DETAILED ACTION
2nd Non-Final
This second Non-Final Office Action is prepared and mailed because in the previous Action mailed 12/29/2025, the rejection rational for pending claim 7 was not explained. This subsequent action is being sent to add this missing information about the rejected status of claim 7. No changes are made to the rejections/objections of the remaining claims 1-8.
Status of Application
The claims 1-19 are pending and presented for the examination. In the previous Non-Final Office Action, claims 1-19 were rejected and claim 16 was objected to. The status of each of pending claims 1-19 remains the same upon this second Non-Final Office 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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/30/2023 is being considered by the examiner.
Claim Objections
Claim 16 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 14. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 4 and 8-9 are 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.
Claim 4 refers to a specific heat capacity of less than 3.0 J m-2 K-1 s-1/2, however this property would seem to actually be the thermal inertia, according to the unit “J m-2 K-1 s-1/2” rather than J kg-1 K-1. This incongruity renders unclear what property limitation is actually intended to be present in the claim, and the scope of claim 4 is indefinite. For purposes of examination on merits, it will be assumed that the intended limitation of claim 4 refers to the thermal inertia property of the claimed material.
Claim 8 is indefinite because it recites that the material further comprises “the use of the material” as a thermal barrier coating. From this language it is unclear if what is intended to be claimed is a thermal barrier coating per se, or if the limitation merely recites that the claimed material is capable of use as a thermal barrier coating. Because of this ambiguity, the metes and bounds of claim 8 are unclear and the claim is indefinite under USC 112.
Claim 9 is indefinite for substantially the same reasons as recited above for claim 8.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 8-10, and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being rejected by Zhu et al (US 7001859).
Regarding claim 1, Zhu et al teaches a thermal barrier coating material that constitutes a high entropy oxide material in that it has the low thermal conductivity called for by the instant disclosure and it comprises multiple component oxides; the Zhu material can also comprise five differing oxides, and as such, it meets the preamble definition of a HEO material. The Zhu et al material has a thermal conductivity of 0.5-0.72 W·m-1K-1, and as such meets the further limitations of the instant claim. Claim 1 is therefore anticipated by the prior art of record.
Regarding claim 2, the Zhu et al material is compositionally and structurally equivalent to that of instant claim 1; the Zhu material can comprise the five separate oxides that the instant Specification discloses as leading to the scattering properties of the claimed material (see Table 3). As such, the total scattering of the Zhu material is inherently also equivalent to that of the instantly claimed material, and would have a value above 35. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 3, the Zhu et al material is compositionally and structurally equivalent to that of instant claim 1; the Zhu material can comprise the five separate oxides that the instant Specification discloses as leading to the scattering properties of the claimed material (see Table 3). As such, the total scattering of the Zhu material is inherently also equivalent to that of the instantly claimed material, and would have a value above 30. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 4, the Zhu et al material is compositionally and structurally equivalent to that of instant claim 1, and further has a thermal conductivity below the level of claim 1. The instant Specification discloses that the thermal inertia property of the material is resultant from the composition and that a low thermal conductivity leads to a low value for this thermal inertia property. As such, the thermal inertia of the Zhu material is inherently also equivalent to that of the instantly claimed material, and would have a value of less than 3.0 J m-2 K-1 s-1/2. MPEP 2112.01 states "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."
Regarding claim 5, the Zhu et al material is compositionally and structurally equivalent to that of instant claim 1, and further has a thermal conductivity below the level of claim 1. As such, the specific heat capacity of the Zhu material is inherently also equivalent to that of the instantly claimed material, and would have a value of less than 900 J kg-1 K-1. MPEP 2112.01 states "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."
Regarding claim 8, as discussed above, Zhu et al teaches that the inventive material is used as a thermal barrier coating.
Regarding claim 9, Zhu et al teaches that the inventive material is usable as a thermal barrier coating for combustors (see column 13, lines 40-45).
