DETAILED ACTION
The claims 1-17 are pending and presented for the examination. Claims 12-16 are withdrawn from consideration as non-elected, and claims 1-11 and 17 are examined on merits herein.
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-11 and 17, in the reply filed on 02/12/2026 is acknowledged.
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/06/2023 and 04/22/2024 are being considered by the examiner.
Claim Objections
Claim 2 is objected to because of the following informalities: the claim refers to the composition as “solid solution” twice. It appears that the two uses of this same term in describing the phase content of the claimed composition are superfluous. Appropriate correction is required.
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 1-11 and 17 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 1 recites that the secondary oxide comprises “one or more secondary oxide cations […]” of various elements. The meaning of “oxide cations” is unclear. It appears as though the claim is intending to recite that the secondary oxide is an oxide of tantalum, niobium, or combinations thereof, however, the use of the oxide cation language renders the scope of the claim coverage unclear. As such, the claim is indefinite under USC 112.
Claims 2, 9, and 11 use the term “substantially” to refer to the oxide component content or the phase content of the claimed composition. The term is ambiguous because it does not quantitatively define what degree of oxide content or phase content would constitute an amount that is “substantially” the feature in question, and thus the scopes of the coverages of the aforementioned claims are unclear.
Claims 7 and 8 are indefinite because they recite the ranges for multivalent oxides (such as Ta2O5, Nb2O5, Y2O3) using atomic percentages. It is not clear how or if the equivalent atomic percentages can be given for components such as the aforementioned that comprise multiple cations/anions. Generally oxide components in a ceramic are recited as percentages by weight or percentages by mole, and it is not clear if the instantly recited atomic percent is meant to be a claim to molar percentage. Because of this ambiguity in the claim coverage and the amounts of the component oxides in claim 7 and 8, the metes and bound of the claims are unclear and the claims are indefinite under USC 112.
Claim 17 recites that the secondary oxide comprises “one or more secondary oxide cations […]” of various elements. The meaning of “oxide cations” is unclear. It appears as though the claim is intending to recite that the secondary oxide is an oxide of tantalum, niobium, or combinations thereof, however, the use of the oxide cation language renders the scope of the claim coverage unclear. As such, the claim is indefinite under USC 112.
Claims 3-6 and 10 are also rejected under USC 112 as depending from indefinite claims and therefore containing the indefinite limitations therein.
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 1, 3, 5-7, 9-10, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Darolia et al (US 6887595 B1).
Regarding claim 1, Darolia et al teaches a thermal barrier coating material based on ZrO2. Darolia et al teaches a multilayer coating wherein a top layer comprises, along with said ZrO2, a stabilizing component that comprises multiple oxides (see claim 1). The stabilizing component can comprise Yb2O3 and/or La2O3, and further comprises an oxide that is selected from Y2O3, CeO2, and combinations thereof among others, and an additional oxide that can be Ta2O5 (see claim 1). As such, Darolia et al teaches a composition comprising a primary oxide of zirconia, and, through routine optimization and experimentation by one of ordinary skill in the art in choosing the aforementioned components from the small and finite lists, would further comprise a rare earth oxide, CeO2, and Ta2O5. The multiple oxides of the Darolia et al material form a single phase ceramic, as in the instantly claimed material. As such, they can be considered and would constitute primary, secondary, and tertiary oxides according to the terminology of the instant claims. That Darolia et al uses a differing terminology when referring to the component oxides is not a showing of any difference between the Darolia et al thermal barrier material and that of the instant claims, because as discussed above, each material is a single phase stabilized zirconia. Each limitation of instant claim 1 is therefore met by choosing the aforementioned oxides from the finite options of Darolia et al, and the claim is therefore obvious and not patentably distinct over the prior art of record.
Regarding claim 3, Darolia et al teaches that the inventive material can comprise tantalum oxide.
Regarding claim 5, Darolia et al teaches that the inventive material can comprise yttrium oxide.
Regarding claim 6, Darolia et al teaches that the inventive material can comprise ytterbium oxide.
Regarding claim 7, Darolia et al teaches that the CeO2 content is up to 4 mol% (see claim 1). This range thus overlaps and renders obvious the corresponding range of the instant claim. Per MPEP 2144.05, overlapping ranges have been held to establish prima facie obviousness. The contents of the Ta2O5 (secondary oxide) and La2O3/Y2O3 (tertiary oxide) components in the Darolia et al composition also overlap the corresponding instant claim ranges. The Darolia et al composition can be free of components other than those discussed above, and thus any components considered trace impurities are present in an amount of less than 0.5%, with the balance being ZrO2. Each further limitation of instant claim 7 is therefore met by the teachings of Darolia et al.
