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 .
Response to Amendment
In response to the amendment received December 5, 2025:
Claims 1-17 are pending.
The previous 112 rejection has been withdrawn in light of the amendment.
The core of the previous prior art rejection is maintained with slight changes made in light of the amendment. A new reference is introduced to render obvious the newly cited claim limitations. All changes to the rejection are necessitated by the amendment. Thus the action is final.
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.
Claim(s) 1-4, 7-9, and 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2011216301 (Kotani et al.) in view of US 2009/0068533 (Fukusawa et al.).
As to claim 1, Kotani et al. teach a solid electrolyte assembly comprising a substrate (support body [2]), a first electrode layer (fuel electrode [4]), and a solid electrolyte layer [5], wherein the first electrode layer [4] and the solid electrolyte layer [5] are stacked in this order on one face of the substrate [2] (fig. 2; para 0022, 0031),
wherein the first electrode layer contains: at least one elemnt selected from the group consisting of a platinum group element, gold, and an alloy containing any of these elements; and a metal oxide having ion conductivity (para 0025), and
the substrate [2] has a plurality of through-holes extending in a direction that intersects a face of the substrate that is opposed to the first electrode layer [4] (para 0031; fig. 2).
Kotani et al. do not teach (a) the at least one element and the metal oxide have a co-continuous structure, and (b) a proportion of the metal oxide in the first electrode layer is from 1 to 50% by volume.
With respect to (a): Kotani et al. teach of using sputtering to fabricate the first electrode layer (fuel electrode [4]). This would be expected to result in the at least one element and the metal oxide having a co-continuous structure as this is the method of making within the instant application that produces a co-continuous structure (para 0055).
Fukusawa et al. (although not necessary, in light of the teaching above) is further relied upon to render obvious the claim limitation. Specifically, forming the electrode includes heating for temperatures such as 950°C, 1300°C, and ranges from 800-1000°C (para 0064, 0096). The combination of heat treating with electrode deposition would yield the predictable result of providing an electrode (as each element (deposition and heating) performs the same function as it would separately). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to combine heat treating with electrode deposition, as the combination would yield the predictable result of providing an electrode (as each element (deposition and heating) performs the same function as it would separately. “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I). (This further would produce a co-continuous structure, as claimed, as this is the method applied by the instant application; see para 0058).
With respect to (b): Fukusawa et al., in the same field of endeavor, teach of mixing a metal material having electronic conductivity (i.e. Pt) with a metal oxide material having ion conductivity (para 0050). Specifically, the metallic portion is in 40-90 vol% (para 0050); leaving the balance of the oxygen ion conductive material being in 10-60 vol%. (The claimed range of 1-50% by volume is overlapped, thus obvious. “In the case where the claimed ranges “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)” See MPEP §2144.05(I).) The motivation for having the metallic portion is in 40-90 vol% (para 0050), and thus the oxygen ion conductive material in 10-60 vol% is to improve tight contact and adhesion while allowing the metal to function catalytically (para 0050). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have the metallic portion is in 40-90 vol% and the oxygen ion conductive material in 10-60 vol% in order to improve tight contact and adhesion while allowing the metal to function catalytically.
As to claim 2, Kotani et al. teach the metal oxide has oxide ion conductivity (para 0025).
As to claim 3, Kotani et al. teach the metal oxide contains one or more rare earths (cerium, samarium, gadolinium, scandium, yttrium) (para 0025).
As to claim 4, Kotani et al. teach the metal oxide is at least one selected from the group consisting of a composite oxide containing lanthanum and silicon, yttrium-stabilized zirconia, samarium-doped ceria, gadolinium-doped ceria, and yttrium-doped bismuth oxide (para 0025). (Note: Sufficient specificity for anticipation exists, as three out of the four fluorite structure materials fall within the claimed invention.)
As to claim 7, Kotani et al. teach a thickness of the first electrode layer is from 1-100 µm (para 0023) (overlaps claimed 50 nm to 1000 nm, thus renders claimed rage obvious). “In the case where the claimed ranges “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)” See MPEP §2144.05(I).
As to claim 8, Kotani et al. teach substrate (support [2]) is made of a dry-etchable material (metallic materials, such as nickel alloy) (para 0021) (same material as the instant application, thus has the same capability of being dry-etchable; see para 0020).
As to claim 9, Kotani et al. teach an opening area of each of the plurality of through-holes in the face of the substrate that is opposed to the first electrode layer is from 1,962.5-196,250 µm (area calculated from the diameters of 50-500 µm) (overlaps claimed range of 300 µm2 to 71000 µm2, thus rendering the claimed range obvious.) “In the case where the claimed ranges “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)” See MPEP §2144.05(I).
As to claim 12, Kotani et al. teach the solid electrolyte layer [5] has oxide ion conductivity (para 0024).
As to claim 13, Kotani et al. teach the solid electrolyte layer [5] is at least one selected from the group consisting of a composite oxide containing lanthanum and silicon, yttrium-stabilized zirconia, samarium-doped ceria, gadolinium-doped ceria, and yttrium-doped bismuth oxide (para 0024). (Note: Sufficient specificity for anticipation exists, as three out of the six materials fall within the claimed invention.)
As to claim 14, Kotani et al. teach the solid electrolyte layer [5] has: a first face which is opposed to the solid electrolyte layer; and a second face which is located opposite to the first face, a second electrode layer (air electrode [3]) is provided on the second face of the solid electrolyte layer [5] (para 0022, 0031; fig. 2).
As to claim 15, Kotani et al. teach the second electrode layer contains at least one selected from the group consisting of a platinum group element, gold, an alloy containing any of these elements, a metal oxide, and a complex material thereof (metal oxides specifically preferred, thus meeting sufficient specificity) (para 0026).
