Ex Parte Kirkwood et al

Board of Patent Appeals and Interferences

Mar 14, 2002

07325269 (B.P.A.I. Mar. 14, 2002)

1This Merits Panel has reviewed this appeal concurrently with
Appeal No. 2001-0087, related Application No. 08/960,582, a divisional
of the present application. In the present case, the Examiner's
Answer was mailed on June 10, 1997. For reasons not clear from the
record, the file was not forwarded to the Board for review of the
appeal until January 16, 2002. In view of these circumstances, we
have taken this case up for decision out of turn.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 51
UNITED STATES PATENT AND TRADEMARK OFFICE
________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRAD L. KIRKWOOD,
THOMAS S. LUHMAN,
RONALD R. STEPHENSON,
and
MICHAEL STRASIK
__________
Appeal No. 2002-04051
Application No. 07/325,269
__________
ON BRIEF
__________
Before WILLIAM F. SMITH, Administrative Patent Judge, McKELVEY,
Senior Administrative Patent Judge, and POTEATE, Administrative
Patent Judge.
POTEATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 3, 19 and 22-24. Claims 1, 2, 4-18, 20 and
Appeal No. 2002-0405
Application No. 07/325,269
2Claim 1 reads as follows:
1. A method for preparing a solid superconducting mixed-metal
oxide in a predetermined shape and form, comprising the steps of:

(a) providing a solution of salts of metals contained in said
superconducting mixed metal oxide of a predetermined composition, each
of said salts being present in an amount necessary to provide the
respective predetermined stoichiometric amount of a metal required in
said superconductive mixed metal oxide; the counterions of each metal
ion, or the hydrolysis products of said counterions, in said solution
of salts being removable from said solution by evaporative methods;
(b) subjecting said solution to hydrolyzing conditions and
removing said counterions and hydrolysis products thereof from said
solution by evaporative methods with a substantial portion of the
solvent;
(c) converting said metal ions to a mixed-metal oxide precursor
of said superconducting mixed-metal oxide;
(d) peptizing said mixed-metal oxide precursor to form a viscous
polymeric sol;
(e) forming said viscous polymeric sol into a predetermined
shape and form and heat-setting said sol into a flexible, ductile,
handleable gel;
(f) firing said gel in the presence of oxygen at a temperature
and for a period of time sufficient to volatilize any remaining vapors
and organic materials to form said solid superconducting mixed metal
oxide.
2
21, which are all of the claims remaining in the application, are
allowed. Claims 3, 19 and 22 are representative of the subject
matter on appeal and are reproduced below:
3. A superconducting mixed-metal oxide obtainable by
the method of Claim 1.2
Appeal No. 2002-0405
Application No. 07/325,269
3Claims 5-9 and 15-18 depend from claim 1, see, supra, note 2.
For clarity, we indicate the respective claims from which claim 19
depends following the “/”.
4This document describes the compounds examined in Hor. See Hor,
p. 911, col. 2.
3
19. A solid superconducting mixed-metal oxide
obtainable by the method of Claims 5, 6, 7, 8, 9, 15, 16, 17
or 18.3
22. A solid superconducting mixed metal oxide of the
formulae A2GCu3O7-x or [Y1-yBay]2 CuO4-d wherein:
A is a Group II metal;
G is a Group III metal or a lanthanide;
x is from about 2 to 3;
y is 0 or 1; and
d is 0-4.
The prior art relied upon by the examiner is:
Hor et al. (Hor), “High-Pressure Study of the New Y-Ba-Cu-O
Superconducting Compound System,” Phys. Rev. Letters, 58(9),
pp. 911-912 (2 March 1987).
In addition, this Merits Panel relies on the following
references:
Wu et al. (Wu), “Superconductivity at 93 K in a New Mixed-Phase
Y-Ba-Cu-O Compound System at Ambient Pressure,” Phys. Rev.
