
the art. It is the specification, not the knowledge of one skiiied in 
the art, that must supply the nove! aspects of an invention in 
order to constitute adequate enabiement This specification 
provides only a starting point, a direction for further research. 



Genentech. Inc. v. Novo Nordisk A/S, 108 F.3d 1361. 1368 

The Board's Decision repeatediy quotes the same passage leaving out 
'when there is no disclosure of any specific starting material or of any of the 
conditions under which a process can be carried out, undue 
experimentation is required." Genentech does not state that this 
disclosure in the specification is required for every species that could come 
within the scope of the claim in order to establish enablement. This is the 
way the Board's Decision is applying this language. This is legal error. . !n 
Genentech there was no species that came within the scope of the claim 
under review that satisfied this language. As stated above for every ciaim 
for which the Board's Decision has not reversed the Examiners rejection 
there is disclosure of specific starting materials and of the conditions under 
which a process can be carried out. Other species are determined by 
routine methods. Thus there is no undue experimentation required." 



35. Section 

The Board's Decision at BD page 33, iines 4-9, comments on 
the Schuiler Enablement Statement {BV3 pages 8-9) and the Pooie 1996 
Enablement Statement Enablement Statement which states; 



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



Appeal No. 2009-003320 



Page 103 of 121 Serial Na; 08/479,810 



reasons, Schufler's disclosure fails to evince enabiement for 
the claims in this subsection. 



As staled above Appeilants submitted the Affidavit of Newns (Brief 
Attachment AP) to comment on the Schuller Article, the Examiner made no 
comments on he Affidavit of Newns (Brief Attachment AP). Specifically the 
Examiner did not state "Schulier's disciosure fails to evince enablement" for 
any of the claims This new reason for rejection Is being made for the first 
time in the Board's Decision. Appellants request that the Board grant 
Appeilants' Request to Reopen prosecution so that Appellants m\\ have the 
proper opportunity to respond in prosecution and so that they wili not be 
require to respond to this new argument for the first time in a Request for 
Rehearing. Appellants have submitted fierewith the Second Affidavit of 
Newns to explain Intuition" as described above, 

30. Sectfon 

The Board's Decision at BD page 33, line 10 to page 34. iine 3, 
comments on Appellants additionally relying on the affidavits of record by 
Mitzi, Dinger, Tsuei, Shaw, Duncombe, Newns, and Bednorz (See App Br., 
vol. 5, Evidence Appendix, Attachments AH to AR). BD page 33, line 13 to 
page 34, lineS, states: 

The Newns and Bednorz affidavits do not support Appellants' 
enabiement position for the same previously-given reasons 
that they do not support Appellants' predictability position. The 
remaining affidavits share common deficiencies. The Shaw 
affidavit (App. Br., vol, 5, Evidence Appendix, Attachment AM) 
is illustrative, in this affidavit, Shaw states that persons of 
ordinary skiil in this art are capable of fabricating ceramic 
materials exhibiting high temperature superconductivity by 
using principles of ceramic fabrication known in the prior art 
(see e.g., paras. 8, 11 , 49. 50). Such statements do not evince 
enablement for reasons explained earlier. That is. all the 
claims under consideration are not limited to high temperature 
superconductive ceramic materials. Moreover, it is the 
Specification, not the knowledge of one skilled in the art, that 
must supply the novel aspects of an invention in order to 



Appeal No. 2009-003320 



Page 104 of 121 Seria! No.; 08/479.810 



constitute adequate enablement Genentech, 108 F.3d at 
1 366. The affidavits reiied upon by Appeiiants do not explain 
how the Specification supplies novel aspects of Appeiiants' 
invention to thereby enable the full scope of the claims under 
consideration. 

As stated above the Examiner during prosecution, in the totaS FinaS 
Action, or the Examiners Answer made no comment the Affidavits of 
Tsui, Dinger and Shaw (Brief Attachments AM. AN and AO) or on the 
Affidavit of Newns (Brief Attachment AP) of on the Declaration of 
Bednorz (Brief Attachment AQ). . The passage quoted above from the 
Board's Decision states: "[t]he Newns and Bednorz affidavits do not 
support Appellants' enablement position for the same previously-given 
reasons that they do not support Appeiiants' predictability position." 
Appeiiants disagree for the same reasons given in response to the 
new reasons given in the Board's predictability position. This 
comment \s made for the first time in the prosecution of this 
application in the Board's Decision. The Examiner made no comment 
at ali on these affidavits. Appellant request that thesr Request to 
Reopen Prosecution be granted, so that they can properly respond to 
these comments in prosecution. Appeiiants should not be required for 
the first time to respond to such comments in a Request for 
Rehearing. The passage quoted above states "[t]he remaining 
affidavits share common deficiencies. The Shavv* affidavit .. is 
iilustrative. in this affidavit, Shaw states that persons of ordinary skill in 
this art are capable of fabricating ceramic materials exhibiting high 
temperature superconductivity by using principles of ceramic 
fabrication known in the prior art . .Such statements do not evince 
enablement for reasons explained earlier. That is, all the claims under 
consideration are not limited to high temperature superconductive 
ceramic materials." This comment is made for the first time in the 
prosecution of this application in the Board's Decision. The Examiner 
made no comment at all on these affidavits. Appeiiants request that 

Appeal No. 2009-003320 Page 1 05 of1 21 Serial No. ; 08/479,81 0 



their Request to Reopen Prosecution be granted so that they can 
properiy respond to these comments in prosecution. Appellants 
should not be required for the firs time to respond to such comments 
in a Request for Rehearing. 

Appeilants note (see Initial Comments at page 2 at the beginning of this 
paper) the following claims recite that the high Tc element of tiie claims from 
which these claims depend "can be made according to known principles of 
ceramic science" or similar recitation: dependent claims 322 to 360, 414 to 
427, 436, 453 fo 465, 473 fo 475, and 484 to 491 and independent claim 
522. In addition, 

• independent claims 59 is directed to "a ceramic Hke matenat" and 

• independent claim 374 is directed to " a materiat comprismn a 
ceramtc charactertstic. ". 

in the passage quote above the Board's Decision again stales "it is 
the Specification, not the knowledge of one skilled in the art that must 
supply the novel aspects of an invention in order to constitute adequate 
enablement. Genentech, 108 F,3d at 1366," As noted above the way in 
which the Board's Decision applies Genentech, in particular the specifically 
cited passage is an error of law. 

In the passage quote above the Board^s Decision states "[t]he affidavits 
relied upon by Appellants do not explain how the Specification supplies 
novel aspects of Appellants' invention to thereby enable the full scope of the 
claims under consideration," Appellants note the Examiner never raise d this 
issue in prosecution, the Total Final Action or in the Examiner's Answer. 
This issue is besng raised for the first time in the Board s Decision 
Appeilants request that their Request to Reopen Prosecution be granted so 
that they can properly respond to these comments in prosecution. 

Appeal No. 2009-003320 Page 1 06 ofl 21 Serial No. ; 08/479.81 0 



Appellants should not be required for the first time to respond to such 
comments in a Request for Rehearing. Moreover, the Board s Decision 
does not define what it means by the "nove! aspect/ Thus Appellants 
cannot respond to this comment. Appellants request the Board to grant 
Appellants Request to Reopen Prosecution and provide a construction of 
the "novel aspect" so that Appellants can respond to this comment. If the 
Examiner did not ask for this in prosecution then the Examiner did not 
make a prima facie shovs/ing of lack of enablement. To the extent that this 
is being asserted for the first time and it is required then a prima facie 
showing is being made for the first time by the Board's Decision. 
Appellants explained above what they believe is the novel aspect, that is 
that material have a Tc grate than or equal to 26 K. Such materia i can be 
made and tested according to the teaching of Appellants' Specification to 
the ful! scope of the claims. .This is not disputed. Thus Appellants' claims 
are enabled to their full scope, 

37. Section 

. The Board s Decision at page 34 lines 4-15, states: 

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

Appellants disagree with is conciusion. As stated above in In re Wright only 
one example was disclosed and there was evidence that years after Wrights 
Appeal No. 2009-003320 Page 107 of 121 Serial Na; 08/479,810 



invention persons of skiil in the art were haring difficulty making other 
species. As stated above there is no such evidence in the present 
Appiication. There is no example of a high Tc superconductor that cannot be 
made and tested following the teaching of Appellants' Specification to 
determine if the species has the desired property. It is undisputed that 
persons of ordinary skill in the art had a reasonable expectation of success of 
making and testing species. This art is well understood and the many legal 
authorities cited in Appellants' Brief and Appellant's Replies clearly state that 
all known species that come within the scope of a claim do no have to be 
know in advance. Enablement does not require inventors to predict or 
foresee "every conceivable and possible future embodiment of [theirj 
invention" at the time the application is filed, as stated in Rexnord Corp. v, 
Laitram Corp (Supra) The Board's Decision has not responded to these 
legal authorities. The Board's Decision continually relies on applying 
Genentech in a manner which is an error of law as stated above, 

