DETAILED ACTIONNotice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/29/2025 has been entered.
Claim Objections
Claims 19 and 26 are objected to because of the following informalities:
In reference to claim 19, in line 2 amend “a thickness” to “the thickness”, in order to ensure proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 26, in line 6, amend “the surface” to “a surface”, in order to ensure proper antecedent basis in the claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14, 18, 19, 21, 23 and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In reference to claim 14, the limitation “a conformal coating of a sintering aid film has a thickness of one nanometer to two nanometers, wherein the sintering aid film is deposited as substantially uniformly distributed islands” is recited in lines 4-6. While there is support in the original disclosure that the conformal coating of the sintering aid film has a thickness of less than three nanometers at [0009], however, [0041] states from about 1 to about 3 atomic layer deposition (ALD) cycles, a monolayer does not exist around each 8YSZ particle, instead preferring the formation of small Al2O3 islands forming a submonolayer of coverage. At 5ALD cycles, we did have a conformal monolayer of Al2O3 around each substrate particle, ~0.5 nm in thickness. Therefore, it is clear that when the coating includes substantially uniformly distributed islands, the layer is a submonolayer and will have a thickness less than 0.5 nm and there is no support for the coating to include both substantially uniformly distributed islands and a thickness of one nanometer to two nanometers.
Regarding dependent claims 18 and 19, these claims do not remedy the deficiencies of parent claim 14 noted above, and are rejected for the same rationale.
In reference to claim 21, the limitation “the conformal coating is formed by 5 to 7 cycles of atomic layer deposition” is recited in lines 1-2. Claim 9, on which claim 21 depends recites the conformal coating comprises a plurality of distrusted islands on the surface of the core substrate in lines 6-8. While there is support in the original disclosure that the coating maybe formed from 1-7 atomic layer deposition (ALD) cycles (Specification, [0042]). However, the Specification discloses that at 5 ALD cycles a monolayer forms from about 1 to about 3 ALD cycles, a monolayer does not exist, rather islands forming a submonolayer of coverage is formed ([0041]). Thus, there is no support for a conformal coating including islands to be formed from 5 to 7 cycles of ALD, as presently claimed.
Regarding dependent claims 23 and 25, these claims do not remedy the deficiencies of parent claim 21 noted above, and are rejected for the same rationale.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In reference to claim 20, the limitation “The solid oxide fuel cell of claim 17” is recited in line 1. Claim 17 has been cancelled. Therefore the metes and bounds of the claim are unclear. For the purpose of compact prosecution, the claim will be interrupted to depend from claim 9. However, clarification is requested.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In reference to claim 19, the limitation “a thickness of about one nanometer” is recited in line 2. Claim 14 on which claim 19 ultimately depends recites the thickness is one nanometer to two nanometers in lines 4-5. The inclusion of “about” in claim 19 opens up the lower limit of the claimed range. Therefore, the claim 19 opens up the range of the thickness and fails to further limit the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9, 15, 20, 22, 24 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over George et al. (WO 03/008186) (George) in view of Tamura et al. (JP 2009-126095) (Tamura).
The examiner has provided a machine translation of JP 2009-126095 with the Office Action mailed 03/20/2025. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 9, George teaches particles having ultrathin coating on their surfaces (p. 1). A ceramic part is made from a plurality of the coated particles, wherein the particles include a base particle and an ultrathin conformal coating of a sintering aid on the surface of the particles (p. 3, 5, 6, 7) (corresponding to sintered ceramic particles, each particle comprising: a core substrate; and a conformal coating of a sintering aid film on a surface of the core substrate).
The base particle is an inorganic material such as carbides of Group 13 and 14 elements (i.e., silicon carbide and boron carbide) or boron nitride (p. 4) (corresponding to a core substrate selected from the group consisting of silicon carbide, boron carbide, boron nitride). The deposited inorganic material of the ultrathin conformal coating includes inorganic oxides, inorganic nitrides or metals, such as alumina, yttria, magnesium oxide, AlN, BN and palladium (p. 7). Given that the inorganic material of the coating of George is substantially identical to the presently claimed sintering aid films in composition, it is clear that the inorganic material of the coating disclosed by George would inherently be sintering aid films.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
George further teaches the ultrathin conformal coating has a thickness of about 0.1 to about 50 nm (p. 5) (corresponding to a thickness of the conformal coating of the sintering aid film is less than one nm to about one nm). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The coating is formed in an atomic layer deposition (ALD) process and may take the form of a semi-continuous film. The physical form of the deposits will depend on factors such as the physical form of the substrate and the number of times the reaction sequence is repeated (p. 5). The ALD process permits formation of deposits of up to about 0.3 nm in thickness per reaction cycle (p. 9).
