Ex Parte Rupich et al - Page 14


                Appeal 2007-2236                                                                                   
                Application 10/991,738                                                                             
            1                                           (2)                                                        
            2                                      Enablement                                                      
            3          If we were to construe claim 89 on appeal to cover an article, we                           
            4   would consider the article to be something that looks like the article in Fig. 1                   
            5   having (1) a surface and (2) a superconductor layer.  The superconductor                           
            6   layer would be made of an oxide having the empirical formula AB2Cu3O7-x                            
            7   where A is a rare earth metal and B is an alkaline earth metal.  Given that                        
            8   "barium fluoride" is mentioned in claim 89, it may be that Rupich intends to                       
            9   limit the B to barium.  But see claim 90.  In any event, the superconductor                        
          10    layer must have a thickness of at least 0.5 micrometers and a critical current                     
          11    density of at least about 1 x 106 amperes per square centimeter.  We note that                     
          12    a broader invention is described in the specification in the sense that smaller                    
          13    thicknesses are described in some examples and the critical current density                        
          14    of claim 89 is what is characterized as the "more preferably" embodiment.                          
          15    Rupich is apparently dedicating to the public the articles where the                               
          16    superconductor has a thickness of at least about 0.5 micrometers but lack the                      
          17    claimed critical current density.                                                                  
          18           A claim in an unpredictable art must be supported by an enabling                            
          19    disclosure commensurate in scope with the breadth of the claim.  Corona                            
          20    Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 385 (1928)                                    
          21    (discussion dealing with claims 1,5 and 9); Consolidated Electric Light Co.                        
          22    v. McKeesport Light Co., 159 U.S. 465, 474-75 (1895); In re Fisher, 427                            
          23    F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).                                                        
          24           For the purpose of the appeal, we have accepted Rupich's contention                         
          25    that the critical current density is "unexpected."  We note that unlike many                       
          26    other applicants, Rupert appropriately and properly recites its alleged                            

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