38. Section 

The Board's Decision at BD page 34 lines 10-23, commenting on legal 
precedent cited by Appellants states: 



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



Appeal No. 2009-003320 



Page 108 of 121 Serial Na; 08/479,810 



Appellants respectfully disagree that the legal authorities cited by Appellant 
and their arguments regarding them "would [not] have led an artisan to 
reasonably believe that Appellants' success with the previously noted mixed 
transition metal oxides could be extrapolated with a reasonable expectation 
of success to the other materials embraced by the claims of this 
subsection," initially the Examiner never raised this issue In prosecution, in 
the Total Final Action or in the Examiner's Answer, Appellants responded to 
every argument and reason for rejection raised by the Examiner, The Board 
for the first time is raising this issue in the Board's Decision, Appellants 
should not be required to respond to this comment in a Request for 
Rehearing. Thus Appellants request that their Request to Reopen 
Prosecution be granted. To the extend that it is essential to establish 
enablement by showing that Appellants' Specification "would have led an 
artisan to reasonably believe that Appellants' success with the previously 
noted mixed transition metal oxides could be extrapolated with a reasonable 
expectation of success to the other materials embraced by the ciaims of this 
subsection," the Examiners failure to raise this issue in prosecution or at the 
latest in the Final Action, means that the Final Action has not made out a 
prima facie case of lack of enablement Thus a prima facie case of lack of 
enablement is being made for the first time in the Board's Decision and 
Appellants" Request to Reopen Prosecution should be granted. 

Appellant disagrees that the have created misimpressions regarding 
certain legal authorities. 

39, Section 

The Board's Decision at BD page 34 line 24 to page 35, 3 lines from 
the bottom, are directed to the Board's comments on In re Fischer, 427 F.2d 

833, 839 (CCPA1970). 

For purposes of clarification of the record Appellants note in the last 
paragraph at RB page 12 states; 

Appeal No. 2UU9-U03320 Page 1U9 of 121 Serial No.; 06/4/9,810 



Applicants discovered that ceramic materials are 
superconductors. Their work iead and leads others to look for 
other species. Applicants' evidence shows that those others 
used Applicants teaching to determine those species. Thus 
foliowing in re Fisher "it is apparent that such an inventor should 
be allowed to dominate the future patentable inventions of others 
where those inventions were based in some way on his 
teachings {166 USPQ 18, 24) ( The CAFC referred to this 
statement as dictum in P:ar?t Ger^etic Sys. v DeKalb Genetics 
Corp.^ 315 F.3d 1335. 1340 (Fed. Cir. 2003; , 65 U.S.P.Q.2D 
(BNA) 1452.) 



Appeliants note the fuii citation is: 

PCS notes that Fisher aiso stated that "such an 
inventor shouid be allowed to dominate the future 
patentable inventions of others where those 
inventions were based in some way on his teachings," 
Fisher, 427 F.2d at 839. This dictum, however, oniy 
sets the context for Fisher's holding that "it is equally 
apparent, however, that [the inventor] must not be 
permitted to achieve this dominance by claims which 
are insufficiently supported and hence not in 
compliance witli the first paragraph of 35 USC 112." 
Id. 



Riant Genetic Svs. v. OeKalb Genetics C orp.. 315 
.E.-.3g..iM§...l!i4iliE^ld.ilL[:..200 

Dictum is not the holding of a decision but it is persuasive authority. Since it 
is Appellants position that they have fully enabled their claims, this dictum 
applies to them. 



40. Section 

The Board's Decision from page 35, 3 lines from the bottom to page 41 , !ine 
17, applies the 8 factors provided in In re Wands 858 F.2d at 737 as relevant 
to determining whether their Specification disclosure enables the claims 
under consideration without undue experimentation. 



Appeal No. 2009-003320 



Page 110 of 121 Seria! Na; 08/479,810 



BV1 page 126, Sines 11-14, state in regards to the In re Wands eight 
factors: 

The Examiner has not appiied these factors. And in the finai 
rejection the Examiner has not commented on nor rebutted 
Applicants^ analysis of the appiication of the In re Wands factors 
to the present application in Applicants' Response dated 
01/28/2005 in response to Office Action dated 07/28/2004 
Applicants have shown that: 



8V1 page 129, iines 14-19, state in regards to the In re Wands eight 
factors: 

A conciusion of lack of enablement means that, based on the 
evidence regarding each of the above factors, the specification, at 
the time the appiication was fiied, wouid not have taught one si^ilied 
in the art how to make and/or use the fuii scope of the claimed 
invention without undue expenmentation. In re Wright, 999 F.2d 
1557,1562, 27 USPQ2d 1510, 1513 {Fed, Cir. 1993). it is the 
Examiner's burden to show this and the Examiner has clearly not 
done so 



The Examiner's Answer did not address the eight In re Wands factors, thus 
the Total Finai Rejection and the Examiner's Answer did not make out a 
prima facie case of lack of enable of any of the rejected claim, including those 
for which the Board's Decision did not reverse the Examiner's rejections. For 
the fist time in the prosecution of this appiication the eight In re Wands factors 
are applied in the Board's Decision Appellants should not be required in a 
Request for Rehearing to respond for the first time to an application of the 
eight in re Wands factors. In view thereof Appellants request ht their Request 
to Reopen Prosecution be granted so that they can properly respond to the 
application of these factors for the first time in prosecution. 



At BD page 36, line 11-14, the first In re Wand Factor (1 ) the quantity 
of experimentation necessary is applied. The Board's decision states : 



Appeal No. 2009-003320 



Page 1 11 of 121 Serial Na; 08/479,810 



There is no meaningfui iimit to the quantity of experimentation 
required fay the daims in this subsection. This is because these 
ciaims define the recited high temperature superconductor with 
a broad scope which includes, for example, any oxide (claim 12) 
or any composition (claim 88). 

initiaSiy ciaim 12 and claim 88 are not the oniy ciaims for which the Board's 
Decision has not reversed the Examiner rejection. The Board has oniy 
identified two of the broadest ciaims. Each caiim has been appealed 
separately and should be treated separately. That there is no meaningful 
limit to the number of species is not fatal to finding of enablement. 



In re Angstadt 190 USPQ 214, 218 (CCPA 1976) applies essentially the 
same eight In re ^Vands factors {See BVIpage 104) BV1 paragraph 
bridging page 70-71 states 

According to In re Angstadt 190 USPQ 214, 218 (CCPA 1976) in 
an unpredictable art, §1 12 does not require disclosure of a test 
with every species covered fay a claim. The CCPA states: 



To require such a complete disclosure would apparently 
necessitate a patent application or applications with 
"thousands " of examples or the disclosure of 
"thousands" of catalysts along with information as to 
whether each exhibits catalytic behavior resulting in the 
production of hydroperoxides. More importantly, such a 
requirement would force an inventor seeking adequate 
patent protection to carry out a prohibitive number of 
actual expenments. This would tend to discourage 
inventors from filing patent applications in an 
unpredictable area since the patent claims would have 
to be limited to those embodiments which are expressly 
disclosed. A potential infringer could readily avoid 
"literal' infringement of such claims by merely finding 
another analogous catalyst complex which could be 
used in "forming hydroperoxides." (Emphasis Added) 

Thus according to In re Angsiadt a claim encompassing thousand of species 
can be enables by a small number of examples, 



Appeal No. 2009-003320 



Page 112 of 121 Serial No.; 08/479,810 



BV1 page 229 SLines from the bottom to page 231 . line 3 states in 

regards to the United States Supreme Court decision in Minerals v. Hyde: 

