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 .
Specification
The use of the terms THERMICULITE®, INCONEL®, INCOLOY®, CROFER®, HITACHI®, and HAYNES®, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 2-3 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.
Claims 3-5 contains the trademark/trade names INCONEL®, INCOLOY®, CROFER®, HITACHI®, and HAYNES®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe various defined metal alloys obtained from a specific manufacturer and, accordingly, the identification/description is indefinite. Note that the trade names as used by Applicant would be understood by one of ordinary skill in the art as supporting future amendment of the specification and claims to define the particular alloy compositions associated with the trade named products.
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.
Claims 1-3 and 18- 21 are rejected under 35 U.S.C. 103 as being unpatentable over Halvorson et al (US 2003/0039601 A1) in view of Amborsky et al (US 2022/0282577 A1).
Halvorson et al teach (see abstract, figs. 2, 6, and 7) a device comprising:
a chamber (shell 73 of pressure vessel 72) having a first internal space defined by the chamber wall;
a plate (tubesheet 106) in the first internal space; and
a ceramic chamber (the interior of tubes 80) having a second internal space defined by at least one ceramic chamber wall, wherein the ceramic chamber is inside the metal chamber and the second internal space penetrates the plate (106).
Halvorson et al fail to teach the material of construction of the chamber wall (shell 73).
Selection of metal as the material of construction of the chamber wall (shell 73) would have been within the ordinary level of skill in the art due to metal’s inherent characteristics, such as strength, heat resistance, and gas impermeability.
Halvorson et al teach that the ceramic chamber included two concentric tubes, with the internal tube being an inlet and the external tube being an outlet, the inlet and outlet corresponding to the claimed “two openings”.
Halvorson et al do not teach a closed bend formed as part of the ceramic chamber.
Amborsky et al teach (see comparison of fig. 2 and fig. 3A, paragraphs [0011] and [0136]) a problem with the concentric inlet-outlet pipes was that the design did not maximize heat transfer to the surroundings since the inner inlet pipe was only adjacent to the outlet pipe. The solution taught by Amborsky et al was to provide an inlet leg and a separate outlet leg connected by a u-bend so that more surface area of the pipe was in contact with the surroundings.
Note that the rate of reaction occurring at the ceramic tube of Halvorson et al acted based upon the surface area of the tube exposed to the second internal space on one side and the first internal space on the other side, in a manner similar to the rate of heat transfer being proportional to the surface area in Amborsky et al.
Thus, one of ordinary skill in the art would have applied to the u-bend shape taught by Amborsky et al to the tubes of Halvorson et al for the purpose of increasing the surface area of the tubes that were in direct contact with the exterior surface as compared to the concentric tube shapes shown by Halvorson et al.
Regarding claims 2 and 3, Halvorson et al teach (see paragraph [0009]) that known metals used in reactors comprising synthesis gas included HAYES® 230 alloy or INCOLOY® 800 HT alloy. Selection of these or similar heat-resistant alloys for the metal chamber wall or the plate would have been obvious to one of ordinary skill in the art at the time of filing because selection of a suitable material from known materials having the necessary properties to function involves no inventive skill absent a showing of unexpected results.
Regarding claim 18, it would have been obvious to one of ordinary skill in the art at the time of filing to have made the u-bend as an integral piece with the remainder of the ceramic tube to ensure gas leakage was kept to the absolute minimum.
Regarding claim 19, Halvorson et al teach the importance of maintaining the first internal space separate from the second internal space, thus one of ordinary skill in the art would have constructed the u-bend to ensure gas tightness to prevent fluid communication between the first and second internal spaces.
Regarding claim 20, it would have been obvious to one of ordinary skill in the art at the time of filing to have made the u-bend portion from the same material as the rest of the ceramic tube to permit the presence of even more surface area for reaction. Halvorson et al teach the tube being made from YSZ (see Table 1).
Regarding claim 21, Halvorson et al teach that the ceramic chamber wall (tube 80) abuts the plate (106) but does not pass through the plate. See fig. 7.
Claims 4, 10, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Halvorson et al (US 2003/0039601 A1) as applied to claim 1 above, and further in view of Schwartz et al (US 6,214,757 B1).
Halvorson et al teach using a ceramic membrane according to various other patents (see paragraph [0003], Table 1), but fails to teach the presence of anode and cathode layers on the opposing sides of the membrane,
Schwartz et al is one of the other patents referenced by Halvorson et al as teaching suitable ceramic materials for performing the oxygen separation reaction. Schwartz et al go on to teach (see col. 12, lines 51-65 and paragraph spanning cols. 14 and 15) that addition of catalyst layers (51 and 52, figs. 5-9) enhance the efficiency of the reaction being performed by the membrane.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have added the catalyst layers taught by Schwartz et al to the opposing sides of the ceramic tube of Halvorson et al to enhance the efficiency of the oxygen transportation reaction of Halvorson et al as taught by Schwartz et al. Note that the opposing catalyst layers functioned as an anode and a cathode as claimed, with the ceramic membrane being the electrolyte between the anode and cathode.
Regarding claim 10, Halvorson et al teach (see Table 1, no. 14) the material of the ceramic tube being a dual phase mixed conductor comprising lanthanum chromite (“LaCr1-yMgyO3-d” where y=0) and yttria stabilized zirconia (“YSZ”).
Regarding claim 15, Halvorson et al teach (see paragraphs [0024] and [0071]) that the ceramic tube (80) may include a dense film of the ceramic material with a porous support (i.e. “substrate”).