Given that George teaches a thickness of about 0.1 to about 50 nm and one cycle of deposition in the ALD process provides a thickness of about 0.3 nm, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use one or two cycles of ALD, which is both disclosed by George and encompassed within the scope of the present claims. The instant application’s Specification discloses that from about 1 to about 3 ALD cycles, a monolayer does not exists around each particle, instead small islands forming a submonolayer of coverage is formed [0041]. Thus, it is clear the ultrathin conformal coating comprises a plurality of distributed islands of the inorganic material on the surface of the base particle (correspond to the conformal coating of the sintering aid film comprises a plurality of distributed islands of the sintering aid film across the surface of the core substrate).
Given that the ultrathin conformal coating of George is substantially identical to the present claimed conformal coating in composition, structure and produced by a substantially identical process, it is clear that the ultrathin conformal coating of George would inherently cover between 5 and 40 percent of the surface of the base particles.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
George does not explicitly teach the ceramic part is an electrolyte of a solid oxide fuel cell, as presently claimed.
Tamura teaches a surface roughened ceramic green sheet and a solid oxide fuel cell (SOFC) using the ceramic sheet as an electrolyte membrane ([0001]) (corresponding to a solid oxide fuel cell comprising an electrolyte). The raw material forming the ceramic sheet includes ceramic particles ([0020]). The ceramic particles include metal oxides, metal carbides such as silicon carbide and metal nitrides such as boron nitride ([0022]). The ceramic sheet is formed by sintering the mixed raw materials ([0015]; [0053]).
Tamura further teaches the ceramic sheet used as an electrolyte membrane for a SOFC, efficient power generation becomes possible due to the large contact area with the electrode, and stable power generation over a long period of time becomes possible due to the high adhesion with the electrode ([0055]).
In light of the disclosure by Tamura of using ceramic particles to form electrolyte membranes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use the ceramic coated particles of George as the ceramic particles forming an electrolyte membrane for a SOFC, in order to provide efficient power generation and stable power generation over long periods of time.
In reference to claim 15, George in view of Tamura teaches the limitations of claim 9, as discussed above. Given that the ultrathin conformal coating of George is substantially identical to the present claimed conformal coating in composition, structure and produced by a substantially identical process (i.e., 1-2 cycles of ALD), it is clear that the islands of the ultrathin conformal coating of George in view of Tamura would intrinsically be substantially evenly distributed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 20, George in view of Tamura teaches the limitations of claim 9, as discussed above. George teaches a thickness of about 0.1 to about 50 nm and one cycle of deposition in the ALD process provides a thickness of about 0.3 nm, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use one cycles of ALD, which is both disclosed by George and encompassed within the scope of the present claims.
In reference to claim 22, George in view of Tamura teaches the limitations of claim 9, as discussed above. George teaches the substrate particulate material is BN and the coating can be boron carbide (p. 8) (corresponding to the core substrate comprises boron nitride and the conformal coating comprises boron).
In reference to claim 24, George in view of Tamura teaches the limitations of claim 9, as discussed above. George teaches the substrate particle includes carbides of Group 14 elements (i.e., silicon carbide) (p. 4) (corresponding to the core substrate comprises silicon carbide). The inorganic material of the coating includes boron oxides, magnesium oxide and BN (p. 7) (corresponding to the conformal coating comprises magnesium, boron).
In reference to claim 33, George in view of Tamura teaches the limitations of claim 9, as discussed above. George teaches the substrate particle includes boron carbide (p. 5, 8) (corresponding to the core substrate comprises boron carbide). The particle is coated with an inorganic oxide or a metal (claim 4). Metals include iron, silver, gold, tin, yttrium and lanthanides (corresponding to the conformal coating comprises yttrium metal, iron, scandium, silver, gold, tin or a lanthanide).
Claims 14 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over George in view of Tamura and The use of BaTiO3 as a solid-electrolyte to determine water vapor effects upon electrical transport mechanisms (Pope).
In reference to claims 14 and 18-19, George teaches particles having ultrathin coating on their surfaces (p. 1). A ceramic part is made from a plurality of the coated particles, wherein the particles include a base particle and an ultrathin conformal coating of a sintering aid on the surface of the particles (p. 3, 5, 6, 7) (corresponding to sintered ceramic particles comprising: a core substrate; and a conformal coating of a sintering aid film on a surface of the core substrate).