The ciaims found enabled are directed to 'ores." The Supreme 
Court did not require the ciaims of the Minerals Patent to be iimited 
to the ores that were recited in the patent. The claims inciude 
within their scope "ores" described in the patent, ores know by 
others and not deschbed in the patent, ores not yet discovered 
and, moreover, would snciude within their scope an ore type 
materials that was not naturaiiy occurring, but which could be made 
by man. The Supreme Court states as quoted above in the 
Supreme Court Minerals v. Hyde Enablement Statement "The 
composition of ores varies infinitely," The patent applicant was not 
required to describe the infinite variation of the ores in the patent to 
genericaily claim an ore and for this generic claim to be enabled for 
ail ores. The oniy specific description in the Minerals Patent of an 
ore is at Col. 1. lines 10-12 which states "This invention relates to 
improvements in the concentration of ores, the object being to separate 
metalliferous matter,, graphite, and the iike from gangue by means of 
oils, fatty acids,: or other substances which have a preferentiai affinity 
for metailiferous matter over gangue" and at Coi. 2, lines 70 ™ 76, "'The 
following is an example of the appiication of this invention to the 
concentration of a particular ore. An ore containing ferruginous 
blende, gaiena, and gangue consisting 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 Enabiement Statement, for 
why the generic claims covering an infinite number of species were 
enabled is "[t]he process \s 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 ciaim that may not 
be specifically described, and where the specification only 
descnbes a small number of preferred embodiments, does not 
render the claim not enabled. The Supreme Court cleariy 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 appiication." Moreover, there is no certainty that the 
claimed method in the Materials Patent would work for every ore 
until it was e.xpenmentally determined to work for a particular ore. 
This did not render the claims not enabled !t is clear that the 



Appeal No. 2009-003320 



Page 113 of 121 Serial Na; 08/479,810 



Supreme Court did not find that it was necessary to know what ores 
the process worked for in advance since this was experimentaiiy 
determinabie by techniques known to persons of skiil in the art 
foiiowing the teaching \n the Minerals Patent, Thus the patent 
applicant of the Minerals Patent was not required to foresee (or 
predict in the sense used by the Examiner of the present 
application) ai! species that came wtthin the scope of the Minerals 
Patent claims. The same is true of the claims under appeal herein 
and rejected as not enabled. 

Thus a claim wherein 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 descnbes a small number of preferred 
embodiments, does not render the claim not enabled. 



BD page 36, line 16-19 states. 

According to Appellants, "Applicants have shown that 
the quantity of experimentation needed to make 
samples to use the invention based on the content of 
the disclosure in the specification is routine 
experimentation" (App. Br., vol. l.p. 128). This 
statement is inaccurate. 



The Board's comment in regards to Appellants comment "This statement is 
inaccurate" is where the real inaccuracy is. According to !n re Angstadt, 
and the United State Supreme Court in Minerals Separation v, Hyde a 
small number of species in an art such as that to which Appellants' claims 
are directed is sufficient to enable a claim that includes within its scope 
species that '\/aries infinitely." As a consequence this Factor supports 
enablement. 



At BD page 37 line 1-13, the second In re Wand Tactor (2) the amount of 
direction or guidance presented." is applied. In re Wands states 'The test is 
not merely quantitative, since a considerable amount of experimentation is 
permissible, if it is merely routine, or if the specification in question provides 
a reasonable amount of guidance with respect to the direction in which the 

Appeal No. 2009-003320 Page 114 of 121 Seria! Na; 08/479,810 



experimentation shouid proceed" Ifire Wax^di^^^ 
1988; It is ciear from In re Wands that guidance is needed only if the 
experimentation m not routine. There is no evidence m the record that 
anything other than routine fabrication of sample by known principles is 
necessary to make species that come within the scope of Appellants' 
claims. This is anaiogous to the invention in Mineral Separation v. Hyde 
where a fevi/ examples were sufficient to enable a board claim containing, a 
large class (infinite in number) of substances. The Board's Decision mai<^es 
no mention of the United State Supreme Court decision.. Mineral 
Separation v. Hyde. Wny was the broad ciaim permitted there but not here? 
The Board's statement "the Specification contains no direction for making 
high temperature superconductors e.g., see ciaims 12 and 88) other than the 
mixed transition metal oxides" is inaccurate. First or ail there are many 
more claims than 1 2 and 88 that remain rejected and are significantly 
narrower in scope than claims 12 and 88. Also all of Appellants preferred 
embodiment come within the scope of ciaims 12 and 88 Aiso, secondly, 
the are many thousands of already fabricated materiais that mereiy have to 
be imade by methods reported in the literature and tested by known means. 
The techniques are ai! known prior to Appellants earliest filing date. The 
CAFC in Genentech states: 



the omission of minor details does not cause a specification to 
fail to meet the enablement requirement. However, when there 
is no disclosure of any specific starting mafenal or of any of 
the conditions under which a process can be carried out, 
undue experimentation is required; there is a failure to meet 
the enablement requirement that cannot be rectified by 
asserting that ail the disciosure related to the process is within 
the skill of the art. It is the specification, not the knowledge of 
one skilled in the art, that must supply the nove! aspects of an 
Invention in order to constitute adequate enablement. This 
specification provides only a starting point, a direction for 
further research. 



Appeal No. 2009-003320 



Page 115 of 121 Seria! Na; 08/479,810 



Genenlech, inc. v. Novo Nordisk A/S. 108 F 3d 136;. ;366 
(fed. Cir 1997) 

What the Board's Decision says is missing from AppeHants teaching are 
minor details that are not required to be listed. None of these detai! are "novel 
aspects" since they are known to I persons of skiil in the art. The Board would 
require a patent applicant to write an encyclopedia of known information into a 
patent application to get a claim of broad scope, Genentech say this is not 
necessary. 

As a consequence this Factor supports enablement. 

At BD page 37 iines 14-24, the third In m Wands Factor (3) the 
presence or absence of working examples; is applied. The Board's decision 
states "that the Specification exampies are limited to the mixed transition 
metal oxides discussed in subsection L Under these circumstances, a non- 
enablement conclusion is supported by Factor (3)." In Mineral Separation v. 
Hyde only a small number of examples were sufficient to find enabled a 
claim to the genus "ore," The facts in the present application are not 
different. There is no evidence in the record that persons of ordinary skiil in 
the art had or have any difficulty in making and testing species that come 
with in the scope of the Subsection ii claims outside of what the Board's 
Decision has found enabled, . Just as in in re Wands, In re Angstadt and 
Miner Separation v. Hyde only routine screening is required which justifies 
finding broad claim enables. The Board's assertions to the contrary are not 
based on any facts but only conclusory statements. As a consequence this 
Factor supports enablement. 

At BD page 38 lines 1 -16, the fourth In re Wands Factor (4) the 
nature of the invention; is applied,. Appellants maintain that the invention is 
easily practice by persons of skill in the art. The Poole 1 988 Enablement 
Statement is clear evidence of this. This is confirmed by the DST Affidavits, 
(Brief Attachment AM, AN and AO), This is comparable to the invention in 

Appeal No. 2009-003320 Page 116 of 121 Serial No.; 08/479.810 



Mineral Separation v. Hyde. A broad claim was justified there because the 
invention was easily practiced.. As a consequence this Factor supports 
enabiement. 

At 8D page 38 line 17 to page 39, line 2, , the fifth In re Wands Factor 
(5) ihe stLile of the pfior art. is applied The onl\ c\ idencc in the record 
IS thai ucll kiu)un methods to make species that come within the scope 
of Appciiam^ ciaiuis arc needed to make and icsi samples {hat come 
within the scope of Appellants" clanns ihc Board's statement to the 
contsar> is factual error 1 here is no e\ idence m the record that persons 
of ordinar\ skill m the art have an> difficult\ in makmg specie tliat 
come w ith in the scope of Appellants ch^inis Aii of She claim m 
Subsection lil includes witlnn theii scope Appellants' specific 
embt>dnT!ents described in their Specificautni As a consequence this 
Factor supports enablement 

At BD page 3S line 6-13 to page 40 \me. line 6 , the sixth In re 
Wands Factor (6) tlie relative skiii ol'tliose in the arf is applied. The 
Board accepts Appeiktnts detimtjon of persons of ski!! in the art. 7 he 
skill in tlie art of fabricating ceratDic material is high Testiitg these 
materials fur siiperconducti\ it> is well luiderstood As a consequence 
this Factor supports enablement 

At BD page 40 line 7-13 the seventh In re Wands Factor (") - the 
predictability or unprediciabilit) of ihe arl is applied Fof ihe reasons 
gi\eii aboxe ihe ait {>f hiyh K siiperconducti\it> is pitdictaMe 
Appeffants disagree w tth the Boaixf s position As a consequence this 
Factor supports enablement 

At BD page 40 line 14 to page 41 liiie 7 the eight In le Wands Factor 

(8) the breadth of the clanns' is applied As stated abo\e the Board's 

Decision onh' selects two claims, 12 and 88. from the many other cknm 
Appeal No 2uuy-uud3^u Page 1 1 ./ of beriai No u«/4/y «iu 



ofnjiirowci scope that rcmjiin rcjcclcd to focus on Appellants 
iiiaiinam that lhe\ arc entitled to a claim as broad as their disco\ cr\ . 
winch Hichkles conspoiURK. such as ceramics, more particukiriy, oxidcs. 
meta! oxides, traiisinon metal etc can carr> a supercouductn e current 
for a '\\ ~- 2<> K. Fuidmg species is niereh a matter of making and testing 
sanipies. Claim sot" this t\'pe \\ere tbmid enabie in /?? re Jl'tmiis, In re 
. Ifii^^fudt and in Mineral Scparunofi v. flydcAof snnilar reasons - onh 
routine making and testing is required. Appellants disagree \\\\h 
Board's statenient. As a consequence this Factor supports enablement. 



