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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/30/2026 has been entered.
Response to Amendment
The Amendment filed on 4/30/2026 has been entered. Claims 1-20 remain pending in the application. Applicant’s amendments to the claims have overcome each and every 112(b) rejection previously set forth in the Final Office Action mailed 2/19/2026.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrman et al. (US 2008/0087869, hereinafter "Ehrman") in view of Agarwal et al. (Understanding deformation behavior of CoCuFeMnNi high entropy alloy by investigating mechanical properties of binary ternary and quaternary alloy subsets, hereinafter "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.
The newly added feature claimed of “wherein the anode is operable under hydrocarbon fuel conditions in the SOFC to electrochemically oxidize a fuel and mitigate carbon deposition at the anode during operation” is a functional limitation evaluated for the implicit or explicit structure it provides to the claimed construct [see MPEP 2173.05(g)]. In this case, all of the structure that is necessary to achieve the functionality is recited in the claim. The instant specification discloses that by way of replacing a traditional Ni-YSZ/GDC with the claimed HEA-YSZ/GDC, the functions claimed are achieved. Therefore, the newly added functional limitation presented does not add any implicit or explicit structure to the claim and adds nothing further to the claim. All of the structure that is recited in the claim is met by the combination of Ehrman and Agarwal, and as such, the anode of modified Ehrman would intrinsically provide the functionality present in the claim. Regarding product and apparatus claims, when the structure recited in the reference [or references] is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent [see MPEP 2112.01(I)].
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 4/30/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the claimed invention requires that the anode is "operable under hydrocarbon fuel conditions in the SOFC to electrochemically oxidize a fuel and mitigate carbon deposition" which is not taught or suggested by the prior art [Remarks, pgs. 9-10], the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious (emphasis added) See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Ehrman explicitly teaches that the SOFC is operable under hydrocarbon fuel conditions [0008, “The SOFC anode is used for the electrochemical oxidation of fuels such as hydrogen and natural gas”]. The instant specification discloses that by way of replacing a traditional Ni-YSZ/GDC with the claimed HEA-YSZ/GDC, the carbon deposition associated with Ni-YSZ/GDC anodes is avoided [0032 of published application]. Therefore, by using the HEA of Agarwal within the construct of Ehrman, mitigation of carbon deposition is achieved (relative to when just Ni is used) and is intrinsic to the combination of Ehrman in view of Agarwal. See also the following case law:
If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432 [MPEP 2114(I)].
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.") [see MPEP 2112.01(II)]
The applicant alleges that Ehrman does not teach a single composition containing all five elements of Mn, Fe, Co, Ni, and Cu in combination, and that Ehrman presents these elements as alternatives [Remarks, pg. 11].
In response to this argument, it is noted that [0045] of Ehrman explicitly teaches a five element compound, and lists several examples with two, three, four, and five metal element combinations:
PNG
media_image1.png
339
466
media_image1.png
Greyscale
The applicant alleges that Ehrman actively discourages the claimed composition and that Ehrman provides a reason to avoid the claimed composition [Remarks, pgs. 11-12], citing Ehrman’s teaching that “Mn, Fe, and Co … do not provide sufficient electronic conductivity” [0043].
In response to this argument it is noted that Ehrman, as explained above, explicitly teaches a composition comprising Mn, Fe, Co, Ni, and Cu in combination [0045]. "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 2123(II)]. Furthermore, as stated in the Final Office Action mailed 2/19/2026, a composition comprising Mn, Fe, Co, Ni, and Cu in combination does not necessarily have the same exact properties as those of the individual metals making up the composition.
The applicant alleges that Ehrman’s disclosure reflects a replacement paradigm, not a multi-component alloy design strategy, wherein a Ni baseline anode material is substituted with Cu [Remarks, pg. 12].
In response to this argument it is again noted that Ehrman explicitly teaches a composition comprising Mn, Fe, Co, Ni, and Cu in combination [0045]. "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 2123(II)].
The applicant argues that Ehrman relies on a different mechanism for carbon deposition mitigation than the claimed invention.
