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 .
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, 7 and 13 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.
In regard to claim 2, it is unclear how to interpret the limitation as it is unclear what materials are chromium getter materials while not being a sulfur absorber. It is noted that the specification does not explicitly identify any such materials. For the purpose of examination, the limitation will be given the broadest reasonable interpretation.
In regard to claim 7, it is unclear what the term “reactive non-metal” means as the specification does not define the term and the term is not a term of the art.
In regard to claim 13, it is unclear how to interpret the term “upstream” as the claim regards a SOFC component and not a SOFC system. Therefore, the term “upstream” has not been defined in the claim or its parent claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US 2016/0072143; hereinafter “Singh”) in view of Upadhyayula et al. (US 2017/0301939; hereinafter “Upadhyayula”).
In regard to claims 1, 9, 16 and 20, Singh discloses a solid oxide fuel cell (SOFC) system and method of capturing gaseous chromium comprising: a SOFC stack (high temperature electrochemically active component 12 disclosed to be a SOFC in [0019]); a component (CR-getter material 16 in passageway 14) located upstream from the SOFC stack, including the cathode, and downstream from a heat exchanger (see [0022] which discloses that heat exchangers comprise Cr and are located in passageway 14 and would necessarily be upstream of the Cr-getter material) which necessarily increases the temperature of the air flowing therein, the component including a bulk portion (honeycomb substrate; [0033]-[0036] and [0038]); and a surface portion adjacent and in direct contact to the bulk portion comprised of a chromium getter material (Cr-getter material 16; see [0020]), the chromium getter necessarily being an absorber of hexavalent gaseous chromium resulting in the irreversible biding of hexavalent gaseous chromium into a solid form within the component. See Figures 1-3.
Singh is silent in regard to a combination of a sulfur getter material with the chromium getter material which have different chemical compositions.
Upadhyayula discloses a fuel cell system which uses an active sorbent bed 22 having a sorbent material to react with sulfur oxides in the effluent stream upstream of a SOFC ([0004]) to prevent poisoning of the SOFC. See Figures 1-3 and [0024]-[0026].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the use of a chromium getter as taught by Singh and a sulfur getter as taught by Upadhyayula for the purpose of preventing poisoning of the SOFC by both elements by providing the two materials in direct contact on a substrate. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
In regard to claim 2, it is held that Singh discloses a chromium getter material and does not explicitly disclose wherein the material is a sulfur absorber. Thus, it can be held that the Cr getter material of Singh is not a sulfur absorber.
In regard to claims 3-5, Upadhyayula discloses that alkali earth metal oxides can be used as the sulfur sorbent material. See [0024] of Upadhyayula. It is noted that Singh discloses that MgO, CaO, SrO and BaO can be used as the Cr-getter material. See [0026] of Singh. Therefore, it is held that the sulfur getter material of the above combined system can be both a sulfur and chromium absorber as recited in claim 3. It is further held that the sulfur getter material can have a lower affinity to chromium than sulfur as recited in claim 4 and would render the chromium getter material an irreversible chromium absorber as recited in claim 5 because the compositions are the same so the same properties must be present. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I and II).
In regard to claim 6, Upadhyayula discloses wherein the sulfur sorbent material can be alkali metal oxides or alkali earth metal oxides which is within the broadest reasonable interpretation of the claim wherein M is an alkaline earth metal or alkali metal, x is any number between 1 and 3 (such as 1), y is any number between 1 and 4 (such as 1), and wherein z is zero. See [0024].
In regard to claim 7, Upadhyayula discloses wherein the sulfur sorbent material can be an alkali oxide which is supported on silica which is within the broadest reasonable interpretation of the claim as lithium oxide would have a formula of Li2O and silica contains the metalloid silicon. Thus, the value of a is 2 which is between 1 and 4, the value of b is 0, the presence of silicon would necessitate at least some small portion of silicon and the value of y is 2. It would have further been within the ambit of one of ordinary skill in the art to have determined the optimum or workable range of silicon intermixing or chemical interaction of the substrate material through routine experimentation for the purpose of optimizing the ability of the material to sorb sulfur without creating any new or unexpected results. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In regard to claims 8, 15 and 19, Singh discloses wherein the chromium getter material can be BaO and/or SrO or combinations including the previous materials and further CaO and/or MgO. See [0026]. Thus, the materials are made of different chemical compositions as recited in claim 19.
Upadhyayula discloses wherein the sulfur sorbent material can be alkali earth metal oxides which would necessarily include CaO and MgO. See [0024].
In regard to claims 10-12, Singh discloses that the Cr-getter material is coated on the substrate by powder coating, sol-gel processes, CVD processes or depositing a slurry on a substrate. See [0034] and [0038]. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the chromium and sulfur absorber materials of the above combined invention of Singh and Upadhyayula as detectably discrete layers as recited in claim 10 by subsequently coating the two materials on the substrate using sol-gel or CVD processes with the chromium absorber being closest to the bulk portion as recited in claim 11 simply because it is one of the two options of forming the component, or wherein the absorber materials are located on the bulk portion in an alternating order as would be necessarily formed using aa slurry coating process as recited in claim 12. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). The Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
In regard to claims 13 and 18, it is held that the sulfur absorber would be capable of forming a zone upstream of the chromium absorber as it would have been obvious to have provided the absorbers as a single layer with a mixed slurry layer. Thus, the sulfur absorber would necessarily form multiple zones which would be capable of being installed upstream of multiple instances of chromium absorber on the substrate.
In regard to claim 14, Upadhyayula discloses wherein the sulfur sorbent material can be alkali metal oxides or alkali earth metal oxides which is within the broadest reasonable interpretation of the claim wherein M is an alkaline earth metal or alkali metal, x is any number between 1 and 3 (such as 1), y is any number between 1 and 4 (such as 1), and wherein z is zero which means that A is inconsequential. See [0024].
In regard to claim 17, it is held that the resisting is necessarily operative throughout the SOFC system lifetime as the life of the SOFC would end if the Cr or S were to pass therethrough and poison the SOFC.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/Primary Examiner, Art Unit 1774
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