Appeal No. 1997-2063
Application No. 08/433,818
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we will
sustain the examiner's rejection under the judicially created
doctrine of obviousness-type double patenting. However, for
essentially those reasons presented by appellants, we will not
sustain either of the examiner's rejections under 35 U.S.C.
§ 112, first paragraph.
Regarding the double patenting rejection, appellants do not
contest this rejection in the paragraph bridging pages 28 and 29
of the principal brief. Appellants state that they intend "to
file a terminal disclaimer to overcome the obviousness-type
double patenting rejection." Accordingly, we will summarily
affirm the rejection.
We now turn to the examiner's rejection under 35 U.S.C.
§ 112, first paragraph, on the basis that the specification is
non-enabling for the breadth of protection sought by the appealed
claims. In essence, it is the examiner's position that at the
time of filing the parent application to the present application,
the field of superconductivity was too unpredictable to enable
one of ordinary skill in the art to practice the claimed
invention of forming a superconductor device comprising any
crystalline superconductor on a substrate of crystalline
lanthanum aluminate. According to the examiner, appellants'
claims should be limited to the particular superconductor
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