Letters, 58(9), pp. 908-910 (2 March 1987).4
Appeal No. 2002-0405
Application No. 07/325,269
5This document is referenced by Hor as disclosing the solid-state
reaction method used for preparation of the compounds examined in Hor.
See, supra, note 4.
6This document describes the coprecipitation method used in
Bednorz. See Bednorz, p. 190, col. 1.
4
Chu et al. (Chu), “Evidence for Superconductivity above 40 K in
the La-Ba-Cu-O Compound System,” Phys. Rev. Letters, 58(4), pp.
405-407 (20 January 1987).5
Bednorz et al. (Bednorz), “Possible High Tc Superconductivity in
the Ba-La-Cu-O System,” Z. Phys. B-Condensed Matter, 64, pp.
189-193 (1986).
Bednorz et al. (Ref. No. [17]), “Phase Diagram of the (LaAlO3)1-x
(SrTiO3)x Solid-Solution System, for x
0.8," Mat. Res. Bull.,
84, pp. 181-187 (1983).6
GROUNDS OF REJECTION
Claims 3, 19 and 22-24 stand rejected under 35 U.S.C.
§ 102(a) or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Hor.
Having found stronger evidence of unpatentability, we vacate
this rejection in favor of new grounds of rejection under the
provisions of 37 CFR § 1.196(b) as set forth below.
BACKGROUND
The present invention relates to mixed metal oxide
superconducting materials. According to appellants,
superconductors produced by the sintering method (a conventional
process) have various drawbacks which limit their usefulness in
Appeal No. 2002-0405
Application No. 07/325,269
7Gotor et al. (Gotor), “Grain growth, sintering and weak links in
YBCO ceramics: advantage of sol-gel process,” Physica C 235-240, pp.
463-464 (1994).
5
high-current applications. Specification, p. 2, ll. 7-29. These
drawbacks include nonhomogeneity, brittleness and hardness, all
of which contribute to difficulty in fabricating parts utilized
in high-current applications. Id. According to appellants, they
have developed a sol-gel method for preparing superconducting
mixed-metal oxides which are different in structure and
performance characteristics than those of the prior art. Appeal
Brief, Paper No. 46, pp. 5-6. As evidence of the differences
between superconductors prepared by appellants’ sol-gel process
versus a conventional process, appellants rely on a 1994 article
written by Gotor et al.7 According to appellants, "[t]he paper,
which postdates Applicants effective filing date by some 6 years
and therefore is not prior art, describes experimental research
comparing 1-2-3 superconductors prepared by an undescribed
'commercial' process with products made by a sol-gel process."
Appeal Brief, p. 5.
Appeal No. 2002-0405
Application No. 07/325,269
6
DELIBERATIONS
While we have reviewed and evaluated the entire record in
rendering our decision, we have given particular consideration to
the following materials:
1. the instant specification, including all of the claims
on appeal;
2. appellants' Appeal Brief and Reply Brief (Paper Nos.
46 and 48);
3. the Examiner's Answer (Paper No. 47);
4. the eleven Declarations under 37 CFR § 1.131 received on
the following dates:
Dec. 11, 1989 (Paper No. 7);
Jul. 9, 1990 (Paper No. 10);
Jul. 9, 1990 (Supplement) (Paper No. 10);
Jul. 20, 1990 (Paper No. 12);
Jul. 20, 1990 (Supplement) (Paper No. 12);
Dec. 30, 1991 (Paper No. 20);
Mar. 10, 1992 (Paper No. 22);
Oct. 19, 1992 (Paper No. 26);
Dec. 10, 1992 (Paper No. 29);
Feb. 14, 1994 (Paper No. 34); and
Oct. 20, 1995 (Paper No. 40).
Appeal No. 2002-0405
Application No. 07/325,269
8“The specification shall contain a written description of the
invention, and of the manner and process of making and using it, in
such full, clear, 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 and shall set forth the
best mode contemplated by the inventor of carrying out his invention.”