In response to this argument, as described above, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious (emphasis added) See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Ehrman explicitly teaches that the SOFC is operable under hydrocarbon fuel conditions [0008, “The SOFC anode is used for the electrochemical oxidation of fuels such as hydrogen and natural gas”]. The instant specification discloses that by way of replacing a traditional Ni-YSZ/GDC with the claimed HEA-YSZ/GDC, the carbon deposition associated with Ni-YSZ/GDC anodes is avoided [0032 of published application]. Therefore, by using the HEA of Agarwal within the construct of Ehrman, mitigation of carbon deposition is achieved (relative to when just Ni is used) and is intrinsic to the combination of Ehrman in view of Agarwal. See also the following case law:
If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432 [MPEP 2114(I)].
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.") [see MPEP 2112.01(II)]
Applicant alleges that Agarwal is nonanalogous art [Remarks, pg. 13].
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.
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.
Applicant alleges that there is no articulated rationale for combining Ehrman and Agarwal [Remarks, pg. 14] and that it is not explained why a person having ordinary skill in the art would:
Incorporate elements identified as unsuitable in Ehrman.
Abandon Ehrman's substitution-based design approach.
Disregard Ehrman's ceria-based carbon mitigation strategy.
Apply a mechanical alloy study to an electrochemical system.
Examiner’s replies to each of the arguments i-iv are below:
As described above, Ehrman explicitly teaches a composition comprising Mn, Fe, Co, Ni, and Cu in combination [“[Mn/Fe/Co/Ni/Cu]/YSZ”, 0045]. "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 2123(II)].
See examiner’s response to (i).
The CeO2 used to mitigate carbon deposition in the disclosure of Ehrman is a separate constituent that is not part of the alloy, and the claims do not limit the anode to consist of the components claimed such that other material cannot be included in the prior art anode.
As described in the rejection of claims 1, 8, and 15 above, Ehrman teaches that Ni/YSZ cermet anodes have degraded performance at temperatures over 800°C, and that improved SOFC materials are needed [0009] and Agarwal teaches that the CoCuFeMnNi alloy has increased strength at high temperatures [section 3.5], therefore it would have been obvious to a person having ordinary skill in the art 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.
Applicant further alleges that there is no basis to conclude that the combination of Ehrman and Agarwal would yield an anode capable of electrochemical fuel oxidation and carbon deposition mitigation under hydrocarbon conditions. In response to this argument it is once again noted that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious (emphasis added). See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that the claimed impurity is not taught or inherent [Remarks, pg. 14].
In response to this argument, it is noted that as described in the rejections of claims 1-20 above, since no other elements are named in the high entropy alloy taught by Agarwal, 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. Furthermore, the mere purity of a product, by itself, does not render the product nonobvious [see MPEP 2144.04]. Accordingly, arguendo, even if there was some level of impurities in the HEA of Agarwal, making it more pure does not render the product nonobvious.
Applicant alleges that the inherency of the added functional limitations resulting from the combination of Ehrman and Agarwal has not been established [Remarks, pg. 14].
As described in the response to the arguments above, the instant specification discloses that by way of replacing a traditional Ni-YSZ/GDC with the claimed HEA-YSZ/GDC, the carbon deposition associated with Ni-YSZ/GDC anodes is avoided [0032 of published application]. Ehrman explicitly teaches that the SOFC is operable under hydrocarbon fuel conditions [0008, “The SOFC anode is used for the electrochemical oxidation of fuels such as hydrogen and natural gas”]. Therefore, by using the HEA of Agarwal within the construct of Ehrman, mitigation of carbon deposition is achieved (relative to when just Ni is used) and is intrinsic to the combination of Ehrman in view of Agarwal, because the combination contains all of the structure necessary to achieve the added functional limitations. See also the following case law:
If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432 (emphasis added) [MPEP 2114(I)].
As detailed in the responses to the arguments above, sufficient evidence that the combination of Ehrman and Agarwal does not possess the ability to achieve the claimed functional limitations has not been provided.
For the foregoing reasons, the arguments are not considered persuasive, and the rejection of claims 1-20 is maintained.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA F OROZCO whose telephone number is (571)272-0172. The examiner can normally be reached M-F 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Ruddock can be reached at (571)272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.F.O./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
Prosecution Insights