Regarding claim 9, as discussed above, Darolia et al teaches a zirconia-based composition, and thus one wherein the primary oxide is substantially zirconium oxide. As further discussed above, Darolia et al teaches that tantalum oxide and ytterbium oxide can be present. The presence of these latter two oxides in the Darolia et al composition would constitute a material substantially comprising tantalum oxide as a secondary oxide and substantially comprising ytterbium oxide as a tertiary oxide, the instantly claimed composition using the open, “comprising” language.
Regarding claim 10, Darolia et al teaches that the inventive material can comprise tantalum oxide and ytterbium oxide.
Regarding claim 17, Darolia et al teaches a thermal barrier coating material based on ZrO2. Darolia et al teaches a multilayer coating wherein a top layer comprises, along with said ZrO2, a stabilizing component that comprises multiple oxides (see claim 1). The stabilizing component can comprise Yb2O3 and/or La2O3, and further comprises an oxide that is selected from Y2O3, CeO2, and combinations thereof among others, and an additional oxide that can be Ta2O5 (see claim 1). As such, Darolia et al teaches a composition comprising a primary oxide of zirconia, and, through routine optimization and experimentation by one of ordinary skill in the art in choosing the aforementioned components from the small and finite lists, would further comprise a rare earth oxide, CeO2, and Ta2O5. The multiple oxides of the Darolia et al material form a single phase ceramic, as in the instantly claimed material. As such, they can be considered and would constitute primary, secondary, and tertiary oxides according to the terminology of the instant claims. That Darolia et al uses a differing terminology when referring to the component oxides is not a showing of any difference between the Darolia et al thermal barrier material and that of the instant claims, because as discussed above, each material is a single phase stabilized zirconia. Each limitation of instant claim 17 is therefore met by choosing the aforementioned oxides from the finite options of Darolia et al, and the claim is therefore obvious and not patentably distinct over the prior art of record.
Claims 1-5, 11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (KR 100840777 B1).
Regarding claim 1, Kim et al teaches a zirconia composite ceramic comprising 88-90.92 mol% ZrO2, 5-6 mol% Y2O-3, 4-5 mol% Nb2O5 or Ta2O5, and 0.072-0.75 mol% of CeO2 (see Abstract). Kim et al therefore teaches a composition comprising the primary oxides, the secondary oxide, and the tertiary oxide components of instant claim 1. The multiple oxides of the Kim et al material form a single-phase tetragonal sintered ceramic, as in the instantly claimed material. As such, they can be considered and would constitute primary, secondary, and tertiary oxides according to the terminology of the instant claims. Each limitation of claim 1 is therefore met by the teachings of Kim et al, and the claim is obvious and not patentably distinct over the prior art of record.
Regarding claim 2, Kim et al teaches that the inventive ceramic is a substantially tetragonal single phase material.
Regarding claim 3, Kim et al teaches that the inventive ceramic comprises tantalum.
Regarding claim 4, Kim et al teaches that the inventive ceramic comprises niobium.
Regarding claim 5, Kim et al teaches that the inventive ceramic comprises yttrium.
Regarding claim 11, Kim et al teaches that the inventive ceramic is a substantially tetragonal single phase material.
Regarding claim 17, Kim et al teaches a zirconia composite ceramic comprising 88-90.92 mol% ZrO2, 5-6 mol% Y2O-3, 4-5 mol% Nb2O5 or Ta2O5, and 0.072-0.75 mol% of CeO2 (see Abstract). Kim et al therefore teaches a composition comprising the primary oxides, the secondary oxide, and the tertiary oxide components of instant claim 17. The multiple oxides of the Kim et al material form a single-phase tetragonal sintered ceramic, as in the instantly claimed material. As such, they can be considered and would constitute primary, secondary, and tertiary oxides according to the terminology of the instant claims. Each limitation of claim 17 is therefore met by the teachings of Kim et al, and the claim is obvious and not patentably distinct over the prior art of record.
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The prior art, either alone or in combination, fails to teach or suggest a composition meeting each limitation of instant claim 1, and further having the compositional features of instant claim 8.
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
NSW28 April 2026
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