Appellants disagree with the Board's statement at 8D page 40, 3 
lines from the button to page 41 line 6. : 



However, it iS important to clarify that the record of this 
appeal does not support Appellants' implication that the 
Specification discloses their discovery with sufficient detail 
to enable those skfiled in ihfs art to mai<e and use the fuil 
scope of the invention defined by the claims uiider 
consideration As discussed above, Appeiiants' arguments 
and evidence of record have iittle if any value establishing 
that an artisan would have reasonably believed that 
Appellants' high temperature superconductivity success 
with mixed transition metai oxides couid be extrapolated 
with a reasonable expectation of success to the other 
matenals encompassed by the claims of this subsection 
For these reasons. 

This stenienS is an error of law since following /// re IVands. in rc 

Ani.^s/aJi and in Mineral Scpiinnion r. H\ik' as applied in Appellants' 

Brief and Appellaiit's Replies Appellants claims are enabled to their fu}} 



Factor (8) evinces -enablement 



CONCLUSION 

Appeal No. 2009-003320 Page 118 of 121 Serial Na; 08/479,810 



In view of Appellants arguments in Appellant's Brief, Appellants Replies 
and this Request for Rehearing. Appellants request the Board to reverse the 
rejection the claims for which the Board sustained the Examiner Rejections 
in the Decision on Appeal for which this Request for Rehearing has been 
requested,. In particular, Appellants request reconsideration of claims 
which remain rejected which recite that the high Tc element "can be made 
according to known principles of ceramic science" or similar recitation. 
These include independent claim 522. and portions of multiply dependent 
claims 322 to 360, 414 to 427, 436, 453 to 465, 473 to 475, and 484 to 491 
which remain rejected. Those that remain rejected are: 

326/93, 94, 95 
327/64 

329/12-23, 110, 131, 133, 337-370 

334/275, 310 

337/117 

338/24-26, 60-63,116, 141 -143, 187, 222-224, 278, 285, 313, 320 
356/126, 127 
424/283, 386, 387, 389 
427/402 

549/496-500, 508 

In addition reconsideration is requested of the following independent claims: 

• independent claims 59 which is directed to " a ceramic like material" 
and 

♦ independent claim 374 which is directed to "a„mater|a,|jom|3r|s|o,c| 
a ceramic characteristic ' 

Appeal No. 2009-003320 Page 119 of 121 Serial Na; 08/479,810 



and the foliowing dependent cSaims which depend therefrom;: 

Dependent claim 351 depends from claim 59 and states that the "ceramic 

M,ke„mateoa|'l'ican„„b Orl,Oc|o|eS;„of„ceram|c 

science." 

Dependent claim 419 depends from claim 374 and states that the " the 
materiai comprismg a ceramtc charactertstic " " can b© made according 
to known prmctptes of ceramtc science. " 



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



Respectfully submitted, 



/Daniel P Morris/ 

Dr. Daniel P Morris, Esq 
Lead Attorney 
Reg. No. 32,053 
(914) 945-3217 

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



IBM CORPORATION 
Intellectual Property Law Dept. 



Appeal No. 2009-003320 



Page 120 of 121 Serial No.; 08/479.810 



P.O. Box 218 

Yorktown Heights, New York 10598 



Appeal No. 2009-003320 



Page 121 of 121 Serial No.; 08/479,810 



ATTACHMENT BN 



1^1 THE STATES PATENT AND TRADEMARK OFFICE 



m re P,,rern AppHcatu.n of Date' Nov, 13, 2009 

Appl:cams Bednor^ Poc-kel- YQ9a7-0?4B? 

Sei.a^ No , D6/4-1I810 G?oup Art Unh, 1 /5 1 - 

>-skxl Jufid ins)5 EKamsner M Kopec 

F(^r NEW SUPERCONDUCTIVE COMPOUNDS HAVING HIGH TRAMSHION 
TEMPERATURE I HODS FOR THEIR USE AND PRfiRAFWIOM 



CossviiiSsojiOiiOi for Palenis 
P 0 Bo^- 1460 Aie'<andna 
VA >2313-1460 



Sir: 



L OenniS Newns. declare that 



1 s recesved a B, A ciegrea in Cherrs?str>< form Oxfoixi Universily Unfed Kir?g^^«n^ 
:r s$)64 aivd a Ph D degree in Theoret^;^al Physical ChomsslrY form tlio 
Unsversit^/of London 1$^67 
.:> i am a theoretical solid state saorUist. tesimm and curriouium vitae^ wofe 
aiteohed to r^^y prior affidavit dated April 10 2006 fPnor Afffdavitr 
In my prior affidavit I r;omr>-er>fed on the USPTO response dated October :S0.. 
Sonai No. 08/4?y,t^ Page l ol 9 Appeal 2009-003320 



2005 tOfrK;e Achon) wh^ch ai page 4 regarding the subject apphcatH->n citea 
SchuNer et ^4 Snapshot View of High Temperatt.-e Sup€^rconducl.v% 2002" 
(?ep(n1 tron? workshop on Hsgh Temperature Superconductivity held Apr,i S-a, 
2002 in San Dsego) vvhich tt^e exarniner stales \liscysse55 both the practical 
apphc^stsons and theoretical mechacis?Trs regaling to superconductivity 
As stated in paragraph 4 of my Prior Affidavit the Examiner at pago 4 of the Oftice 
Vt c ^ c t^;a page 4 Sci^iuHar el a; which 



i assc research in high temperature superconduciivity because 
tnn complexity ot Ihe rnatedais. biings together expertise frorTi 
materiais scientists physiCiSts and chemr^ts, expeisrT^entairsts end 
tHooi\-5tS- it is ir^ipoiiant to realize tha! this fieid is based f>n 
complex n-atenais end because of thrs materials sdenc*^ issues 
ere cs-ycsal f^'licroslmctures, cny'Slaiisnsty. phase variatrcns. 
nc-rvg^/iibr phases, and overall strxsctural is^suos play a crucial 
roie and car-^ strongly attect the physic-ai properties of the meter jais. 
Moreover seeros that to date thei-e are no oiear-ont directions for 
searches for nevv< superconduc-tii^g phases, as shown by the 
serei^.dipitOi.iS disooverv of superconductivity^ in iv^gB^ Thus studies 
in which the nau ii-e of chemicai Pending end how thie arises in 
o>!iai fip s^.<pei~coi~sductors n^ay prove to he fruidui Of course, 

^ v-^^i - ca ^ ' c ^ ^ V c s % -v! ^ 
n-atersais intuition oi systerr^aiic soai~ohes using weii-defined 
strategies icay prove to be fruitful i^ is ir^teresting to note that wbiie 
empirical searches ;n the oxides gave rise to r'j^any 
Si,.p'?'conducting systen>s, simiiai^ (probabie?) searches after the 
<fisnovery r>f sur>e?conductivi?v in MgB: have n<:=t uncovered any 
i>ew superooncuctors," 
5. A-N staled io paragraph 5 of n^y F^nor Affidavit the Examsner at pages 4 -5 of the 

UHice AciiCii ! iiites pages 5~ 6 of Scnuiiei- ei ai 

wficf5 State; 

"The theory <>t high feniperai'ure superconductivity bas proven lo 
he elusive to daie This is probably as much caused by the tact 
thai u^ese coiiipiex r^iateriais it iS ver>^ hard to esiahiish 
iii5ichieiy even the experimental phenoir-efioiogy, as w-eii as by ti^^:^- 
^-vohihon ot n>an> cornpet^rip iuodeis, whiOh seerTi to add5"ess 
ci^jy r-edK-riiar suspects of the pn3oien^ The Indian story of the 
hiiiid iueo tiying t<s i,^barecien:^e the mair^t properties oi an 
e'epnaui (-y touching various parts of its body seerus 10 be 
parhciiiaiiy reievarst it iS noi even dear wheiher there is a 
sirig^e theoiy oi supercondiictivity or whether various 
n^echnnif-^n-is ai-e possible Thus ii is liTipossibie to sun>mari.?:e. or 
even oive a cci^npiele general overview of ali theoiies of 
Seria: r^^o gb,'4 . g o 1 0 Page 2 of 9 Appeal ;K.i084l0332C) 



c^i5perconductiv=ty arKl because of this, rhss s-eoorl wiss ise vefv 
iir^=itea sn its u^^oretscal scope." 

