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 .
Response to Amendments
In response to the amendments received 12/08/2025:
Claims 1-5,9-14,17, and 19-26 are pending in the current application. Claims 23-24 remain withdrawn without traverse. Claims 1,3,5,9-11,14, and 17 have been amended.
The objections to claims 5 and 14 have been overcome in light of the amendments.
The rejections under 35 U.S.C. 112(b) have been overcome in light of the amendments.
Claim Rejections - 35 USC § 103
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 1-5,9-14,17,19, and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2010/0092832) in view of Leah et al. (US 2016/0233535).
Regarding claim 1, Lee teaches a method for depositing a ceramic film of a solid oxide cell unit upon a ceramic or metallic surface of a substrate, the method comprising the steps of:
i. providing a base suspension comprising a solution of a soluble salt precursor of a crystalline metal oxide ceramic (P27) and further comprising crystalline nanoparticles suspended in the base suspension (P25.30-31);
ii. depositing the base suspension on the surface of the substrate (P31);
iii. drying the base suspension to define a nanocomposite sub-layer of the soluble salt precursor and nanoparticles (P33-34); iv. heating the sub-layer, or multiple layers are dried and heated (P33-35); v. firing the substrate with the film on the surface, to form a nanocomposite crystalline layer as a deposited ceramic film (P5.42.59).
Although Lee is silent in explicitly reciting that the nanoparticles are crystalline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01 A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities."
Lee teaches that step iii) of drying the base suspension is conducted at a temperature between 100oC to 400oC (P34-36.40.55), but is silent in explicitly reciting that the drying may occur and be continued with heating to decompose the sub-layer.
However, Leah, in a similar field of endeavor, teaches common practice for the method of depositing a ceramic film (P23). Leah also teaches drying between the application of each layer to provide a thicker film without loss of structural control and where commonly, a step of decomposing the layer after drying or paired with drying is often present to allow the film to become more dense by allowing particles to be pressed closer together (P57-59). This step of heating to decompose each layer after/with drying is taught to be known by one of ordinary skill in the art (P57-59).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to include step iv) of heating the sub-layer to decompose it to form a film of the metal oxide comprising the crystalline nanoparticles on the surface of the substrate, after the ii) step of drying in Lee, as well-known method of forming layers and to provide the predictable response as taught by Leah of a more dense film. The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Furthermore, with respect to the above combination of overall element, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Regarding claim 2, modified Lee teaches at step iv, the film so formed from the sub-layer has a minimum thickness of 130nm, or 50 to 400 nm, overlapping the claimed range (P55). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Regarding claim 3, modified Lee in view of Leah teaches vi. repeating steps ii. to iv. at least one additional time before the step v of firing, the base suspension being deposited onto the sub-layer, such that the film of metal oxide comprising nanoparticles is formed from a plurality of sub-layers (Lee; P40-42) wherein Leah of modified Lee teaches step iv) after step iii (Leah; P57-59).
Regarding claim 4, Leah of modified Lee teaches step iv) of heating each layer to be more densely packed (P57-59) within modified Lee teaching the film so formed from each sub-layer should have a thickness of at least 130nm, or 50 to 400 nm, overlapping the claimed range (P55). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Regarding claim 5, modified Lee teaches the nanoparticles comprise doped zirconia nanoparticles (P26.31.37)
Regarding claim 9, modified Lee modified teaches the nanoparticles exhibit ionic conductivity (P26); further, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01
Regarding claim 10, modified Lee teaches crystalline nanoparticles are dispersions in an aqueous solvent, and step i. further comprises the sub-step of: a. solvent exchange of the nanoparticles into a non-aqueous media comprising the nanoparticles in suspension (P26-28.60-62)
Regarding claim 11, modified Lee teaches crystalline nanoparticles are dispersions in non-aqueous, or organic solvent (P27.60-62).
Regarding claim 12, modified Lee in view of Leah teaches the heating step, involves heating the sub-layer to a temperature of between 100-250oC, or 250-500oC (P58-59), overlapping the claimed range of 150 and 600°C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Regarding claim 13, modified Lee teaches the firing, or sintering at step v. is at a temperature of between 600 to 800oC, falling the claimed range of 500 and 1100°C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Regarding claim 14, modified Lee teaches the surface of the substrate is an electrolyte layer (P44).
Regarding claim 17, modified Lee teaches said crystalline metal oxide ceramic is doped stabilized zirconia, or YSZ (P26.34.37).
