DETAILED ACTION
Notice 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 .
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.
Claims 1-20 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.
The term “approximately” in claims 1-20is a relative term which renders the claim indefinite. The term “approximately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is noted that the use of approximation terms or terms of degree such as “approximately” are not indefinite when the specification provides some standard allowing for one of ordinary skill in the art to understand the scope of the term. If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). For example, in Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992), the phrases "relatively shallow," "of the order of," "the order of about 5mm," and "substantial portion" were held to be indefinite because the specification lacked some standard for measuring the degrees intended. The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." Packard, 751 F.3d at 1311.
In the instance scenario, the specification fails to make clear what would or would not be covered by the ranges of "approximately 10% to approximately 35% Copper (Cu); approximately 10% to 35% Iron (Fe)…" and all other ranges of atomic percent of each element and other elements or impurities in a high-entropy alloy in claims 1-20. There is not any disclosure of how much the range may vary from the endpoints. For example, since there is no standard provided to understand the scope of the term “approximately” as it relates to the atomic percent of each element in the high-entropy alloy (HEA), it is unclear if that could mean that the HEA may not even require elements such as Ni or Mn, if “approximately” were to mean plus or minus 5%.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 1-20 under 35 U.S.C. 103 as being unpatentable over Ehrman et al. (US 20080087869, hereinafter “Ehrman”) in view of Agarwal et al. (Understanding the deformation behavior of CoCuFeMnNi high entropy alloy by investigating mechanical properties of binary ternary and quaternary alloy subsets) is maintained.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrman in view of Agarwal.
Regarding claims 1, 8, and 15, Ehrman teaches a solid oxide fuel cell (SOFC) [Abstract, 0012], comprising an anode for reacting with a fuel comprising a metal/yttria-stabilized zirconia (YSZ) composite, wherein the metal of the composite comprises Mn, Fe, Co, Ni, or Cu [0008, “The SOFC anode is used for the electrochemical oxidation of fuels such as hydrogen and natural gas”, 0012, “an anode material for a solid oxide fuel cell, comprising a metal/YSZ composite … wherein the metal of the composite and powder comprises Mn, Fe, Co, Ni or Cu”].
Ehrman fails to specifically teach a “high-entropy alloy” (HEA) that has Cu, Fe, Co, Ni, and Mn in the claimed amounts with less than 2% (atomic) of other elements or impurities. However, Agarwal teaches an FCC equiatomic CoCuFeMnNi high-entropy alloy and the unique microstructure of the quinary CoCuFeMnNi HEA [Abstract]. It is generally understood by a person having ordinary skill in the art that an equiatomic alloy has equal numbers of two or more elements. Additionally, since no other elements are named in the alloy, there are either no impurities/other elements, or the atomic percentage of other impurities/elements is so small as to not affect the properties of the CoCuFeMnNi HEA. The approximate ranges of each element in claims 1, 8, and 15 overlap sufficiently to where the claimed alloy can be considered equiatomic.
Agarwal is considered analogous art because it is pertinent to the problem faced by the inventor (see MPEP 2141.01(a) I). In the instant specification the inventors face the problem of Ni having mechanical failure at high temperatures ([0015] of the filed specification). Agarwal teaches that the CoCuFeMnNi alloy has increased strength at high temperatures [section 3.5].
Furthermore, Ehrman also teaches that Ni/YSZ cermet anodes have degraded performance at temperatures over 800°C, and that improved SOFC materials are needed [0009, “Ni grains in a Ni/YSZ cermet sinter easily at temperatures over 800° C, and this sintering leads to the degradation of the performance of the SOFC … Thus, available anode materials are not fully satisfactory”].
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to use the high-entropy CoCuFeMnNi alloy taught by Agarwal as the metal in the metal/YSZ composite in the anode taught by Ehrman, in order to provide an anode having increased strength at high operating temperatures.
Further regarding claim 8, Ehrman teaches that the SOFC comprises a cathode for reacting with an oxidant, or reducing oxygen molecules, [0007, “The cathode is the positive side of the cell (i.e., towards which electrons flow); its purpose is to use electrons to produce oxygen ions by reducing oxygen molecules in the air”] and an electrolyte disposed between the cathode and the anode [0007, “The electrolyte is a dense, electrically insulating, gas-tight layer that separates the cathode from the anode”].
Further regarding claims 2-7, 9-14, and 16-20, Ehrman, in view of Agarwal, teaches the claimed SOFC with an anode comprising a high-entropy alloy, as described in the rejection for instant claims 1, 8, and 15. It is noted that Agarwal teaches equiatomic amounts of Co, Cu, Fe, Mn, and Ni in the quinary alloy [Abstract] but is silent on any specific ranges for the amounts. According to Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), a prima facie case of obviousness may be present when prior art ranges do no overlap but are merely close (see MPEP 2144.05 I). In the present case, the narrower ranges of the elements in the alloy of claims 2-7, 9-14, and 16-20 do not cause the properties of the equiatomic alloy to change and the person having ordinary skill in the art at the time of the invention would have reasonably expected that the alloy’s performance in the prior art ranges would have been the same as, or similar to, the performance in the claimed ranges. As mentioned in the present disclosure, a person having ordinary skill in the art would understand that the amount of each element in the alloy can be increased or decreased without affecting the performance of the alloy ([0034] of the filed specification). Therefore, the claimed ranges are prima facie obvious (see MPEP 2144.05 I).