7
5. the above-cited references as well as the documents
cited by the examiner and appellants during prosecution; and
6. the materials identified in our Decision in Appeal No.
2001-0087, mailed concurrently with this Decision.
NEW GROUNDS OF REJECTION
1. Claims 22-24 are rejected under 35 U.S.C. § 112, first
paragraph.8 The specification does not enable any person skilled
in the art to which it pertains, or with which it is most nearly
connected to make the invention commensurate in scope with these
claims.
The specification, while being enabling for y=0 and d=any
positive number less than 4, does not reasonably provide
enablement for y=1 or d=4. See specification, p. 9, ll. 28-32
(“Another metal oxide superconductor, when yttrium is present, is
represented by the formula of [Y1-[y]Ba[y]]2 CuO4-d, wherein d is
Appeal No. 2002-0405
Application No. 07/325,269
9Additionally, it appears that the claim limitations should be
0
y
1 and 0d
4. If y=0, then the resultant compound does not contain
barium. Similarly, if y=1, the compound does not contain yttrium and
when d=4, the compound does not contain oxygen.
10“The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter
which the applicant regards as his invention.”
8
zero or any positive number less than 4 and [y] is zero or any
positive number less than 1.”)9
2. Claims 3 and 19 are rejected under 35 U.S.C. § 112,
second paragraph10 as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention.
The original description as well as appellants’ own
statements evidence that the appellants regard their invention as
limited to superconductors made by a sol-gel method. See, e.g.,
specification, p. 10, l. 19-24 (“[I]t is also believed that the
superconductor products made according to the present invention
are novel and advantageous as compared to the prior art high-
temperature mixed metal oxide superconductors which are made by
sputtering and sintered powder methods.”); Appeal Brief,
p. 5 (“Claims 3 and 19 are in ‘product-by-process’ form, and
accordingly, are drawn to those materials resulting from
Applicants’s [sic] novel sol-gel process.”) The term “obtainable
Appeal No. 2002-0405
Application No. 07/325,269
11The text of claims 3 and 19 in the Appendix of Claims (Appeal
Brief, p. 10) is incorrect. Claims 3 and 19 as shown in the Appendix
do not reflect the amendment received September 5, 1995, wherein these
claims were amended to change the phrase “made according to the method
of . . ." to “obtainable by the method of . . . .” Since it appears
that appellants intended to limit the scope of these claims to
superconductors prepared by a sol-gel method, the patentability of
claims 3 and 19 over the prior art has been considered based on this
limitation. See, generally, Manual of Patent Examining Procedure,
§ 2173.06 (8th Ed., Aug. 2001), discussing avoidance of piecemeal
examination.
12“A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country before the invention thereof by the applicant for patent
. . . .”
13“(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of this
title, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter
pertains.”
9
by” in claims 3 and 19 encompasses superconductors prepared by
any method and, therefore, is not limited to appellants’
invention.11
3. Claims 3, 19/6 - 19/8 and 19/15 - 19/18 are
rejected under 35 U.S.C. § 102(a)12 as anticipated by or, in the
alternative, under 35 U.S.C. § 10313 as obvious over Bednorz.
Claims 3, and 19/15 - 19/18
Bednorz discloses a possible high Tc superconductivity in
the Ba-La-Cu-O system. According to Bednorz, compounds
Appeal No. 2002-0405
Application No. 07/325,269
14Gotor (see discussion, infra, pp. 16-17) does not provide the
requisite evidence required to overcome this rejection. The Gotor
article does not provide a comparison of the properties of
superconductors prepared by a sol-gel process with superconductors
made by a coprecipitation process as disclosed in Bednorz (i.e., Ref.
No. [17]).