The deposited inorganic material of the ultrathin conformal coating includes inorganic oxides and nitrides, such as zinc oxide, magnesium oxide or BN (p. 7) (corresponding to a the sintering aid film comprises an alkaline earth oxide, ZnO, boron nitride). Given that the inorganic oxides and nitrides of the coating are substantially identical to the presently claimed sintering aid films in composition, it is clear that the inorganic oxides and nitrides coatings disclosed by George would inherently be sintering aid films.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
George further teaches the ultrathin conformal coating has a thickness of about 0.1 to about 50 nm (p. 5) (corresponding to a thickness of one nm to two nm; the conformal coating has a thickness of about one nanometer). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The coating is formed in an atomic layer deposition (ALD) process and may take the form of a semi-continuous film. The physical form of the deposits will depend on factors such as the physical form of the substrate and the number of times the reaction sequence is repeated (p. 5). The ALD process permits formation of deposits of up to about 0.3 nm in thickness per reaction cycle (p. 9).
Given that George teaches a thickness of about 0.1 to about 50 nm and one cycle of deposition in the ALD process provides a thickness of about 0.3 nm, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use one to four cycles of ALD, which is both disclosed by George and encompassed within the scope of the present claims. The instant application’s Specification discloses that from about 1 to about 3 ALD cycles, a monolayer does not exists around each particle, instead small islands forming a submonolayer of coverage is formed [0041]. Thus, it is clear the ultrathin conformal coating comprises a plurality of distributed islands of the inorganic material on the surface of the base particle (correspond to the conformal coating of the sintering aid film comprises a plurality of distributed islands of the sintering aid film across the surface of the core substrate).
Given that the ultrathin conformal coating of George is substantially identical to the present claimed conformal coating in composition, structure and produced by a substantially identical process, it is clear that the ultrathin conformal coating of George would inherently cover between 5 and 40 percent of the surface of the base particles.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
George does not explicitly teach (1) the ceramic part is an electrolyte of a solid oxide fuel cell and (2) the base particles comprises barium titanate, as presently claimed.
With respect to (1), Tamura teaches a surface roughened ceramic green sheet and a solid oxide fuel cell (SOFC) using the ceramic sheet as an electrolyte membrane ([0001]) (corresponding to a solid oxide fuel cell comprising an electrolyte). The raw material forming the ceramic sheet includes ceramic particles ([0020]). The ceramic particles include metal oxides, metal carbides such as silicon carbide and metal nitrides such as boron nitride ([0022]). The ceramic sheet is formed by sintering the mixed raw materials ([0015]; [0053]).
Tamura further teaches the ceramic sheet used as an electrolyte membrane for a SOFC, efficient power generation becomes possible due to the large contact area with the electrode, and stable power generation over a long period of time becomes possible due to the high adhesion with the electrode ([0055]).
In light of the disclosure by Tamura of using ceramic particles to form electrolyte membranes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use the ceramic coated particles of George as the ceramic particles forming an electrolyte membrane for a SOFC, in order to provide efficient power generation and stable power generation over long periods of time.
With respect to (2), Pope teaches using barium titanate as a solid electrolyte (Abstract).
In light of the disclosure of Pope, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the base particle of George in view of Tamura be barium titanate, in order to provide a base material suitable for a solid electrolyte member and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering choice. In re Leshin, 125 USPQ 416.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (MPEP 2144.07).
Claims 26-27 and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over George in view of Tamura and Partially Stabilized Zirconia (PSZ): Properties and Applications (PSZ).
In reference to claims 26-27 and 30-31, George teaches particles having ultrathin coating on their surfaces (p. 1). A ceramic part is made from a plurality of the coated particles, wherein the particles include a base particle and an ultrathin conformal coating of a sintering aid on the surface of the particles (p. 3, 5, 6, 7) (corresponding to coating core particles; a sintering aid film; sintering the core particles comprising the sintering aid film).
The particles can have reactive surfaces, such as zirconia (p. 4). The deposited inorganic material of the ultrathin conformal coating yttria and alumina that function as a sintering aid deposited on the particles surface (p. 7) (corresponding to sintering aid comprising yttrium oxide film; the sintering aid comprises Al2O3).
