Appeal 2006-2121
Application 10/025,473
The Examiner has not carried his initial burden of proof. In explaining his
rationale for making the rejection before us, the Examiner states that
In the instant specification, applicant has not specifically disclosed
conclusive evidence that the claimed materials have been produced (or
methods of making such materials). Applicant alludes to critical
temperatures above 180K (page 6, Fig 3), but no ‘hard data’ has been
provided (actual temperatures vs. resistivity plots, photomicrographs, etc.) to
support applicant’s contention of such incredible superconductive properties.
In fact no inventive examples appear in the specification. It is unclear if
applicant has produced C20 fullerene molecules polymerized into a one-
dimensional chain, or if such is only a theoretical discussion. [Answer 4].
The Examiner further states “It should be noted that at the time the invention
was made, the theoretical mechanism of superconductivity in these materials was
not well understood. (This is still the case today).” (Answer 5). In order to
support his stated position the Examiner refers to a lecture by a Professor Chu in a
lecture at the Patent and Trademark Office held on October 7, 1987 (Answer 6).
However, the Examiner has not presented a transcript of this lecture.
Rather than carrying his initial burden of establishing a prima facie case, the
Examiner has inappropriately leaped to the conclusion that the specification, as
originally filed, does not provide an enabling disclosure for the invention as now
claimed. The first paragraph of § 112 requires nothing more than an objective
enablement. As stated above, the Examiner has not provided a transcript of the
lecture by Professor Chu. Thus, the Examiner has not provided persuasive
evidence to support his reason for doubting the assertions in the specification as to
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