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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-8) in the reply filed on 7/1/26 is acknowledged.
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.
Claim 3 is 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.
Regarding claim 3, the limitations of the claim are inconsistent with applicant’s specification, rendering the claim indefinite.
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack,427 F.2d 1378, 166 USPQ 204 (CCPA 1970). See MPEP 2173.03.
Note that claim 3 recites that “the electrically conductive member contains 5 vol% or more and 50 vol% or less of the first oxide particles.” This limitation is inconsistent with applicant’s specification which describes that “[0062] The coating layer 43 may contain 5 vol% or more and 50 vol% or less of the first oxide particles 46.” Note that the electrically conductive member further includes the base member, and there is no support for a ratio of first oxide particles to the electrically conductive member (which includes a base member of unspecified size and the conductive oxides of the coating member). The description in the specification describes the volume ratio of the first oxide particles 46 is calculated as v46/(v45+v46) x 100 (see paragraph [0062]), thus comparing the volume of first oxide particles to the coating, and not to the entire electrically conductive member. For examination purposes, the volume ratio is treated according to the description in the specification, which is a volume ratio of the first oxide particles to the coating layer.
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.
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Molin et al (“Protective coatings for stainless steel for SOFC applications,” cited in IDS filed 8/22/25).
Regarding claim 1, Molin et al teaches an electrically conductive member (p.1699, Conclusions, SOFC interconnect) comprising:
a base member containing chromium (abstract, p.1696 col 1, ferritic Crofer 22 APU stainless steel, ~22% Cr); and
a coating layer covering the base member (abstract, deposited protective film on the stainless steel),
the coating layer containing a conductive oxide and a first oxide (p.1698, see paragraph above fig. 4, in the case of the sample coated with yttrium, the Y₂O₃, Cr₂O₃, and a perovskite YCrO₃, note that the YCrO3 after doping with Ca was regarded as a ceramic interconnector material having relatively high electrical conductivity), the first oxide being an oxide of a first element whose absolute values of first ionization energy and free energy of formation of an oxide are smaller than those of chromium (p.1698, see above, see Y₂O₃, see applicant's specification, paragraph [0057] describing example first oxides that contain an oxide of an element whose absolute values of first ionization energy and free energy of formation of an oxide are smaller than those of chromium, including Y2O₃).
Regarding claim 5, Molin et al teaches wherein the conductive oxide contains a composite oxide having a perovskite structure (p.1698 col 1, the YCrO3 is a perovskite that after doping (with Ca) was regarded as a ceramic interconnector material for high-temperature SOFCs, has relatively high electrical conductivity).
Claim(s) 1-2 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu (“CeO2-doped (Co,Mn)3O4 coatings for protecting solid oxide fuel cell interconnect alloys,” cited in IDS filed 8/22/25).
Regarding claim 1, Zhu et al teaches an electrically conductive member (abstract, solid oxide fuel cell interconnect) comprising:
a base member containing chromium (abstract, Crofer 22 APU alloy substrate, p.180, section 2.1, having 22% Cr); and
a coating layer covering the base member (abstract, CeO2-doped (Co,Mn)3O4 coating on the Crofer alloy substrate),
the coating layer containing a conductive oxide and a first oxide (abstract, CeO2-doped (Co,Mn)3O4 coating, note that (Co,Mn)3O4 is a conductive oxide (p.179, Introduction), and CeO2 is a first oxide), the first oxide being an oxide of a first element whose absolute values of first ionization energy and free energy of formation of an oxide are smaller than those of chromium (note that CeO2 is described in applicant's specification, paragraph [0057], as an example oxide of an element whose absolute values of first ionization energy and free energy of formation of an oxide are smaller than those of chromium).
Regarding claim 2, Zhu et al teaches wherein the coating layer is a sintered body (p.180, Section 3.1, thermal conversion at 600-800°C to form the (Co,Mn)3O4-based coating, solid-state interdiffusion), the sintered body containing conductive oxide particles and first oxide particles containing the first oxide (p.180, Section 3.1, see fig 1(a), note CeO2 and Mn3O4 particles, and fig 2(b) showing CeO2 particles (see arrows) after thermal conversion).