George further teaches the ultrathin conformal coating has a thickness of about 0.1 to about 50 nm (p. 5). The coating is formed in an atomic layer deposition (ALD) process and may take the form of a semi-continuous film. The physical form of the deposits will depend on factors such as the physical form of the substrate and the number of times the reaction sequence is repeated (p. 5). The ALD process permits formation of deposits of up to about 0.3 nm in thickness per reaction cycle (p. 9).
Given that George teaches a thickness of about 0.1 to about 50 nm and one cycle of deposition in the ALD process provides a thickness of about 0.3 nm, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use one cycle of ALD, which is both disclosed by George and encompassed within the scope of the present claims. The instant application’s Specification discloses that from about 1 to about 3 ALD cycles, a monolayer does not exists around each particle, instead small islands forming a submonolayer of coverage is formed [0041]. Thus, it is clear the ultrathin conformal coating comprises a plurality of distributed islands of the inorganic material on the surface of the base particle (correspond to the surface of the core particles are covered by a plurality of distributed islands of the sintering aid film).
Given that the ultrathin conformal coating of George is substantially identical to the present claimed conformal coating in composition, structure and produced by a substantially identical process, it is clear that the ultrathin conformal coating of George would inherently cover between 5 and 40 percent of the surface of the base particles.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
George does not explicitly teach (1) the ceramic part is an electrolyte of a solid oxide fuel cell and (2) the base particles comprises yttria-stabilized zirconia or partially stabilized zirconia, as presently claimed.
With respect to (1), Tamura teaches a surface roughened ceramic green sheet and a solid oxide fuel cell (SOFC) using the ceramic sheet as an electrolyte membrane ([0001]) (corresponding to a solid oxide fuel cell comprising an electrolyte). The raw material forming the ceramic sheet includes ceramic particles ([0020]). The ceramic particles include metal oxides, metal carbides such as silicon carbide and metal nitrides such as boron nitride ([0022]). The ceramic sheet is formed by sintering the mixed raw materials ([0015]; [0053]).
Tamura further teaches the ceramic sheet used as an electrolyte membrane for a SOFC, efficient power generation becomes possible due to the large contact area with the electrode, and stable power generation over a long period of time becomes possible due to the high adhesion with the electrode ([0055]).
In light of the disclosure by Tamura of using ceramic particles to form electrolyte membranes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use the ceramic coated particles of George as the ceramic particles forming an electrolyte membrane for a SOFC, in order to provide efficient power generation and stable power generation over long periods of time.
With respect to (2), George teaches the particles can include zirconia (p. 4).
PSZ teaches partially stabilized zirconia has high strength and toughness giving it excellent war resistances as well as excellent corrosion resistance (p. 1; Applications of Partially Stabilised Zirconia, p. 2).
In light of the motivation of PSZ, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the zirconia base particle of George in view of Tamura be partially stabilized zirconia, in order to provide the base particle with high strength and excellent impact and wear resistance, as well as excellent corrosion resistance, and thereby arriving at the presently claimed invention.
In reference to claim 29, George in view of Tamura and PSZ teaches the limitations of claim 27, as discussed above. Although George in view of Tamura and PSZ does not explicitly teach sintering at 1350ºC or less as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that George in view of Tamura and PSZ meets the requirements of the claimed product, George in view of Tamura and PSZ clearly meets the requirements of the present claim
In reference to claim 32, George in view of Tamura and PSZ teaches the limitations of claim 26, as discussed above. George further teaches the inorganic material of the conformal coating can include magnesium oxide (p. 7) (corresponding to the sintering aid film comprises MgO).
Response to Arguments
Upon further consideration of George et al. (US 6,613,383), Tamura and Zeberoff et al. (US 2017/0137940) (Zeberoff), the previous 35 U.S.C. 103 rejections over George et al. (US 6,613,383) in view of Tamura and Zeberoff are withdrawn from record. However, a new set of rejection has been set forth above. Therefore, Applicant’s arguments filed 12/29/2025 with respect to George et al. (US 6,613,383) and Zeberoff have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to amended claim 26, which now requires the solid oxide fuel cell include between 5 and 40 percent of the surface of the core particles be covered by a plurality of distributed islands of the sintering film, it is noted that Krishna et al. (US 2007/0281160) (Krishna) and Fukasawa et al. (US 2009/0068533) (Fukasawa) no longer meet the presently claimed limitations. Therefore the previous 35 U.S.C. 103 rejections over Krishna in view of Fukasawa are withdrawn. However, the amendment necessitates a new set of rejections, as set forth above.
Conclusion
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/MARY I OMORI/Primary Examiner, Art Unit 1784