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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 2, 2026 has been entered.
This Office Action addresses claim 2. The claim is newly rejected under 35 USC 112(a) and 103. This action is non-final.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 2 has been amended to recite that the method comprises: forming the electrolyte layer by spray coating, an intermediate smoothing step of smoothing the intermediate layer, and an intermediate layer heating step. The position is taken that as currently recited, the claim contains new matter because the electrolyte forming step is recited as the first part of the method. Throughout the specification, it is disclosed that the electrolyte is formed on or over the intermediate layer. The claim as currently amended reads on an embodiment where the electrolyte is formed before the intermediate layer, which is not supported in the originally filed application. Accordingly, the claim contains new matter.
Claim Rejections - 35 USC § 103
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ruettinger et al (US 20130189606) in view of Jeng et al (US 20080115875) and WO 2008064938.
Ruettinger et al. teach a solid oxide fuel cell comprising a substrate with an electrode layer comprising a porous metal support (S), an electrode layer (A) formed on the support, and an adaptation layer (“intermediate layer”) (AD) formed on the electrode layer (Fig. 5, [0046] et seq.). The adaptation layer has a root mean square surface roughness (Rq) of preferably no more than 1.0 micron ([0020]). The adaptation layer is free of irregular surfaces ([0032]). The reference teaches an intermediate layer heating step of heating the intermediate layer, which is performed at 950-1300C ([0037]). The reference further teaches an electrolyte step of forming the electrolyte by PVD or sol-gel method on the adaptation layer ([0038], [0039]).
Although Ruettinger is not anticipatory of the range of the intermediate layer heating step recited in claim 2 (800-1100C), the disclosed range overlaps with the claimed range and therefore renders it 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, 191USPQ 90; In re Woodruff, 16 USPQ2d 1934).
Ruettinger does not expressly teach that the arithmetic roughness (Ra) is 0.224 micron or less as recited in claim 2.
However, the skilled artisan would first recognize that the Rq and Ra values are related (see [0011] for discussion of these values and how they are calculated). The skilled artisan would recognize that the smaller a value for Rq, the smaller the corresponding value for Ra. Thus, although the reference does not expressly teach an Ra value for the adaptation layer, it is reasonable to interpret the teaching of Rq being less than 1.0 microns as disclosing an Ra of similar scope. Furthermore, the Ra value may even be smaller than Rq because as explained in [0011], the Rq value takes into account more outlying values. The claimed range of 0.224 micron or less lies inside the disclosed range of 1 micron or less. Therefore, the reference renders obvious the claimed range for the reasons noted above.
Ruettinger further does not expressly teach an intermediate layer smoothing step of smoothing the intermediate layer through mechanical smoothing as also recited in claim 2.
Jeng et al. is directed to a fuel cell electrode comprising a catalyst layer coated on a base substrate (abstract). The catalyst layer is subject to a smoothing step via pressing (mechanical smoothing) at 2-10 atm prior to its inclusion in a membrane electrode assembly ([0022]).
Therefore, the limitation would have been obvious to one skilled in the art at the time of filing because a particular known technique (pressing/mechanical smoothing) was recognized as part of the ordinary capabilities of one skilled in the art. KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007). That is, in the fuel cell art, the use of a pressing or compression step was a known method of providing a smooth fuel cell electrode layer. Accordingly, it would have been obvious to use such a step to perform a smoothing step in Ruettinger, thereby providing for the smooth intermediate layer prior to deposition of the electrolyte layer.
Ruettinger further do not expressly teach that the electrolyte layer is formed by spray coating, at a temperature of 1100 C or higher as also recited in claim 2.
WO ‘938 is directed to a high temperature fuel cell. On pages 4 and 5 of the translation, the reference teaches that an electrolyte layer is thermally sprayed on the anode, or alternatively, deposited by PVD or sol-gel.
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because a particular known technique (thermal spraying, which is a type of spray coating) was recognized as part of the ordinary capabilities of one skilled in the art. KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007). Accordingly, it would have been obvious to use this step to perform the electrolyte deposition step in Ruettinger. In addition, the recited temperature is not considered to distinguish over the references. Depending on the specific materials involved and type of thermal spraying, the processing temperature can be routinely optimized by one skilled in the art. As such, the recited temperature range is rendered obvious.
Response to Arguments
Applicant’s arguments filed January 2, 2026 have been fully considered but they are not persuasive insofar as they apply to the present rejection. Applicants state that the references do not teach or suggest each and every element of amended claim 2. However, it is first noted that Ruettinger discloses a high temperature heat treatment of the intermediate layer. Furthermore, WO ‘938 is newly relied upon as teaching a spray coating step of the electrolyte. Accordingly, the claims remain rejected under 35 USC 103.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Nicole Buie-Hatcher, can be reached at (571) 270-3879. The phone number for the organization where this application or proceeding is assigned is (571) 272-1700. Documents may be faxed to the central fax server at (571) 273-8300.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
January 16, 2026