10
exhibiting high temperature superconductivity were prepared by a
coprecipitation method. Bednorz, p. 190, col. 1. Claims 3 and
19/15 - 19/18 are product-by-process claims which are directed to
superconducting mixed-metal oxides made by a sol-gel method. The
patentability of product-by-process claims is based on the
product itself and not the method of production. In re Thorpe,
777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Where . . . the claimed and prior art products are
identical or substantially identical, or are produced
by identical or substantially identical processes, the
PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess
the characteristics of his claimed product . . . .
Whether the rejection is based on "inherency" under
35 U.S.C. § 102, on "prima facie obviousness" under
35 U.S.C. § 103, jointly or alternatively, the burden
of proof is the same, and its fairness is evidenced by
the PTO's inability to manufacture products or to obtain
and compare prior art products.
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)
(citations and footnote omitted).14 Since there would be no
reason to expect that the claimed compounds differ from those of
Bednorz, claims 3 and 19/15 - 19/18 are anticipated by, or
obvious over, Bednorz.
Appeal No. 2002-0405
Application No. 07/325,269
11
Claims 19/6 - 19/8
Bednorz teaches superconducting compounds containing copper
(claim 19/6), barium (claim 19/7), and lanthanum (claim 19/8).
Therefore, claims 19/6 - 19/8 are anticipated by, or obvious
over, Bednorz for the same reasons discussed above with respect
to claims 3 and 19/15 - 19/18.
4. Claims 19/5 and 19/9 are rejected under 35 U.S.C. 103 as
obvious over Bednorz in view of the admitted prior art.
Claim 19/5
Bednorz discloses superconducting mixed metal oxides
prepared by the coprecipitation method disclosed in Ref. No.
[17]. Bednorz, p. 190, col. 1. Ref. No. [17] discloses a
coprecipitation method wherein aqueous solutions of La, Al, Sr
and Ti nitrates were added to an aqueous solution of (NH4)2CO3 to
form metal salts. Ref. No. [17], p. 182. Accordingly, it would
have been obvious to have used organic salts to provide the
respective predetermined stoichiometric amounts of the metals
required in the claimed superconducting mixed metal oxides.
Claim 19/9
The present specification teaches that metal superconductors
containing gadolinium-barium-copper “have been reported to
exhibit superconducting properties.” Specification, p. 9, l. 32
Appeal No. 2002-0405
Application No. 07/325,269
12
- p. 10, l. 3 (emphasis added). Thus, it would have been obvious
to have produced a superconducting mixed metal oxide using
gadolinium in place of lanthanum given Bednorz’ teaching that
superconductivity is exhibited in the La-Ba-Cu-O mixed metal
oxide system.
5. Claims 3, 19/5 - 19/8 and 19/15 - 19/18 are rejected
under 35 U.S.C. § 102(a) as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as obvious over Chu.
Claims 3 and 19/15 - 19/18
Chu discloses superconducting compounds of the La-Ba-Cu-O
system. Since there would be no reason to expect that the
claimed compounds differ from those of Chu, claims 3 and 19/15 -
19/18 are anticipated by, or obvious over, Chu. See, supra, pp.
9-10 (discussion on patentability of product-by-process claims).
Claim 19/5
Chu discloses the preparation of superconductive mixed metal
oxides in the La-Ba-Cu-O system by a solid-state reaction method
wherein La2O3, CuO and BaCO3 (a metal salt) are mixed. Chu, p.
405, col. 1. For the reasons discussed above (see, supra, pp. 9-
10), there would be no reason to expect that the claimed
compounds differ from those of Chu. Therefore, claim 19/5 is
anticipated by, or obvious over, Chu.
Appeal No. 2002-0405
Application No. 07/325,269
15This falls within the range of appellants’ invention. See,
supra, note 9.
13
Claims 19/6 - 19/8
Chu teaches superconducting mixed metal oxides containing
copper (claim 19/6), barium (claim 19/7), and lanthanum (claim
19/8). Since there would be no reason to expect that the claimed
compounds differ from those of Chu (see, supra, pp. 9-10), claims
19/6 - 19/8 are anticipated by, or obvious over, Chu.