Regarding claim 10, Zhu et al teaches embodiments wherein the material comprises five different oxides (see Table 3, example 4). The material can thus be represented by MxOy with M representing the oxide-forming cations.
Regarding claim 12, as discussed above, the Zhu et al material can be represented by MxOy with M representing the oxide-forming cations, and teaches embodiments wherein the cations include lanthanide elements (see Table 3).
Regarding claim 13, as discussed above, the Zhu et al material can be represented by MxOy with M representing the oxide-forming cations, and teaches embodiments wherein the cations include transition metal yttrium (see Table 3).
Claim Rejections - 35 USC § 103
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 6-7, 11, and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al (US 7001859).
Regarding claim 6, Zhu et al teaches that the inventive thermal barrier coating material can be substantially composed of tetragonal phase (see column 9, lines 1-10 and claim 22). The quantitative percentage of tetragonal phase is not specified. However, examples are taught wherein the dopant content of the material is less than 10%, and thus the balance zirconia content is greater than 90%. Routine choosing by one of ordinary skill of tetragonal phase for this zirconia portion would therefore lead to a material having greater than 90% tetragonal zirconia phase. The further limitations of instant claim 6 are therefore met by the Zhu et al teachings, and the claim is not patentably distinct over the prior art of record.
Regarding claim 7, Zhu et al does not quantitatively specify any oxide vacancy concentration. Because the thermal barrier coating material taught by Zhu et al is equivalent to that of the instant claims, one of ordinary skill in the art would have understood that this lack of teaching of oxide vacancies would indicate that the concentration of these can be near 0, and as such the value 0.05 of claim 7 is rendered obvious by the teachings of the prior art of record.
Regarding claim 11, as discussed above, the Zhu et al material can be represented by MxOy with M representing the oxide-forming cations. Zhu further teaches that the material can comprise MgO as dopant (see claim 2). Therefore, routine optimization and experimentation with the small and finite list of dopants taught by Zhu would lead one of ordinary skill in the art to a thermal barrier coating according to Zhu that contains MgO and thus meets the further limitation of instant claim 11. Therefore, the claim is obvious and not patentably distinct over the prior art of record.
Regarding claim 14, Zhu et al teaches that the inventive thermal barrier coating material comprise ZrO2 balance as the primary component, and contains Y2O3 as the primary stabilizer. The material further contains dopants that can comprise M2O3 oxides and MO2 oxides (see claims 1-2). The Y2O3 (stabilizer) amount of 2-25 mol% overlaps the corresponding range for this component of the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Similarly, the ranges taught by Zhu et al for the dopant components overlap those of the instant claim for the M2O3 components. In the Zhu et al material, the A dopant component can comprise a MO2 oxide and the B dopant component is a M2O3 oxide. As such, routine optimization and experimentation by one of ordinary skill in the art in choosing a MO2 A dopant, and with the overlapping ranges, would lead a skilled artisan to a material comprising Y2O3, MO2, and M2O3 in amounts falling within the ranges of the instant claim 14. As above, per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness. The remainder in these compositions would be ZrO2. Each limitation of claim 14 is therefore met by the Zhu et al teachings, and the claim is not patentably distinct over the prior art of record.
Regarding claim 15, Zhu et al teaches that the inventive thermal barrier coating material comprise ZrO2 balance as the primary component, and contains Y2O3 as the primary stabilizer. The material further contains dopants that can comprise M2O3 oxides and MO oxides (see claims 1-2). The Y2O3 (stabilizer) amount of 2-25 mol% overlaps the corresponding range for this component of the instant claim when converted to percentage by weight. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Similarly, the ranges taught by Zhu et al for the dopant components overlap those of the instant claim for the M2O3 components. In the Zhu et al material, the A dopant component can comprise a MO oxide and the B dopant component is a M2O3 oxide. As such, routine optimization and experimentation by one of ordinary skill in the art in choosing a MO A dopant, and with the overlapping ranges, would lead a skilled artisan to a material comprising Y2O3, MO, and M2O3 in amounts falling within the ranges of the instant claim 15. As above, per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness. The remainder in these compositions would be ZrO2. Each limitation of claim 15 is therefore met by the Zhu et al teachings, and the claim is not patentably distinct over the prior art of record.