5, As dilated paragraph 6 of nr/ Pnor Affkiavit the Examifx^r at page S of the Office 

Aclion Cile^s page T of SchuHe? et a; wh;ch statss 

"Thi,-^ tas- ?he exi4ti?nce of, a totaHy new superconductor tias proven 
snipo^-jiDie to pr<-dict ?rorn fi>>5t pr=nc pies lherefo?e Iheir =:?iscov>-^fy fic^ij 
been oased ias-pesy on empirical approacties intuition, and even 
cier^'ndipii:^ ftiss U!^p;edic^abii!ty iS at tt^e ?'00t of the excitement that the 
condeiis^xl n^atler con5iiiyn:ty iiispiays at the discovei-y of a ?iev,->^ i^r5,-ste?iai 
that ss superconduct>no at hiOh tes'^speratufe ' 

tsvioi'etlual sok.i stale ^csenoe and to comment on ttie passages quoted above 
pai-aqrapf>s 4 5 ai-sd 6 

8, I an> Siibmsttsng tr.ss afficav=t to coF'rnent on c^^-rtaln remarks made In ttie 
Oeci-Jion o?> Appea; o? the Esoard of Patent Appoai^i and Irneiiefences of the 
United States Patent a? hj Tracerna^K Office (Board's DeciSfon) dated 
Oi¥tr.'200e 

9. AppareritiV n>otivalea by my Pnc" Affidavit ai^d the arguments n;ade by the 
patei-^t apt>i>car>?s tsase or^ my Piios Affidavit the fSoard\s Decisson makes the 
foliovvis-ip condiments at pape 10 In regards to a parapp-apf^ ti'i->iTi page ? of the 
Schn;lei an-cse (quoted at)ove iii paragiaph 6) 



,\s .xiipport ihc fitxluip ^d unprediciahditx >o tb.o htgl\ 
sc$r^pci\iUitv -^npercondr.ctor an, the l^xatraacT iviics on. die SchnUer 
tic\^ S>>«r-Vit «^rib-lv Umrcraturj Supcuv^Ktucto d> 
xxt-iich di-closes: 
rh.a^. t;t.r die cxk^tonce cd\^ louiily no\% supercoodrrctor has 
pn>\vr> i^^ipo^.Sihic to I'tcdKi tnno ttrsi ptinchpk^- 

.\ich\c. ;bO'' d>i-\\- or. h> n lx\o vo o^s K on^ ^ 
s o^pK !0 a ^pp5V udics. tota:i:on. af^d ox ni ^e?Oly:|nt> 1 S^s 
iinnw'iCiaPdiiK 5^ .vt thv b'Ot et die cx^ dement d^at tin 
^ondciisea raatte?- eonhmunuy di>pla\-^ at the di^^covory of 

.^^v u\u.^^ tar. I- s.nvTvO^^^dOvtJt^K at ^\ieh, 
icUHH;u\iufV-s Schiiller 7). 

•iO Boards DeciSiOi 5 page 26 iicas 15-19 states 





Serial Ho 0o.-4 



A,npeai ;:009- 003 520 



s^jpporHHi by Sch>aLier's reference to neu- supcrc<indyclor 
(isSi^AeriCS as based iargebv on empirka! appr<5aclies, 
int\5iiK>a. and serendipity .^inco ihese bases are typscally 
us-..^i hv sckaitisiS during die disc<5very process as 
ex. kle need by the Nev\ afrldavk fa/. .1 However, 

prce^ict;.dvaii:y i\ iraik:ated h> i.he \ise ofempirk^al 
appsxx"K-hc,7. ifuuiiion. atxl screndipiiy iri die research and 
diseox er> mefaodolDgy ot\sek:nDs^s. 



1 1 The fifsj few sentesnoes of paragraph ? of my Prior Affidavit alates: 

i aai subailtl;ng th^s declaration io ciadfy what sa rv^eant by 
precactahiiity in theoreticai 5:olid state; science. A tlieory of a s^ossd 
I& aased on approximate niathematical formalisms to rapreseni 
tae^sa inseiacl;on<> Atheorotrca; aolsd ^^tate scsenpst makes an 
assesamervJ: us^ng phyaicai inhsif-orr ma^hematioal estia>atioa 
and experiaieniai resuita as a guide to focus on features of the 
oomsplox aet of laleraclions lhat thia assessaient suggeata are 
dominate |sio . doa^inantj in taesf affect on t^>e; physical 
phenomena for xvaic?: tae theonss 5S att^^mpting to develop a 
fheoi-y. Tl'^l^ process results In what Is often referred to as 
ar^tneaiaticai formaMam Tnss fcrnialisa" la then applied to 
specsf;-; exarnp^'os so determsne wnethe*- tna fcfmahsm prcxJuces 
eompn^vd resu^t^i t^a; agre?? with n-seasured expena^en^a^ ritsults 
Th^s p?ocess can be considered a "theoreticas experiment " 

12 The lact few sentences of paragraph 9 of my Pnor Affidavit state ref^snaag as 

an example to a well understood theory sn semiconductors . 

Morejover, taat a the^ofehoal oomputation Is a Iheorellcal 
^rxper^inenr- sn tt^e cr^nceptuai sense |ia| ncjt dihrerent t^an a 
pryS:C-:si a>i-penn-ent ^ f?e IhsviiSt starting on=t on a 
computallon lust as an experimental 1st staring out on an 
expei- lineal Has an intuitive feeilno thai. t>ut does not t<iiow 
wrSethei- the matenal studied wHI in fact be a sennoonduoion 
As stated at)Ove solid state scieidlsts, both theoretical and 
exaerimeniaL ai'e Initially guided by pbysical intuition baaed 
0- envM exDeiirTioi-ital and iPeo?esicai 'work E Kpei-iii-^en: and 
iheorv cci'T^plement each atHei\ at times one ks ahead of the 
otriOi- ii"' an tindofslanding of a probierrL but whict^ one sa 
.^heaa oi^-;i^C|es ove? njiX^ as or understanding of the physicai 
p r.enon-; ena de velop s 
- ^ ^^^^ - 0 ^ V \ > ^ -a ^ : ~- V ^ ' ^ oeroonductivity 

i;y It ia my posihon thai trie Esoai^d's DecsSion as quoted In paragrcsphs 9 and 10 



Seria; No - OBMI-oaiO 



Page 4 of 9 



Appeal 2009 003320 



above ;ncori&iSk-?r;t v.vitr= what I jJlaJed sn my F-rjor Aftdavit as ^ndicaled by 

tf-;e representatsve exan^sies from my Prsor Affidavit ouot&d in paragraphs 1 1 

an<s I a abovei i fefer ^b$ complete lext of my Pnor Affsdavlt for aH the delasfe 
14 s disagree w;th the BoarcVs OecJsion quoted paragrapf-s 10 above where si 

states ' AppaHanis have not established their proposition that predictabi^ty is 

irsdsoated by the use of emp;noai approacJies, intuition, and serendipitv' m the 

research and discovery methodoiogy ot soient;stSi " 
If-* "i-^hysioai irn^jstson to an experimenja^ scientist is developed fforn tf?e 

expersmen^ai teohuKiiies and apparatus tt^ey use and the data that they 

rneasiire 1" nss is their ''empsnoai approaches 
16 1"t^ysioai -ntuiiion" lo a ioeoretica; j^osentsst iS deveioped fforvs ttsve 

maihen-^aticas and oa;cu;ation lachniquea Ihey use (which includes nomerioa? 

caicuiatioru5 on computers), the eqi^ations they deveiop and the data that they 
u-Hte 1 f = s is thosi einpincai approaches vVhe?e s uye e^npsoca^ here as i 

use rhe temi "theoreticai experiment in my Pnor Affidavil. 
?■ Eioth expersmenlai and theoretioai scientists are prinsarsiy guided by thiS 

daveiOped "physicai ;ntUilion ' 