Further regarding claims 5-7, 12-14, and 18-20, Ehrman, in view of Agarwal, teaches the claimed SOFC with an anode comprising a high-entropy alloy, as described in the rejection for instant claims 1, 8, and 15. Agarwal teaches equiatomic amounts of Co, Cu, Fe, Mn, and Ni in the quinary alloy [Abstract]. Since no other elements are named in the alloy, there are either no impurities/other elements, or the atomic percentage of other impurities/elements is so small as to not affect the properties of the CoCuFeMnNi alloy.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive.
Regarding the rejection of instant claims 1-20 under 35 U.S.C 112(b), in response to applicant’s arguments that the specification provides clear support for the use of the term “approximately”, it is noted that the issue at hand is not whether the term exists in the specification, the issue is that the term “approximately” is a term of degree with no definition provided in the specification or standard in the state of the prior art.
In response to applicant’s arguments that the specification provides a standard for interpretation, it is noted that the specification does not accord the term “approximately” a special definition. Paragraph [0034] of the specification does not marry the term “approximately” to a definition. Furthermore, there is no standard in the prior art for the term. For example, Jaworowski et al. (US 2011/0207020) states that approximately can have the following definition (emphasis added):
[0022] One example nickel-based alloy composition includes approximately 57 wt % nickel, 22 wt % chromium, 2 wt % molybdenum, 14 wt % tungsten, 0.4 wt % silicon, 0.5 wt % manganese, 0.3 wt % aluminum, a non-zero amount of cobalt up to 5 wt %, and a non-zero amount of iron up to 3 wt %. The example compositions may also include trace amounts of boron, columbium, yttrium, and lanthanum, each generally in an amount between 0.01 wt % and 0.2 wt %. The given compositions may also include impurities that do not affect the properties of the alloy or elements that are unmeasured or undetectable in the alloy, although in other examples the compositions may include only the given elements. The term "approximately" as used in this description relative to the given compositions refers to possible variation in the given value, such as a ±5% tolerance around the value.
This varies vastly from Tucker et al. (US 2018/0323443) (emphasis added):
[0027] The terms “about” or “approximate” and the like are synonymous and are used to indicate that the value modified by the term has an understood range associated with it, where the range can be ±20%, ±15%, ±10%, ±5%, or ±1%. The term “substantially” is used to indicate that a value is close to a targeted value, where close can mean, for example, the value is within 80% of the targeted value, within 85% of the targeted value, within 90% of the targeted value, within 95% of the targeted value, or within 99% of the targeted value.
Accordingly, there is no standard in the art in terms of how much the term “approximately” may vary, and the specification provides no guidance whatsoever in terms of how much an element may be increased/decreased “without affecting the performance of the alloy” as argued.
Regarding the rejection of instant claims 1-20 under 35 U.S.C 103, in response to applicant’s arguments that Ehrman “explicitly discourages the claimed elements” [Remarks, page 9], it is noted that, as pointed out in the Remarks filed 11/12/2025, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed” [In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004), see MPEP 2145(X)(D)(I). Examiner respectfully disagrees with the argument that Ehrman teaches away from the claimed invention. While Ehrman does disclose that metals such as Mn, Fe, and Co and their oxides do not provide sufficient electronic conductivity [Ehrman, 0043], Ehrman does not disclose any teaching that alloys or compositions comprising Mn, Fe, and Co as constituent elements, along with Ni and Cu, do not provide sufficient electronic conductivity. A composition comprising [Mn/Fe/Co/Ni/Cu]/YSZ cannot be said to have the same properties as the individual metals making up the composition. Furthermore, “[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use" [In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994), see MPEP 2123(II)]. Thus, this argument is considered unpersuasive and the rejection is maintained.
In response to applicant's argument that Agarwal is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the specification, as well as the applicant’s Remarks, identifies mechanical failure due to thermal stress as a specific technical challenge associated with SOFC anodes [Remarks, pages 12-13]. As discussed in the rejection of instant claims 1-20 above, Agarwal teaches that the equiatomic CoCuFeMnNi alloy has increased strength at high temperatures [section 3.5]. If the problem faced by the inventor is mechanical failure, and Agarwal is addressing mechanical strength, then Argawal is reasonably pertinent to the problem faced by the inventor. The prior art reference does not need to solve all of the problems faced by the inventor. See the case law provided in MPEP 2141.01(a)(III) (emphasis added):
In re Mlot-Fijalkowski, 676 F.2d 666, 213 USPQ 713 (CCPA 1982) (Problem faced by inventor was enhancement and immobilization of dye penetrant indications. References which taught the use of dyes and finely divided developer materials to produce colored images preferably in, but not limited to, the duplicating paper art were properly relied upon because the court found that inventor's problem was one of dye chemistry, and a search for its solution would include the dye arts in general.)
Likewise, in the instant application the inventor’s problem is generally alloy composition (to achieve properties such as mechanical strength and electrochemical degradation), and a search for the solution would include alloy composition arts in general.
In response to applicant’s argument that Agarwal makes no mention of SOFC-related application or electrochemical performance, this is related to whether or not Agarwal is in the field of the inventor’s endeavor. See the case law provided in MPEP 2141.01(a)(I) (emphasis added):
A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art (In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004).
Therefore, since Agarwal is reasonably pertinent to the problem faced by the inventor, any arguments as to Agarwal not making any mention of SOFC-related application or electrochemical performance is moot.
Furthermore, in response to applicant’s argument that Agarwal’s findings undermine its relevance, it is noted that any disclosure by Agarwal about the unpredictability of alloy behavior as a whole does not detract from the fact that the specific high-entropy alloy with which the invention is concerned (equiatomic CoCuFeMnNi alloy) exhibits increased mechanical strength at high temperatures.
Thus, this argument is considered unpersuasive and the rejection of instant claims 1-20 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729