Appeal No. 95-0537
Application No. 08/077,709
superconductivity (pages 267-268 of the “Engineer’s
Guide to High Tc Superconductivity” and Sahu et al,
p. 7, 2nd full paragraph). Relying upon Fisher, id.
[Fisher, 427 F.2d at 837-38, 166 USPQ at 22], it is
the Examiner’s position that the unpredictable
reactions between oxide superconductors and their
substrates requires that the claims be limited to
the specific substrate materials in the
specification.
Appellants have failed to establish otherwise. See In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984) ("after a prima facie case of unpatentability has been
established, the burden of going forward shifts to the
applicant"). Therefore, the rejection of claims 1-6 and 8-9
under 35 U.S.C. § 112, first paragraph, is affirmed.
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