18 A theoretical scientis:! does not msake randoiTi calcuiatio?>s and an 
expeiin-entai scientist does not maKe random expehmeois. Such a random 
approach woiiic; noi i-esult iu useful results 

19 Wr?en a theoretical scientist chooses to go inio a partiouiai- theoretical 
dsrectioi? or when an expeiin^entai scientist chooses to go in a particular 
expeii!iientai direction, that direction is guided by "physical intuitiDo" with a 
i-easonat)ie expectation ot success in carrying out the expehnierU or 
cakcisiation and ai-iivii-?g at a measured or calcuiated result 

20 Both Iheoietioai and expenmentai scientists are primaniy guided by ^Y>^n'-s^cai 
iiuuiiien" x^.4lich iS developed by edur;atioriai trair^ir^g and Ihe tt^eoreticai worH 

expo:inienta= woit tha^ they do 
2 1 Whei^ a ihecret^ca' 0'"expeiin>ei'^tai result is achieved, that resuit is 
systerna^caiiy oxploied to deveiop a tuHer iheoreticai or expenmentai 
cnderstariding which fuither develops or ont^arK-es the scieoust "physical 



intuition " 



Sersai No - 08/470.810 



Page 5 of 9 



Appeal 2000-003320 



k2 S>ys?ema?;c ^sxpioration !o a uieoretscas sc^entisj? ?nay tor example HKly(Je 
vary o^^nasn paran-jeters used as cak-ubtion oiodifvsng approxsn^sste 
eouatiOiijv si^ed =?• the caicuiatson or nK5difying a numencai computahonas 
app$-oach. AH of thi^s ss done wit^ a reasonable expectatsori of getting 
successfuNy calculated resuit«5 

23 Systemahc expsoration k> an expenmenfai saentisi may for exan^pse sncsude 
varying ceilair; expenmerstai conditions, e.g. temperature, time, pressure: rnsx 
Di" consisU.stes, etc used ;a an expersrnem sn tabrscalsng sasnples. modifying 
n-ieasuren-;ent apparatus to betler nieasus-e the physical parameters and 
measuring more and differenl phy^icai pararneiers to get a fuller set of 
?neasured data Aii of this done with a reasonable expectation of getling 
successfuily fabncaled samples and measured results. 

'::4 i turn no^:^? to SchuHer's use of the term "serer^dipdy." 

25 Eiotb experimental arid ineoreticai st;ientlst uses Ihe tern-) ■sererxllplty " But. 
an e\per;n-s^?ntai theoretical observfasiosi If^at they maxe which tf-^ey refer to 
as • sereiidipi5oi.is" was not a randOiTs caicuiauor>. a randoin fabrioatioii of a 
sample or a raridorv^ measui-ement of a sample. Both tlie thecretioai soiesUlst 
and the experimental scientist set out based on physical intuiyon . as I have 
descpoed ii afsove based on "priysicai Inlu^tion" with a reasor^able experstatior^ 
of tiuccess that they would sur:oessfuiiy i-nake a sample, measure a sample, or 
pertorrr; a caicuiatiori. No reasonable scientist of ordii-sary scientific sl<ill 

tnesr s<.-;=er>tifii: diSCipiif^e w^ould set out on an 8,s<periment. measurement or 
caiCiiiation wltiioui a reaSi^r^aPle expeotaiion of success A reasonable 
sc ieniiv: of c-^-Jinary sc=en?stic skill in a scientific d:SCipline does ncH perfoi-m 
random arid arbitrary experiments, caicuiaflons and measuremerds, 

26 The tem^= ' serendipity^^ lo a reasonable scientist of ordinarv soienuflc skill in a 
scier?iihc dii^Cipline means that tf^ey reooonlze that based or^ tPel?- physical ■ 
HituitioiV may have chosen the comect direction out of a possibility of many 
directions thai may iiot have yielded as surxessfui a result 

27 I understand Sohuller s use of the term ■ serendipity or serene ipilous^^ in this 
context, 

1 Cv s .vh.~ ^ ^>cPu- e? -r th^- =>ecuon f-r the S; huiia^ ,:^ilicie Ui^^oied ii^ paiag^aph 
Serial No 08/479,810 Page 6 of 3 Appeal 2009-003320 



4 ah*^v<-> tn sei-enclipstous discover/ of §u?H^f conductivity ir? rjgB- 
hij- ^sin^ ;h^? tefjT 5;eiv-ndipitous' :n thss context ana vvsth thss n^^c-ansho, 

29, 1 not® that Sehyller is not an author on the paper Hmt reporting 

Ju.ipe!CO?=c«ctivsiy ii-i MyB- Ine Sc^^ui^^^r ajtscte at pacje 7\ fi^st paragr.iph, 
reters to retei-en<.e S fof t^e "discovefv 2D01|8| oP sVloB-" bafSQ a 
.snperc onductoi See reference 8 at page 39 of the Schuiler astjcse Se^eiie^ 
rot bued Hr c^utr-L''? 

30 The Schi<Hei csslsck^s^ charoc.teii.?atior. of ^he d;sc every c' supercor<1us;tivstv so 
IV'igEi a> ^ serendipitous" ;s ScfHiHer"^^ ^^taten^ent and not that of the discoverers 
, i,o the ai:lho?s of the ar^icse 

Thfe outh-orsi of ihe aftscse reporting superconductsvity in MoB- o;ay eonsioe; it 
a re^Sv.H of thesr iru.i:tion and sy&t^^'^'^^^ic ^^s^-'dy based on tl^o work of the 
ioventofj;, E^erriorz and fv-luesier of Ihe apove Idenfif^eo paleni appycalion 

32 A-^ ; Siored in paraaraph 19 of my Pr-o? Aflldavit "Schuier refof's ite (iks-coverv 
v-^t rvlcjB.- Citir^; the pap^;? of Nirsys^rnaisu *^t al Nat^s^e Voi 410, Man;h 200? 
wr to the MqlB iS roporled to nave a To of 39 K. a iayerod graphite cfvataf 
.^^n^notufe ,-snd made tVo^^ii poxvder!:^ y?;snQ known ceramic processing frethoda, 
MgB^ h.^s a j>uPslantia:iv S;mpter stnicn.ire than the first sonipes repoited on 
by Bednohc; and MuiK-r ' 

3;: i aiv^o note that that MgB:, ^vva^^ n^ade al ;east as early as -954, inore then 30 
vear-s p-no; to Badno'-:^ and fvlueiiorks discovery of H;gri 1,. c-upoi'corsdoctsvir/, 
aa reported in the toiiovjvinc^ article 

The Pr«^paralk>o anci Struotora el ^agnes^em Sorklev ligBs 
^sto^do~, E ;of^ea ai\i RichOi-d b Marsh 
Aisi Crx>ii^ Soc. 1^a4; 76rfy^pp 1434- =436, 

34 i ai^o ^-^He tisa^ klpB: layered which i& one of tn^j properties ilx4 the 

Bennvi.: and totioiicr patent appisoaiiOi) sayj^ sa a p,roperty o? the Oiaterasa inat 

ih^:iv d=acov'-,-iad to ho hsgn 5 ^ aupefTonuucto^'e 
3f^ i ai^o J\-.4e thai- Ma and b ai-e ^.^ieoTents that ase eonststueiita i>t matei-iar^ kno>v 

0 . X . \^ ^ s .-.a\-\ ^^^"v- \ \ \\. ^ 

3d Thi,$ icj she ^^uhhora *>ttne anjcse repertinq aupercoiKiucta^itv iO l^v%iB. may 

not s->ave oean "serendipitous ^ that a psevjOuSiy made materiai, that ^i?; layered 
- sal No 06/4T9 ■ U Pac^e T of 9 Aopeai jfXK-i- 0(-3120 



niaui^ ct esenients known to nave been consiih^enls of know 
supesconcU-iOtors weie h;gh T.: superconduciors. but thai thesr result was 
conf^isse^t vv^lh tnesr irituii-on, 
3r i wsy no^ ?epeas s^ere everxihina lhat s said In my Pnor Aftsdavit, but ffele? to it 
tor the detaste, 