As to claim 16, Kotani et al. teach a layer of a compound containing an element constituting the substrate or an element constituting the first electrode layer is present on the face of the substrate that is opposed to the first electrode layer (element of the first electrode layer is present on the face opposed to the first electrode layer) (fig. 2; para 0025, 0031).
As to claim 17, Kotani et al. teach an electrochemical element comprising the solid electrolyte assembly according to claim 1 (fig. 2) (the elements of claim 1 have been addressed in the rejection to claim 1 and are incorporated herein but are not reiterated herein for brevity’s).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kotani et al. in view of Fukasawa et al., as applied to claim 1 above, further in view of US 2015/0099212 (Bierschnek et al.).
As to claim 5, Kotani et al. teach of using a perovskite metal oxide ion conductor (para 0025). Kotani et al. do not teach that the metal oxide is a mixed conductor having both ion conductivity and electron conductivity.
However, Bierschnek et al. in the same field of endeavor teach of having a good electronic and ionic conductive phases and setting forth perovskite material with an ABO3 structure (para 0021). The motivation for using a material with electronic and ionic conductive phases as the perovskite material is to provide an anode/fuel electrode material with desirable properties (para 0021). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to use a material with electronic and ionic conductive phases as the perovskite material (as taught by Bierschnek et al. and applied to Kotani et al.) in order to provide an anode/fuel electrode material with desirable properties.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kotani et al. in view of Fukusawa et al., as applied to claim 1 above, further in view of US 2012/0021332 (Hwang et al.).
As to claim 6, Kotani et al. teach of do not teach the first electrode layer (fuel electrode [4]) is porous and has an average porosity in a range of 2% to 15%.
However, Hwang et al. of an anode having layers with porosity ranging from about 15-30% or 12-30% (para 0023-0024) (overlaps claimed range of 2-15% thus renders it obvious; see MPEP §2144.05(I). The combination an anode with a porosity of generally 12-30% (as taught by Hwang et al.) with the electrode of Kotani et al. (in view of Fukasawa et al.) would yield the predictable result of providing an operable electrode with porosity compatible with fuel cell function (where each element performs the same function as it would separately). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to combine the porosity taught with the electrode, as the combination would yield the predictable result of providing an electrode operable within a fuel cell (as each element performs the same function as it would separately). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kotani et al. in view of Fukusawa et al., as applied to claim 1 above, further in view of US 2023/0006233 (Sakuma et al.).
As to claim 10, Kotani et al. do not teach an opening area of the through-hole in an exposed face of the substrate is larger than that in the face of the substrate that is opposed to the first electrode layer.
However, Sakuma et al., in the same field of endeavor, teach an opening area of the through-hole [8] in an exposed face of the substrate is larger than that in the face of the substrate that is opposed to the first electrode layer [5] (fig. 2). It would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have an opening area of the through-hole in an exposed face of the substrate is larger than that in the face of the substrate that is opposed to the first electrode layer (as taught by Sakuma et al. and applied to Kotani et al.), as this is a mere change in shape. The Office has held a change in shape to be obvious. See MPEP §2144.04(IV)(B).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kotani et al. in view of Fukusawa et al., as applied to claim 1 above, further in view of US 2019/0051916 (Bone et al.).
As to claim 11, Kotani et al. teach the plurality of through-holes [12] are each in the shape of a circle or a regular polygon in a plan view (fig. 5, as applied to fig. 2).
Kotani et al. do not teach a shortest distance between outer peripheries of the plurality of through-holes that are adjacent to each other in the plan view is from 3 µm to 50 µm on average.
However, Bone et al., in the same field of endeavor, teach of having uniformly spaced apertures within a substrate with a lateral separation from about 5-500 µm (para 0032). (The claimed range of a shortest distance between outer peripheries of the plurality of through-holes that are adjacent to each other in the plan view is from 3 µm to 50 µm on average is overlapped, thus obvious (due to uniform distribution and the size given). “In the case where the claimed ranges “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)” See MPEP §2144.05(I).) The motivation for having uniformly spaced apertures within a substrate with a lateral separation from about 5-500 µm is to contribute to an efficient transfer of fuel reactant gas through the substrate to the anode and reacted and unreacted fuel away from the anode while allowing the substrate to support the fuel cell (para 0032). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have uniformly spaced apertures within a substrate with a lateral separation from about 5-500 µm (as taught by Bone et al. and applied to Kotani et al.) in order to contribute to an efficient transfer of fuel reactant gas through the substrate to the anode and reacted and unreacted fuel away from the anode while allowing the substrate to support the fuel cell.
Response to Arguments
Applicant's arguments filed December 5, 2025 have been fully considered but they are not persuasive.
Applicant argues that the amendment overcomes the rejection of record (specifically regarding a co-continuous structure), due to a lack of method of making in Kotani (setting forth a sputtering method that forms the co-continuous structure, specification para 0053-0056 cited).
Examiner respectfully disagrees. Kotani et al. teaches of sputtering (para 0027) (same method as cited by applicant in para 0055 of the instant disclosure). Fukusawa et al. is further relied upon for the method as well (see the combination above for full details). Thus, the argument is not persuasive, and the rejection of record is maintained.
Applicant argues the advantages achieved by a co-continuous structure are not expected.
Examiner respectfully disagrees. 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, the argument is not persuasive, and the rejection of record is maintained. (Note: This argument does not constitute unexpected results. See MPEP 716.02 in full for the burden that must be met to show unexpected results.)
Applicant argues that the dependent claims are distinct from the prior art of record for the same reason as the independent claim.
Examiner respectfully disagrees. The rejection with respect to the independent claim has been maintained, and thus the rejections to the dependent claims are maintained as well.
Conclusion
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 EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:30 -7:30(AM) and 9:00-4:30 ET.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759