Regarding claim 16, Zhu et al teaches that the inventive thermal barrier coating material comprise ZrO2 balance as the primary component, and contains Y2O3 as the primary stabilizer. The material further contains dopants that can comprise M2O3 oxides and MO2 oxides (see claims 1-2). The Y2O3 (stabilizer) amount of 2-25 mol% overlaps the corresponding range for this component of the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Similarly, the ranges taught by Zhu et al for the dopant components overlap those of the instant claim for the M2O3 components. In the Zhu et al material, the A dopant component can comprise a MO2 oxide and the B dopant component is a M2O3 oxide. As such, routine optimization and experimentation by one of ordinary skill in the art in choosing a MO2 A dopant, and with the overlapping ranges, would lead a skilled artisan to a material comprising Y2O3, MO2, and M2O3 in amounts falling within the ranges of the instant claim 16. As above, per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness. The remainder in these compositions would be ZrO2. Each limitation of claim 16 is therefore met by the Zhu et al teachings, and the claim is not patentably distinct over the prior art of record.
Regarding claim 17, Zhu et al teaches that the inventive thermal barrier coating material comprise ZrO2 balance as the primary component, and contains Y2O3 as the primary stabilizer. The material further contains dopants that can comprise M2O3 oxides, MO2 oxides, and/or MO oxides (see claims 1-2). The Y2O3 (stabilizer) amount of 2-25 mol% overlaps the corresponding range for this component of the instant claim when converted to percentage by weight. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Similarly, the ranges taught by Zhu et al for the dopant components overlap those of the instant claim for the M2O3 components. In the Zhu et al material, the A dopant component can comprise a MO2 and/or MO oxide and the B dopant component is a M2O3 oxide. As such, routine optimization and experimentation by one of ordinary skill in the art in choosing MO2 and MO compounds as the A dopants, and with the overlapping ranges, would lead a skilled artisan to a material comprising Y2O3, MO, MO2, and M2O3 in amounts falling within the ranges of the instant claim 17. As above, per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness. The remainder in these compositions would be ZrO2. Each limitation of claim 17 is therefore met by the Zhu et al teachings, and the claim is not patentably distinct over the prior art of record.
Regarding claim 18, Zhu et al teaches that the inventive thermal barrier coating material comprise ZrO2 balance as the primary component, and contains Y2O3 as the primary stabilizer. The material further contains dopants that can comprise M2O3 oxides, MO2 oxides, and/or MO oxides (see claims 1-2). The Y2O3 (stabilizer) amount of 2-25 mol% overlaps the corresponding range for this component of the instant claim when converted to percentage by weight. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Similarly, the ranges taught by Zhu et al for the dopant components overlap those of the instant claim for the M2O3 components. In the Zhu et al material, the A dopant component can comprise a MO2 and/or MO oxide and the B dopant component is a M2O3 oxide. As such, routine optimization and experimentation by one of ordinary skill in the art in choosing MO2 and MO compounds as the A dopants, and with the overlapping ranges, would lead a skilled artisan to a material comprising Y2O3, MO, MO2, and M2O3 in amounts falling within the ranges of the instant claim 18. As above, per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness. The remainder in these compositions would be ZrO2. Each limitation of claim 18 is therefore met by the Zhu et al teachings, and the claim is not patentably distinct over the prior art of record.
Regarding claim 19, Zhu et al teaches that MgO can be a MO compound as a dopant component of the inventive material. Zhu et al further teaches that Yb2O3 can be a dopant component, and that TiO2 can be an A dopant component.
Conclusion
14. No claim is allowed.
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW16 January 2026