38 ;n ;;k)Sino i note tn-al tne concept of a "theofy" as used in soiid state science o? 
oirses" sc-Ses'H>;.j-^ ;n tn<-^ bruaUefet s«snse iele?s to the physioai sntuitson ttiat 
CNC;v^nti?.t nas ;:?t)oni a physical pherson^esion Dajj^^p on which the sueiUiSt fonns 
a "phe:^^;nei■>OHXliC-.ai nridrfstancijng' whsch i^^ay >"iC5 amenabie to be>ng pui 
sn-o a-^ oasisy used foni" tor sti~a?ght1o sward caicuiatson. This 
~phanoni*?ncsioglc3i undei-s^tanding is part of tHe "physicat intuition tnat guioos 
both tha expsiimeniai and theoretcai iH'Jient-sl to po?sye a particniar direction 
in the;? reseda? ch, Th:s iS to be contrasted with the r??ore specialized meanino 
o? ^no term "theoiy" which i wii; refer to as a "formal tt^eOi"y" which means 
fori-nai anaiyiicai exps-essions in matiiematicai form based or= firsl pnncipies as 
i cJeiu-ribed sn irsv Prsor Affidavit EKperii-i-^ental scieoliata gei^eraiiy de noi 
deveiop o? \^.'Of\H on formai theones &inca ttii§; requires axiensive lraini?xo 
the n-athamaiioai forrnaiisn^s Ti:eoretsc:ai scieiitists generaiiy do not peffosiu 
physicai expenrrsei^tasion since this requirec^ esderisive training in tfse 
exoerii-riei-iai techniques As staied above both experimenlai ai?d theOi"eticai 
scieniix^t<i use "pnysioai 'mu-bon" arxl deveiap and u^sy thesrovvn torrf* oi 
pnenomenoioai(\5i ti!eOii<-' wi^ici? ihe-ir pbyijic^-^i uodei-standir^g of a 
pi^ei -om-v^iion wh^ori ouides then^ and others wosKing in the tlehd in forther 
reisea;-ci> and r.teveioprr>er>t The invesilorc^, Bedi-^OL? and Mue!iei\ described 
thai? physical undorsUsr^ding of their dkscovery in Iherr put?iioations and patent 
appiication. and others liseo it in lookir-g tor other high In sypercorxJucrors 

2/ 1 i^eredv oeciare that aii statements r^var.ie herein of iny knowledge are tiue ano 
that Oii stareive-is i>^-^do oi~i .rifurnx^itior asKl belief a^e betiaved n-) be true. s,ui-i 
for^^he^ that the^-sO sta tanxvnts were inade witi= the i<oowiedge that x^:'ittfoi fatxx^ 
sratemenls anci tr^e tike so i>>ade are punishabie bv l^ne or ir^^pnsonr^^ent or both. 



Se^iai r\ij . d$/4r3,0K.i 



Page 8 of 0 



Appeal 2009-0Ci3320 



under a<H-SiOi? 1001 c-^^ lltks 18 of me United States Code and t.^^atjsuch ^<^<n(fui 
ti^i^xc sta(efnent<^ n'^ad*;- lecspaniu^s tne vs=KJity of mo application or parens hjsooui 

thareop, 

8y: 



Dennss Mewns 

Swo'-i-i to dofo§e ?ne ihjs day of '^\'C\r~ I 








Senai No.: 08/479,610 



Page 9 of 9 



Appeal 2009--003320 



ATTACHMENT BO 



THE U^^iTED STATES PATEI^T .AND TRADEMARK OFFICE 
re Patent Appi^ca^ion Q^f Nov. 1 6, 2009 

Apph-Couns: Bednof,?&ta;. Docket: YO98?~0?48Z 

Serial No . uB'479,610 Group Art Ur5>l. 17^5 

Fifed. .j..ine 7, 1995 Ex^^jviifi^r: M, Kor^oc 

Appeal 200^-003320 

To.' ; NEW SUPERCONDUC rsVE CO?v?EOUNDS HAViNG HIG^S 7R.ANSlTK>4 
TEMPERATlsRE. METf-iODS FO.R THEIR USE AND PREPARATION 

Coir$--s-!kvsk>ner for Pin«??ta P,0. E-ox 
1-5f! AK^>cancJro. VA .22313- j^tSO 

imCLARAIJON OE <gEOf^a BEONORZ Uf^ftER 

;< J GeofQ Bedoorj;, ckiidfir-;-.: ir5«t; 

1, I am a comventor of fhe referenced applicatiors. 

i iecdvod a M. S, Dsgrsf; in fv1iruvr3H>gy./C>y&laiKx}f-aphy' (1076| from the 
Ur?!V«n>!ly of iV^uen«rer sii Garj-v^^sr^y and a i-^^5.D dags-ee irs Ksa^tura; Soence (1982) 
from me Swr^s Pi-nJerai iaa5ik.ste of Tech.nokx^y (ETH) sr^ Zuosich •■ Svvsize.dan<.l 
7. s previoLiSiy 4>ub.m;tiod a de&iaralion da^e February 2, 20Df>. (^^-rio? Deij?^> .^tsos^i 

Is-! rviv Prior Oeciaraisors I rasporidad uv- ttsa liS.PTO rasporsso dakKt OcU" ^ ^ 

ai page 7 ^^-nici^ r.staa 'he foifew-ng wabpaga 

1 V . o o^*'- j-^^-V^! kX\oU ' v^^"<?.^ 

Which stales 

h; weriO uotJi-ip that there s'^: no accepted theory' to axr>fein tha high-ien-!^ ^ ^ 
h-'0;5v;'^! of ihi-? Ivpe os co?>!r<>i=nri fne BC\S..05aojv. which haci. proven hi i ^ 
n>5--?u.il tooi io undersiandino iOvver-iarnperal-.ira ma(anais< doro.<; not adeQuatosy 
a>^P a^n Pow the Coo.oer pair^i sn th=-.; r^e^v ooniP'Ounds hrjsd ^ogo^har at ;^urt! hit,5f-5 
u-inperetuse^j vVtieu Bednorz vvat=> asked how high-ten5pefah.ira 
«.M^>§Br;S;i-ityH^^^^^ vvorR$, ha jepNed. "H t oouid tali you. many ot the iheori.ste 
working on -he pfohiorn wr.n.iid be vesy sorprised."' 

5. i am .s>lir5;ri;rtirH) ^hi^v affidavit to oora-rsc^ni on certain reraarks n^ade In tn*^ 

Deoi7>son r^ss ApiX:<5i of ti>e Ek)aiTi of Pat^vr^ Appeals anc^ Iritenereiice^^ ot the Gniir\i 
S(ate^> Patei>r and "f radenoark Office (Board's Decision) dated 09..-1 7^2009. 

6. The Soai-xfs EteclsiOi? states at page 27, iir^es 3- 10, i;i i-egards to rny Prior- 
Affidaviit; 

With respect to il^e Examiner's reiianoa on the "Exploiirig 



A|-ipeal 2009-003320 



Page 'i of t> 



App..h50 t.i6/4793lO 



(App- Br. vol. 5, Evidence Appendix, Auachmept AO) whk..h ad<-1rey,jo<^*^ 
sne Bednorz quotatioi-5 iri this ;5rtk;[e (App, 8r,, vol 1, o, 200) 
S=Qi5i5ic.srniv. si5e BedriOi ;r afudavit fasls ?o addref>,ji the c^nide d;sployt;rc^ . 
wfvcn «tatei.. Uia? "there no accepted ir^eory lo explair; the hkih- 
tep;peratiire [s^ipercxjndt'Ctivityj behavior o? thss tyoe of coiTspour?d" 
(l^J^pk-'r-no Supp?condui;t;vilv", iast nara.K The absf>nce of such ;^ 
theof ¥ S:.;Pport?s the E xamine? j ipprad;ctab;lit>' po^^itic?n. 

i re$ppch?yi(;/ dic-a^ree ihal ( have atiet^-pted lo ~'ynden^)ine" what I wac^ 

reported to Isave said ir- the- Sxpiorirsg Supercoriductivity Article, 

3. b-^ the sast paragraph of my f^^r-or DecsaraSiOr- 1 declared that what I eiaied 
; herein >,^,as a lp.ift fttaterner;t. i reaffsrm that here. 

9. hi iiiy Prior fjecsaraiion i explain (he meaning of Ihe siatenienl afthbuted to ne 
' it t oouid ieil ypi.i. i-viany of the fheoriSks working or- the prohiem worski be very 
S irpiiSed" in ie-?pop\se to a pueitio;i koru the ^i-sterx^iewer atxoui the rrsechaoisn) Oi' 
Msgh Tc superoonductivky. 

h) fi appears fi-om the co?r!irienf in the Board's Docisbn quoled m paragraph 6 
atjove foat si ss rsot clear wiiaf the distincisoii Ls tiefween an expennientai -soier^tsat and 
a theoretk.:ai sciefitfSt io ar;d h^ow they thirsk about the research \,vork that they do. 

