Appeal No. 2002-0405
Application No. 07/325,269
by” in claims 3 and 19 encompasses superconductors prepared by
any method and, therefore, is not limited to appellants’
invention.11
3. Claims 3, 19/6 - 19/8 and 19/15 - 19/18 are
rejected under 35 U.S.C. § 102(a)12 as anticipated by or, in the
alternative, under 35 U.S.C. § 10313 as obvious over Bednorz.
Claims 3, and 19/15 - 19/18
Bednorz discloses a possible high Tc superconductivity in
the Ba-La-Cu-O system. According to Bednorz, compounds
11The text of claims 3 and 19 in the Appendix of Claims (Appeal
Brief, p. 10) is incorrect. Claims 3 and 19 as shown in the Appendix
do not reflect the amendment received September 5, 1995, wherein these
claims were amended to change the phrase “made according to the method
of . . ." to “obtainable by the method of . . . .” Since it appears
that appellants intended to limit the scope of these claims to
superconductors prepared by a sol-gel method, the patentability of
claims 3 and 19 over the prior art has been considered based on this
limitation. See, generally, Manual of Patent Examining Procedure,
§ 2173.06 (8th Ed., Aug. 2001), discussing avoidance of piecemeal
examination.
12“A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country before the invention thereof by the applicant for patent
. . . .”
13“(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of this
title, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter
pertains.”
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