6. Claims 19/9 and 22-24 are rejected under 35 U.S.C. § 103
as obvious over Chu in view of the admitted prior art.
Claim 19/9
Claim 19/9 is rejected as obvious over Chu in view of the
admitted prior art for the same reasons discussed above with
respect to Bednorz. See, supra, pp. 11-12.
Claims 22-24
Chu discloses superconducting compositions represented by
the formula (La1-x-Bax)2CuO4-y wherein x=0.20 or 0.1515. Chu, p.
405, col. 1. It would have been obvious to have replaced La with
another Group III metal such as Y in the claimed formula given
Chu’s teaching that Ba may be replaced with Sr, i.e., another
Group II metal (Chu, p. 407, col. 2), and the admitted prior art
which teaches that yttrium-barium-copper oxide compounds were
Appeal No. 2002-0405
Application No. 07/325,269
14
known to have superconducting properties. Specification, p. 9,
l. 32 - p. 10, l.3. Further, it would have been obvious to have
replaced Ba ions with Sr ions in La-Ba-Cu-O superconducting
compounds given Chu’s teaching of known superconductivity in the
La-Sr-Cu-O system. Chu, p. 407, col. 2.
7. Claims 3, 19/5 - 19/8, 19/15 - 19/18 and 22-24 are
rejected under 35 U.S.C. § 102(a) as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as obvious over Wu.
Claims 3 and 19/15 - 19/18
Wu discloses a superconducting compound of the Y-Ba-Cu-O
system. Since there would be no reason to expect that the
claimed compounds differ from those of Wu, claims 3 and 19/15 -
19/18 are anticipated by, or obvious over, Wu. See, supra, pp.
9-10 (discussion on patentability of product-by-process claims).
Claim 19/5
Wu discloses the preparation of superconducting mixed metal
oxides in the Y-Ba-Cu-O system by a solid-state reaction method
wherein Y2O3, CuO and BaCO3 are mixed. Wu, p. 908, col. 2.
Accordingly, there would be no reason to expect that the claimed
compounds would differ from those of Wu (see, supra, p. 9-10),
and claims 3 and 19/15 - 19/18 are anticipated by, or obvious
over, Wu.
Appeal No. 2002-0405
Application No. 07/325,269
16In the Appeal Brief (p. 6), appellants assert that the
superconductors of claims 22-24 have superior properties compared to
the superconductors described in Hor (the same compounds disclosed in
Wu, see, supra, note 4) because Hor obtained multiphase samples and
Hor utilized a solid-state method, rather than a sol-gel process to
prepare the superconductors. This argument is without merit since
claims 22-24 are not limited to single-phase superconductors or “sol-
gel derived” superconductors. See In re Mraz, 455 F.2d 1069, 1072-73,
173 USPQ 25, 28 (CCPA 1972).
15
Claims 19/6 - 19/8
Wu teaches superconducting compounds containing copper
(claim 19/6), barium (claim 19/7), and lanthanum (claim 19/8).
There would be no reason to expect that the claimed compounds
would differ from those of Wu (see, supra, pp. 9-10), and claims
19/6 - 19/8 are anticipated by, or obvious over, Wu.
Claims 22-24
Wu discloses superconducting compositions represented by the
formula (La1-x-Bax)CuO3-
wherein x=0.20 or 0.15 (Wu, p. 908, col.
1) as well as “a stable and reproducible superconductivity
transition” in compositions having the formula (Y1-x-Bax)2CuO4-y
(Wu, p. 908, abstract and col. 1).16 Wu further discloses that
Ba may be replaced by Sr (claim 24) in the La-Ba-Cu-O system.
Wu, p. 908, col. 1. Accordingly, there would be no reason to
expect that the claimed compounds would differ from those of Wu
(see, supra, pp. 9-10), and claims 22 - 24 are anticipated by, or
obvious over, Wu.