Regarding claim 17, Halvorson et al and Schwartz et al each teach that the ceramic electrolyte material possessed both ionic conductivity and electronic conductivity. Matching the values of electrical resistance and ionic resistance would have been obvious to one of ordinary skill in the art at the time of filing to ensure proper functioning of the membrane to short circuit any electric potential generated while providing minimal resistance to the flow of oxygen anions through the membrane.
Claims 5-9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Halvorson et al (US 2003/0039601 A1) in view of Schwartz et al (US 6,214,757 B1) as applied to claim 6 above, and further in view of Hall et al (US 2020/0255962 A1).
Schwartz et al teach (see paragraph spanning cols. 14 and 15) various catalysts were suitable for the catalyst layers but fails to teach any of the specifically claimed materials or combinations recited in claims 7-11, 13-16, 18 or 19.
Hall et al teach (see abstract, fig. 6B, paragraph [0172], fig. 1A, paragraph [0098]) a device that performs the same reactions as Halvorson et al, including reduction of steam (H2O) at the anode and oxidation of hydrocarbons (e.g. CH4) at the cathode with oxygen ion transport across the ceramic membrane located between the anode and cathode. Hall et al teach (see paragraphs [0102]) suitable anode (first electrode) and cathode (second electrode) compositions. Hall et al teach (see paragraph [0012] and claim 6) suitable electrolyte compositions.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the anode, cathode, and electrolyte compositions taught by Hall et al in place of the materials taught by Schwartz et al with a reasonable expectation of success as evidenced by Hall et al performing the same reactions as Schwartz et al and Halvorson et al. Utilization of a known material for its known purpose has been held to be prima facie obvious. See MPEP § 2144.07.
Regarding claim 5, Hall et al teach (see paragraph [0098]) that the cathode (second electrode) comprised Ni-YSZ or NiO-YSZ.
Regarding claims 6, 13, and 14, Hall et al further teaches (see paragraph [0098]) that the anode (first electrode) also comprised Ni-YSZ or NiO-YSZ and (see paragraph [0012] and claim 6) that the electrolyte comprised YSZ and Ni. Thus, Hall et al contemplated making the anode, cathode, and electrolyte from the same materials/elements.
Regarding claim 7, Hall et al teach (see paragraph [0098]) that both the cathode (second electrode) and anode (second electrode) comprised Ni-YSZ.
Regarding claim 8, Hall et al teaches (see paragraph [0098]) that the anode (first electrode) comprised Ni-YSZ or NiO-YSZ.
Regarding claim 9, Hall et al teach (see paragraph [0112]) that the anode (first electrode) comprised “doped or undoped ceria and a material selected from the group consisting of Cu, CuO, Cu2O, Ag, Ag.sub.2O, Au, Au.sub.2O, Au.sub.2O.sub.3, stainless steel, and combinations thereof”.
Regarding claim 12, Hall et al teach (see paragraph [0012] and claim 6) that the electrolyte comprised YSZ and Ni. Note that the language of the specification and claims do not exclude the presence of other doping or stabilizing elements in the zirconia.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Halvorson et al (US 2003/0039601 A1) in view of Schwartz et al (US 6,214,757 B1) as applied to claim 4 above, and further in view of Ghosh et al (“Functionally graded doped lanthanum cobalt ferrite and ceria-based composite interlayers for advancing the performance stability in solid oxide fuel cell”).
Halvorson et al and Schwartz et al fail to teach that the electrolyte (ceramic tube) included either CoCGO (composite material of cobalt and gadolinium-doped ceria) or LST-stabilized zirconia.
Ghosh et al teach (see abstract, section 1) that CoCGO was a known material possessing both ionic and electronic conductivity.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the CoCGO material of Ghosh et al for the ceramic electrolyte of Halvorson et al because Ghosh et al teach that it possessed the necessary ionic and electronic conductivity to function as the electrolyte in the device of Halvorson et al. Utilization of a known material for its known purpose has been held to be prima facie obvious. See MPEP § 2144.07.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Halvorson et al (US 2003/0039601 A1) in view of Schwartz et al (US 6,214,757 B1) as applied to claim 15 above, and further in view of Mazanec et al (US 5,591,315 A).
Halvorson et al fail to teach the material of the porous matrix (“substrate” as claimed).
Mazanec et al teach (see abstract, col. 3, lines 13-34 and col. 15, line 37 to col. 16, line 3) providing a porous support that supported a ceramic membrane having an anode and a cathode on opposing sides of the ceramic membrane, wherein the device was used for reacting steam/oxygen with a fuel to form synthesis gas by transportation of oxygen anions through the membrane (i.e. the same process as taught by Halvorson et al and Schwartz et al, see Mazanec et al at col. 19). The porous support simplified production of the multilayered device by providing an initial surface for deposition of the layers of the device. The porous support material was selected such that it did not interfere with the reaction process (i.e. was “inert”), and it was suggested to use the same materials as the adjoining layer (either the anode or cathode depending upon order of operations).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have selected an inert material as the porous matrix of Halvorson et al as suggested by Mazanec et al to prevent the porous support from interfering with the oxygen transportation reaction.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 4-23 of copending Application No. 18/433,150. The claims of the ‘150 application teach all of the claimed elements, see especially claim 20 of the ‘150 application. Regarding instant claims 2-17 and 21, see claims 4-19 and 23, respectively, of the ’150 application. Regarding instant claims 18-20, see claims 20-22, respectively, of the ’150 application.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/HARRY D WILKINS III/Primary Examiner, Art Unit 1794
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