Appeal No. 95-0537
Application No. 08/077,709
Rejection under 35 U.S.C. § 101
Claims 1-3 and 5 are rejected under 35 U.S.C. § 101 as
reading on inoperative species. However, the specification
discloses a preferred superconductive device comprising a YBCO
superconducting film, having greater than 90% a-axis oriented
and over 90% c-axis aligned in one direction, deposited on a
neodymium gallate substrate (Specification, p. 5, line 34-p.
7, line 4). Therefore, we reverse the rejection of claims 1-3
and 5 under 35 U.S.C. § 101. See Envirotech Corp. v. Al
George, Inc., 730 F.2d 753, 762, 221 USPQ 473, 480 (Fed.
Cir. 1984) ("the defense of non-utility cannot be sustained
without proof of total incapacity"); see also Brooktree Corp.
v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24
USPQ2d 1401, 1412 (Fed. Cir. 1992) ("[t]o violate §101 the
claimed device must be totally incapable of achieving a useful
result").
Rejection under 35 U.S.C. § 102(a)/103
Claims 1, 2 and 5 are rejected under 35 U.S.C. §
102(a)/103 as being unpatentable over Eom.
Claim 1 on appeal relates to a superconductive device
comprising a high temperature superconductive film "having at
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