Appeal No. 2002-0405
Application No. 07/325,269
16
9. Claim 19/9 is rejected under 35 U.S.C. § 103 as obvious
over Wu in view of the admitted prior art.
It would have been obvious to have produced a
superconducting mixed metal oxide using gadolinium in place of
yttrium given Chu’s teaching that superconductivity is exhibited
in the Y-Ba-Cu-O mixed metal oxide system. See, supra, pp. 11-12
(discussing the rejection of claim 19/9 as obvious over Bednorz
in view of the admitted prior art).
OTHER ISSUES
In the event that appellants elect to continue prosecution
of this case, we recommend that both appellants and the examiner
consider the following related issues:
1. The Gotor Article
Appellants rely on Gotor as providing "unsolicited,
independent evidence from researchers having no connection with
Boeing or with the present Applicants to suggest that sol-gel
products differ from those of the Hor prior art because of their
method of manufacture." Appeal Brief, p. 5. Hor examined Y-Ba-
Cu-O compounds prepared through solid-state reaction in
accordance with “previously reported” methods, i.e., the methods
disclosed in Wu. Hor, p. 911, col. 2. Should Appellants rely on
Appeal No. 2002-0405
Application No. 07/325,269
17
the Gotor article to overcome the new grounds of rejection based
on Wu, we note the following deficiencies in regard to the Gotor
article.
Gotor compares the properties of superconductors made by a
sol-gel method with superconductors made by an undisclosed
commercial process. There is no evidence that the sol-gel method
utilized by Gotor is the same as that of the present invention.
Rebuttal evidence must represent a comparison between the claimed
invention and the closest prior art. In re Malagari, 499 F.2d
1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Absent knowing the
commercial process used to prepare Gotor’s samples, we cannot
conclude that Gotor’s analysis represents a comparison of sol-gel
derived superconductors with the closest prior art. As
appellants correctly observe, Gotor’s testing is limited to sol-
gel powders prepared from an aqueous nitrated solution complexed
by citric acid. Reply Brief, p. 2. In addition, Gotor only
compares superconductors of the Y-Ba-Cu-O system. The claims are
not limited to superconductors made using citric acid, nor are
they limited to Y-Ba-Cu-O compounds. A showing of unexpected
results must be commensurate in scope with the claims. In re
Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1688 (Fed. Cir. 1995).
Appeal No. 2002-0405
Application No. 07/325,269
18
2. The Rule 131 Declarations
In the event that the appellants attempt to swear behind the
publication date of Wu, i.e., March 2, 1987, we note the
following deficiencies in the Rule 131 declarations. In order to
establish invention prior to the effective date of a reference,
the declarant must “establish reduction to practice prior to the
effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application.” 37 CFR § 1.131.
The declaration filed October 20, 1995 under 37 CFR § 1.131 is
insufficient to establish a date of invention prior to March 2,
1987. The declaration relies on events which were documented in
an Invention Disclosure. See Oct. 20, 1995 Declaration,
paragraphs 4 & 5. However, the Invention Disclosure itself is
not provided as an exhibit. The declarants state that one of the
inventors discussed the “invention” with scientists on or about
February 10, 1987. Id. at paragraph 5. Declarants further
allege that the inventors worked “as time and budget allowed
throughout February and early March” until completion of the
experiments described in Exhibit 1 of their previous declaration.
Id. at paragraph 6. These statements alone do not establish due
Appeal No. 2002-0405
Application No. 07/325,269
17In the event that appellants elect to continue prosecution in
this case and intend to maintain their reliance on Exhibits 1-3 as
showing a reduction to practice on March 6, 1987, we recommend that
they provide a typed copy of the exhibits, since the exhibits are not
legible in their present form.
1835 U.S.C. § 101 prevents two patents from issuing on the same
invention, i.e., identical subject matter. In re Vogel, 422 F.2d 438,
440, 164 USPQ 619, 620 (CCPA 1970).