1 1 The sla'erneiii attnoptod io iVio sn ttjo Exploring Superoondociivity Arhcie was 
tc> rny recpiieciiori made het^rveer^ OcioDer 1987 arsd Decen)ber 10 19B7, i knov^^ it 
Vvv^is tielbre Decenit^er 10, 196/ Pince that i^i when the Nobei Pri.?e Ax^v^ard cerernc;ny 
inoK place, "this waa shortiy afler n?y ccnnyeritor. Aje.K Moeiier, aad i revealed our 
discovery, 

12. Siiv:,e, as stated In niv Phor ijeclaraticrK I am an expehmentai scser^riet, I 
x^-Oiaid i>ct have sti..i,n,vd n^v expei-insontal v-vpik tP w<.->rk <>a deveiopifio a, i{.>nnai 
methernaticai iheorv. Tp do so \^i.'onid have baen e professkonai misteke il worik:i 
hpv-e reor=ii-.\-l a sabst-^iitiai -^n-iP;.;nt ;n n-athoioatical technique^^ tnat existsn-,) 
ti-5eo?etk:al scionh5>t were expe;1 in, Mpreovar, by continpirig iiiy expedrreritai wOi^^ I 
was at>ie to inai^a furt-her Pontnbi.itsons to n^/ expenp-ienta; work. 
1 3 1 disaoree with the Board's Dedsiorr quoted in paragraph 6 above wiioio It 
p!a*es "isK^r-ihrarrtiy, ihe Bf:j.lnc:fr affkiavit iaikv t<.> address tha ariicip o^^sciOSi.irv= 
x^. hic.h states that there is nr? accepted theory lo pscpiain the high-tep^peratijre 
Appoai .>00Sr-p03320 Page 2 fjf 5 App. No. 08.-'<-^ ?9-8 1 0 



t=nvt i>3ra-K -Fhe absence of such a U-;eorv feypport& the Exan-^sf-ser's unpfed;c?ar>i;t\ 
posstion;' 

1 <K M i;v niy position thai Ihe sjaien?enl in the Expiorir -g Si.<perconduclivity Ariscfe 
"there no -cscxvensf^i rheory to expfesn th^^ h;gh-te;ripef3tijre rsuperconductsviivi 
i-)er?avior of type of c:oiT;pourk'f^ as quoled in the Board's Decision is refening to a 

1 5 s evp;esse(l my phy&ical yriciei-yj^and^ng of the phenon-senon that i Db&orv*x.s sn 

10 N ^ * - ^ ^ ^ o \ k ' * 

1 7, ' physscai inUjiiion"' to an oxperirfien^.csl scierifist is developed from the 
experimsnlai ^echnsques and apparatoo Ihey use and dale thai Ihey mea?>ore, 
■f his their "empiricai approaches." 

18 "Physioai intijitson" to a theoretical aoientisl is devoioped IVo^n i\m 
rnaihernaticai ar;d calculation techniqi^es ihey s.i$e i>.vhich inciudes numerical 
cnicLskiticn-3 or? ceniputers? the equations fhey daveiop and the data !i?at tt^ey 
i..-aicuiale Tnis is ihesr en?pincai app-roac.tses . 

i?) t5> ^p^^' rxwi^^i ,5 \i r-^\N-vti.\^ -"--io-^f Jits A-c on'-'N-i^' k v\ soed ov s 
developed "piiysicei intuition,"' 

20. A ths;on^:?iicai ecierstist does not mal^^e random calcuiations and an expedsnentai 
scientist does not rTiai<e random expenmoiits. Such a random approach wouid not 
result In cseful roauits, 

21 . VVisen a theoretical scie'itlst chooses to go into e padicuiar fheorelicai direction 
o?- when an experii-nenrai scieruiS! chooses io oo in a padicuiar OKper-n-ier^Jal 
direcliCiO, thai direction is guided Py "physicai intuiliofV wud a reasonable e>peotation 
of success in carrying OiK the experiment or calouiatlon arid a-rriving at a measured or 
oaiculated icsult 

22. BoiP the<>i-elicai and expehrrsentai scientists ai'e prin>arily gu-ded oy "phys-ooi 
■iitLiiiiOiV^ which is deveiopod Py educatioiial training and the tPeoreiicai week or 
experimenlai work that they do, 

2o, When .3 thoi>reticai or expedinentai resuit ;s achieved, thai result is 



Aopoal 2*>- 



App.No, 08/479,aia 



^A^nich ftsiiher deveiopa or enhances the scjemist -phyc.=ca^ intuifion;' 
2-^1 - Syslesn;alk.: exploration to a thaorelioai K-ianhs? o>ay for exarnple. -ndiide 
varying oer^aij^ pi;rafr?eie?^ used in a calculauon, niodifying approxiniate eqtiauonj; 
used srs the casculattoa or rnoditving a numeecal com putatiooal approach, AH of this 

done wilh a rea<;onapfe e.xpedaiion of gettsag succesftfyHy oafeuiated fes>jhP5 
2o Sysiematic exploration to an exporimental scioatist n-say for example snch.R-ie 
varyiao neriaia e>«perir5;en;ai eoodliions, e.g. ten^peratore, tin^e. pressure, a^ix of 
corsstiiates, etc. used aa oxpehrrserU in tatsricating sarnpies, aiodif'ying 
raeasi..! re relent apparaU.iS to better measure the pnysicai parameters, and meaauring 
rr^c^re aod Uiriere^vj phyc.icai paraniolars to get a fuller set of messared data , AN of 
t;il<5 done with a reasonebie expeoialior; of gethag successfuPy fabricated saraples 
aad a^easurBd results. 

;p^'> ia xio*>ing I uoie that ine cor;oepj of a ineory" as used iu solid etate saeace or 
other science*^ iri the broadest sense refers to tne "physical intuitioa^' tl^at soier^tisi 
nas about a phyc-^ioal pher;oreaaor^ based on which the scientist tenuis a 
■ piHjaumenoiogicai i.iaderetaivdiag" whson -eay r^ot t,>e aiTienabie to heiag pot ii^tc; aa 
easily used iern^ for straightforward caiouiahof^. Thss "pheaorrienolooical" 
rsadersfanding is pah of ihe"pt?ysical Ir^tuition" trial guides bott's the experimei^ial aad 
theoretioai scientist to pursue a padlcular directioa ir^ iaesr researoa Tnia -s io be 

<:^s a forrriai it-eory xvhicri ri-seans formal ar^aiyticai expression? in n;atherriasK".ai lorm 
based on firsr priric-ples. Expenmerital scsei'stists oeaeraliy do not deveiop or work c>a 
'for;:!5al ti^eohes" ssnc-e thss re-'-iuires extensive ti-ain-ao in tlie i7?athansahcai 
P)ra>alisniS. Ti->eoreticai soieniisis geaeraiiy do aot pedorn? physscai expedrneatatiori 
Since this regusres extensive traii^ing In the expenmantai techniques. .As stated above 
iK>tr> e^Dersme; i^ai and ti^eoreticai scientists use "physical IntuitiOi? and (.teveiop ano 
use their own form of ■'phenoi>ienologioal Iheoi'v" ^"^^f'^icr; iS their physical 
ui-iderstaadiog et a pbenoiyienon which guides the.?!) arid r>thers working in the field in 
furii?ef research aad devoiopiaeai. i\^y co •inventor, .Alex Mueiler, and f desonhad our 
piivsical i.indei'Standir5g of ocr disoavory in our pabiieafions and patent application 

. ua ^ WVs . Page 4 of 5 App>No, 06/478310 



usfid SI as a guide in iookjng for other high Tc, supej-corsductorB 

.i;'7. i hereby <1edare fhaf ail st-^tement^ made herein of rny i<r5ox*v1edge are true 

further i?i«se stateinesns were made wsirs ih^ i<now!edge that wii.^lld faise 
staiemente and the iske $o snade «sre punishable by lin-^ or ieiprisonsrseai, o? ixMi's. 
uuder Secnon lO0 1 of l^tle 18 of the Uniie^-j Scales Code and mst seci^ v^^-silfui faise . 
<5iatemenls made jeopardsze Ihe vaiidsiy of iJie appifcatbn or patent issued thereon. 



Dale 




Pags 5 of 5 



App.No- 08/4?9.ai0