Ex Parte Rupich et al

Patent Trial and Appeal Board

Sep 19, 2014

10758710 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN W. RUPICH, THOMAS KODENKANDATH,
WEI ZHANG, and XIAOPING LI
____________

Appeal 2012–008342
Application 10/758,7101
Technology Center 1700
____________

Before PETER F. KRATZ, JAMES C. HOUSEL, and GEORGE C. BEST,
Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
decision rejecting as unpatentable, under 35 U.S.C. § 103(a), claims 1, 3, 6,
7, 9–18, and 70–72 over the combined teachings of Malozemoff2 and Jin,3
claims 4, 5, and 12–17 adding Weinstein4 to the combination, claims 12 and

1 According to Appellants, the Real Party in Interest is American
Superconductor Corporation (Appeal Br. 1).
2 Alexis P. Malozemoff, et al., WO 01/08169 A2, published February 1,
2001 (Appellants refer to this reference as “Riley” (see e.g., Appeal Br. 7).
3 S. Jin, et al., Superconducting properties of YBa2Cu3O7-δ with partial rare
earth substitution, 173 Physics C 75–79 (1991).
4 Roy Weinstein, US 6,869,915 B2, issued March 22, 2005.
Appeal 2012–008342
Application 10/758,710

2
15 adding Wiesmann5 to the combination, and claim 18 adding Feenstra6 to
the combination.7 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We sustain the above rejections based on the findings of fact,
conclusions of law, and rebuttals to arguments8 expressed by the Examiner
in the Answer.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 1.136(a).

AFFIRMED

dm

5 Harold Wiesmann, et al., US 2003/0050195 A1, published March 13, 2003.
6 Roeland Feenstra, et al., US 5,972,847, issued October 26, 1999.
7 Appellants do not separately argue the claims, focusing solely on the
combination of Malozemoff and Jin as applied to independent claims 1 and
72 only (Appeal Br. 10–15).
8 The Reply Brief, filed May 1, 2012, contains new arguments directed to an
asserted distinction between bulk and thin-film superconductors not
presented in the Appeal Brief (Reply Br. 1–4, 6, and 7). Moreover,
Appellants discuss, for the first time, in the Reply Brief, data presented in
the Specification and Figure 4 (Reply Br. 5–6). We will not consider these
new arguments because Appellants have not provided a showing of good
cause explaining why the arguments could not have been presented in the
Appeal Brief. See 37 C.F.R. §§ 41.37, 41.41; Ex parte Borden, 93 USPQ2d
1473, 1477 (BPAI 2010) (informative).