Regarding claim 19, modified Lee teaches said soluble salt precursor is yttrium nitrate, or a nitrate based yttrium precursor (P27).
Regarding claim 20, modified Lee teaches an example where the solvent for said soluble salt precursor is ethanol (P47.60).
Regarding claim 25, modified Lee teaches the deposited ceramic film comprises a sub-micron thickness ceramic film (P55.71.77).
Regarding claim 26, modified Lee teaches the deposited ceramic film comprises an interlayer of an electrolyte material, or the ceramic film may be 3 or more layers, wherein each layer, and therefore an interlayer, serve as an electrolyte and comprise electrolyte material (P25.41.44).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over modified Lee in view of Leah as applied to at least claim 1 above, and further in view of Boy et al. (US 20140302231).
Regarding claim 21, modified Lee is silent in teaching further comprising prior to step iii the step of allowing said suspension deposited onto said surface to stand for a period of at least 5 seconds; however, Boy, in a similar field of endeavor, teaches a method of depositing a ceramic film of a solid oxide cell unit (P77.105.119.128-140).
Boy teaches, before the drying step, to include another drying step, or allow a suspension deposited on a surface to stand at room temperature for a period of at least 30 seconds to allow the layer to gel, and ultimately form a more dense and uniform layer (P85.107-11.119.154-155).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to prior to step iii of modified Lee, include the step of allowing said suspension deposited onto said surface to stand for a period of at least 5 seconds, to allow the layer to settle and create a more uniform dense layer as taught by Boy. Furthermore, with respect to the above combination of overall element, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Allowing the substrate to sit for a minimal five seconds adds no novel features to the above invention, and can also occur in subsequent layer deposition. One of ordinary skill would be able to reasonably ascertain that with enough time sitting, the layer would start to firm.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over modified Lee as applied to at least claim 1 above, and further in view of Ghyselen (US 20160293989).
Regarding claim 22, modified Lee is silent in teaching the method is forms at least one layer of an air separation device electrolyte; however, Ghyselen, related to ceramic film layers with crystalline material particles such as YSZ, also used in solid oxide cell units (P19-22.25-30.46).
Ghyselen teaches membranes of solid oxide electrolytes can also be used for gas separation such as air separation units (P71).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the ceramic film of modified Lee as a layer in an air separation device electrolyte as Ghyselen teaches this is a common use for such a layer. Furthermore, the method teaches all of the claimed requirements of claim 1 and therefore one would appreciate that the claimed method steps are satisfied and is capable of being used as an air separation membrane.
Response to Arguments
In response to Applicant arguments filed 12/08/2025:
Applicant argues: Lee fails to teach the steps of drying followed by heating and such steps cannot be combined. Furthermore, because Lee fails to teach the claimed steps, the additional method steps recited in claim 3 are not taught.
Such arguments are unpersuasive. Examiner notes the amended claim broadly recites “…drying the base suspension to define a nanocomposite sub-layer of the soluble salt precursor and the crystalline nanoparticles…”. The instant disclosure teaches that a drying step can occur at 100oC, or at a lower temperature for no longer than 30 seconds. The teachings within the disclosure are not included in the claim limitations. Therefore, Lee, teaching repeating step ii of depositing followed by step iv of heating the sublayer (which can occur at a temperature between 100oC to 400OC (P36.40), overlapping the instant disclosures temperature for both step iii drying and step iv heating) can be interpreted where the heating step first dries the layer (i.e., for the first second) and then continues to heat the layer. Even so, Lee teaches coating followed by drying/heating and coating again followed by drying/heating (P36). Therefore, the first layer is applied it is then dried. This first layer, that has already dried, will simply heated when the second layer applied is dried (P36.40-42).
Examiner notes that in light of the amendments made clarifying the steps additional reference Leah has been added. New and amended grounds of rejection are above set forth. New and amended grounds of rejection are necessitated by the claim amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Seabaugh et al. (US 20030003237) teaches drying can be done by allowing each layer to sit for several minutes, or to speed up the drying process, combined with an active heating step (P30.57)
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Amanda Rosenbaum whose telephone number is (571)272-8218. The examiner can normally be reached Monday-Friday 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas A. Smith can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Amanda Rosenbaum/ Examiner, Art Unit 1752
/NICHOLAS A SMITH/ Supervisory Primary Examiner, Art Unit 1752