Ex Parte Simon et al

Board of Patent Appeals and Interferences

Aug 30, 2000

08433818 (B.P.A.I. Aug. 30, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today was not written for publication in a law
journal and is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RANDY W. SIMON, CHRISTINE E. PLATT,
ALFRED E. LEE and GREGORY S. LEE
________________
Appeal No. 1997-2063
Application No. 08/433,818
________________
HEARD: August 16, 2000
________________
Before KIMLIN, WALTZ and TIMM, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 13-17,
19, 22, 23, 25, 26 and 28-31. Claims 11 and 12, the other claims
remaining in the present application, stand withdrawn from
consideration. Claims 13 and 16 are illustrative:
13. A superconductor device comprising:
(a) a substrate of crystalline lanthanum aluminate; and
(b) at least one film of a crystalline superconductor
deposited on the substrate wherein said crystalline substrate and
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Application No. 08/433,818
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crystalline film are chemically compatible so that there is
substantially no chemical interaction between the superconductor
and the substrate.
16. The superconductor device of claim 13, wherein the
superconductor is a layered perovskite oxide compound comprised
of metallic elements selected from the group consisting of
yttrium, erbium, lanthanum, neodymium, samarium, europium,
gadolinium, dysprosium, holmium, thulium, ytterbium, lutetium,
and thallium.
In the rejection of the appealed claims, the examiner does
not rely upon prior art.
Appellants' claimed invention is directed to a
superconductor device comprising a crystalline lanthanum
aluminate substrate and a film of a crystalline superconductor
deposited thereon. According to appellants' specification, the
lanthanum aluminate substrate is superior to the strontium
titanate substrate of the prior art with respect to dielectric
constant at superconductive temperatures.
Appealed claims 13-17, 19, 22, 23, 25 and 28-31 stand
rejected under 35 U.S.C. § 112, first paragraph, as being based
upon a non-enabling disclosure. Claims 16, 25 and 30 stand
rejected under 35 U.S.C. § 112, first paragraph, as being based
upon a specification that does not contain a written description
of the claimed subject matter. In addition, appealed claims
13-17, 19, 22, 23, 25, 26 and 28-31 stand rejected under the
judicially created doctrine of obviousness-type double patenting
over U.S. Patent No. 5,523,282.
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Application No. 08/433,818
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We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we will
sustain the examiner's rejection under the judicially created
doctrine of obviousness-type double patenting. However, for
essentially those reasons presented by appellants, we will not
sustain either of the examiner's rejections under 35 U.S.C.
§ 112, first paragraph.
Regarding the double patenting rejection, appellants do not
contest this rejection in the paragraph bridging pages 28 and 29
of the principal brief. Appellants state that they intend "to
file a terminal disclaimer to overcome the obviousness-type
double patenting rejection." Accordingly, we will summarily
affirm the rejection.
We now turn to the examiner's rejection under 35 U.S.C.
§ 112, first paragraph, on the basis that the specification is
non-enabling for the breadth of protection sought by the appealed
claims. In essence, it is the examiner's position that at the
time of filing the parent application to the present application,
the field of superconductivity was too unpredictable to enable
one of ordinary skill in the art to practice the claimed
invention of forming a superconductor device comprising any
crystalline superconductor on a substrate of crystalline
lanthanum aluminate. According to the examiner, appellants'
claims should be limited to the particular superconductor
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Application No. 08/433,818
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materials disclosed in the present specification. However, as
properly argued by appellants, unpredictability is but one of
eight factors to be considered in determining the enabling
qualities of a specification. Another criteria to be considered
is whether the specification provides sufficient guidance for one
of ordinary skill in the art to practice the invention within the
scope of the claims without undue experimentation. On this
point, appellants have submitted into evidence a Declaration by
Dr. Stuart A. Wolf, an expert in the field of superconductive
materials. In relevant part, the Declaration provides expert
testimony that "only about 2-3 man days of experimentation" would
be required of one of ordinary skill in the art to determine
which superconductive materials would be suitable for use in the
present invention (see page 4 of Declaration). Dr. Wolf bases
this testimony on the fact that appellants' specification teaches
that suitable superconductive materials "have a structure,
lattice constants, and coefficient of thermal expansion that
closely match those of LaAlO3 and are chemically compatible with
LaAlO3" (page 4 of Declaration). While the examiner is not
persuaded by the Declaration because, according to the examiner,
the Declaration is only relevant to specific superconductive
materials, Dr. Wolf states that appellants' specification "also
teaches how to select other perovskite superconductors suitable
for deposition, without undue or extensive experimentation"
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(page 4 of Declaration). To the extent that the examiner's
criticism is based upon a concern that the breadth of the claims
embraces inoperable, i.e., non-superconductive materials, it must
be borne in mind that it is not the function of the claims to
specifically exclude possible inoperable substances. In re Dinh-
Nguyen, 492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974); In re
Anderson, 471 F.2d 1237, 1242, 176 USPQ 331, 334-35 (CCPA 1973).
See also In re Kamal, 398 F.2d 867, 872, 158 USPQ 320, 324 (CCPA
1968). Indeed, since the claims require a "superconductor"
deposited on a particular substrate, it stands to reason that a
non-superconductive material would not be within the scope of the
appealed claims.
Concerning the examiner's rejection of claims 16, 25 and 30
under § 112, first paragraph, as being based upon a specification
that does not provide descriptive support for the layered
perovskite oxide compound comprised of the recited metallic
elements, we cannot agree with the examiner that "[i]t is unclear
where the superconductor language of claims 16, 25 and 30 is in
the original specification" (page 5 of Answer). In assessing the
adequacy of the descriptive nature of a specification, it must be
determined whether the original specification reasonably conveys
to one of ordinary skill in the art that the inventors had in
their possession, as of the filing date of the application, the
subject matter encompassed by the claim language at issue.
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Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111,
1116 (Fed. Cir. 1991). In the present case, our review of
appellants' specification as a whole, including the discussion
provided in the BACKGROUND OF THE INVENTION, leads us to conclude
that appellants had in their possession, at the time of filing
the parent application, the superconductive materials recited in
claims 16, 25 and 30. In particular, the paragraph bridging
pages 1 and 2 of the present specification discusses newer
superconductive compounds containing four metallic elements,
including bismuth or thallium instead of a rare earth element.
In the second paragraph at page 1 of the specification the known
superconductive materials, R1Ba2Cu3O7, are discussed. In our
view, the specification describes appellants' invention as
replacing a strontium titanate substrate with one of lanthanum
aluminate for such known superconductive materials. Hence, we
find that the superconductive materials defined by claims 16, 25
and 30 are fairly described in appellants' specification within
the meaning of 35 U.S.C. § 112, first paragraph.
In conclusion, the examiner's rejections under 35 U.S.C.
§ 112, first paragraph, are reversed. Since we have sustained
the examiner's rejection of all the appealed claims under the
judicially created doctrine of obviousness-type double patenting,
the examiner's decision rejecting the appealed claims is
affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
ECK:clm
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Application No. 08/433,818
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