19“[D]ouble patenting of the obviousness type . . . is a
judicially created doctrine grounded in public policy (a policy
reflected in the patent statute) rather than based purely on the
precise terms of the statute. The purpose of this rejection is to
prevent the extension of the term of a patent, even when an express
statutory basis for the rejection is missing, by prohibiting the
issuance of the claims in a second patent not patentably distinct from
the claims of the first patent. . . .
(continued...)
19
diligence from a time prior to March 2, 1987 until the alleged
actual reduction to practice on March 6, 1987.17 Id. at
paragraph 7. Appellants must state with particularity and
provide evidence of the sequence of events which occurred from a
specified time prior to March 2 until the actual reduction to
practice on March 6. See generally, In re Nelson, 420 F.2d 1079,
164 USPQ 458 (CCPA 1970).
3. Double Patenting
Upon remand of the application, the examiner should
determine whether claims 3 and 19 should be subject to a
provisional double patenting rejection under either statutory18
or non-statutory19 grounds as being unpatentable over claims 21-
Appeal No. 2002-0405
Application No. 07/325,269
19(...continued)
. . . .
. . . It is well-established that a common assignee is entitled
to proceed with a terminal disclaimer to overcome a rejection based on
double patenting of the obviousness type. . . . Since the second
patent would expire simultaneously with the first, this use of a
terminal disclaimer is consistent with the policy that the public
should be free to use the invention
as well as any obvious modifications at the end of the patent's term."
In re Longi, 759 F.2d 887, 892-94, 225 USPQ 645, 648-49 (Fed. Cir.
1985) (citations omitted).
20The prohibition against a double patenting rejection does not
apply where an applicant voluntarily files a divisional application
without a requirement for restriction by the examiner. 35 U.S.C. §
121.
20
30 of copending application Serial No. 08/960,582.20
Independent claim 21 of the copending application recites a
superconducting mixed-metal oxide manufactured using the same
method steps recited in claim 1, i.e., the method of preparing
the superconducting mixed-metal oxide of claim 3. Claim 21
includes two additional process limitations. Claims 22-30 of the
copending application depend from claim 21 and recite the same
limitations as, and, in fact, are essentially identical to,
claims 19/5 - 19/9 and 19/15 - 19/18. Whether the claims are
properly rejected on the grounds of statutory or non-statutory
double-patenting should be considered in light of In re Thorpe
and In re Best, discussed supra pp. 9-10.
Appeal No. 2002-0405
Application No. 07/325,269
21
4. 35 U.S.C. § 112, First Paragraph
As stated above, we have interpreted claims 3 and 19 as
limited to superconductors prepared by a sol-gel process. See,
supra, note 11. If, during further prosecution, appellants do
not amend the claims to limit the scope to superconductors made
by the sol-gel method, then the examiner should consider the
propriety of a rejection under 35 U.S.C. § 112, first paragraph.
See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971)(Once it is determined that the subject matter defined by
the claims is particular and definite under 35 U.S.C. § 112,
second paragraph, the analysis turns to whether the scope of
protection sought is supported by the disclosure under 35 U.S.C.
§ 112, first paragraph.)
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, "[a] new
ground of rejection shall not be considered final for purposes of
judicial review."
37 CFR § 1.196(b) also provides that appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
Appeal No. 2002-0405
Application No. 07/325,269
22
following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application will
be remanded to the examiner . . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record . . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
VACATED; 37 CFR § 1.196(b)
WILLIAM F. SMITH )
Administrative Patent Judge )
)
) BOARD OF PATENT
FRED E. MCKELVEY ) APPEALS AND
Senior Administrative Patent Judge ) INTERFERENCES
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
LRP:hh
Appeal No. 2002-0405
Application No. 07/325,269
23
JOHN C. HAMMAR
THE BOEING COMPANY
P.O. BOX 3707 M/S 13-08
SEATTLE, WA 98124-2207