Interference No. 101,981
(decision on motions, paper no. 131, pp. 12-13), stating that:
[T]he motion to substitute the proposed count is denied because the proposed language “A
body comprising a crystalline essentially single phase composition” would appear to include
“bodies” with multiple phases due to the open language “comprising” whereas the present
count, as noted by Batlogg, is limited to an “essentially single phase composition” which the
primary examiner considered to be patentably distinct from the multiple phase materials.
However, Batlogg’s alternative request is granted to the extent that the undersigned
Examiner-in-Chief finds that the count excludes a composition that contains a significant
amount of a non-superconducting (tetragonal) phase, i.e., the count is limited to an
‘essentially single phase’ superconducting composition. Plainly, a composition with a
significant amount of a non-superconducting phase, eg., more than 10%, would be outside
the scope of the count.
As the above passage indicates, the APJ’s focus was on the single-phase characteristic of the
interfering subject matter.17 Multiphase materials with the same superconductive property as
required by the count were already known (see Chu et al). They were, in fact, the starting point
for the work that eventually became the subject matter of this interference. It follows, therefore,
that the count, though requiring the same superconductive property, could not read on the prior
art multiphase materials. In the context of clarifying the distinction between single-phase and
known multiphase materials, the APJ determined that the term corresponded to the proportion of
17 See the Decision on Motions (paper no. 131). Numerous statements are made contrasting single
phase from prior art multi-phase materials. See p. 7: “Indeed, the examiner stated in his office action
that the ‘present claim language is interpreted as excluding multi-phase materials of the type taught
by Chu et al.’”. See sentence bridging pp. 14-15: “The count is directed to single phase
compositions, which have been found to be patentably distinct from the multiple phase
compositions, and, as pointed out by Chu, only claims drawn to the separately patentable single
phase compositions should be designated as corresponding to count 1.”
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