Appeal No. 95-0537
Application No. 08/077,709
substrates and superconductive films disclosed in the
specification (Brief, pp. 20-21). Appellants argue that the
specification enables a person skilled in the art to make the
superconductive device claimed using any superconducting film
which is “a-axis oriented” and has its c-axes “aligned in one
preferential direction” and any substrate which has an
“anisotropic surface cell” (Brief, p. 22). We disagree.
Although applicants are not required to disclose every
species encompassed by their claims, even in an unpredictable
art, each case must be determined on its own facts. In this
case, appellants have disclosed one embodiment of the claimed
invention, a YBCO or thallium superconductive film grown on a
neodymium gallate substrate. Compare Angstadt, 537 F.2d at
502, 190 USPQ at 218 (armed with the specification and its
40 working examples, one having ordinary skill in the art
would have been able to determine which catalyst complexes
within the scope of the claims work to produce hydroperoxides
and which do not). According to the examiner (Answer, p. 7):
Appellant is not enabled for all substrate/
superconductor composites. It was well known in the
art that the oxide superconductors react
unpredictably and have thermal mismatch problems
with many substrates, thereby destroying
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