Regarding claim 5, Zhu et al teaches wherein the conductive oxide contains a composite oxide having a spinel structure (abstract, (Co,Mn)3O4 spinel).
Claim(s) 1-2 and 5-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ashary (US 2015/0194682).
Regarding claim 1, Ashary teaches an electrically conductive member (abstract, coated interconnect for a solid oxide fuel cell) comprising:
a base member containing chromium (abstract, interconnect substrate comprising iron and chromium); and
a coating layer covering the base member (abstract, first metal oxide coating formed over an air side of the interconnect substrate),
the coating layer containing a conductive oxide and a first oxide (paragraph [0039], (Mn, Co)3O4 spinel coating (conductive oxide, paragraph [0013], higher electrical conductivity) with a non-spinel metal oxide such as Y2O3 (first oxide)), the first oxide being an oxide of a first element whose absolute values of first ionization energy and free energy of formation of an oxide are smaller than those of chromium (paragraph [0039], non-spinel metal oxides such as Y2O3 may be added to the composite spinel and perovskite coating 102, note that Y2O3 is described in applicant’s specification, paragraph [0057], as an example first oxide that contains an oxide of an element whose absolute values of first ionization energy and free energy of formation of an oxide are smaller than those of chromium).
Regarding claim 2, Ashary teaches wherein the coating layer is a sintered body (paragraph [0013], sintered), the sintered body containing conductive oxide particles and first oxide particles containing the first oxide (paragraph [0006], metal oxide coating is formed from powder particles).
Regarding claim 5, Ashary teaches wherein the conductive oxide contains a composite oxide having a spinel structure (paragraph [0013], MCO, paragraph [0034], spinel powder, paragraph [0036-0038]).
Regarding claim 6, Ashary teaches an electrochemical cell device (paragraph [0001-0002], fuel cell stack, fig 4) comprising:
two or more electrochemical cells each comprising at least one element portion (paragraph [0002], multiple fuel cells, adjacent cells, see fig 4, SOFC 1); and
the electrically conductive member according to claim 1 (paragraph [0002], interconnect between adjacent cells, paragraph [0006], interconnect substrate comprising iron and chromium and a first metal oxide coating, fig 4, interconnect 9).
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.
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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ashary (US 2015/0194682) in view of JP 5839756 B1 (cited in IDS filed 3/11/24).
Regarding claim 3, Ashary teaches a conductive oxide (paragraph [0039], (Mn,Co)3O4 coating) and a first oxide (paragraph [0039], a getter for impurities, a second phase such as non-spinel metal oxides, including Y2O3), but is quiet to the coating of the electroconductive member contains 5 vol% or more and 50 vol% or less of the first oxide particles.
JP 5839756 B1 teaches a coating film formed on the surface of a metal member composed of metal materials containing iron and chromium (paragraph [0007]). The coating film is composed of conductive ceramics, such as (Mn,Co)3O4 (paragraph [0011]). The coating film further includes MgO which functions as a trapping agent (so-called a getter) that captures chromium (Cr) (paragraph [0008-0009]). The MgO content in the coating film is preferably 3 to 30% by volume (paragraph [0010]). If the content exceeds 30 volume%, delamination occurs on the coating film, and that being within the range of 3 to 30 volume% reduces the output voltage degradation as well as making it difficult to peel (paragraph [0085]).
In view of the teachings of JP 5839756 B1, it would have been obvious to one of ordinary skill in the art, through routine experimentation, to optimize the amount of the first oxide to fall within claimed range of 5 to 50 vol%, as JP 5839756 B1 teaches that if the volume % of the oxide getter relative to the conductive oxide is greater than 30%, the film will be prone to peeling, whereas a volume % within the claimed range will reduce the output voltage degradation and make the coating it difficult to peel (paragraph [0085]).
"[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II).
Regarding claim 4, Ashary is quiet to wherein the first oxide particles have an average particle diameter of 0.1 µm or more and 5 µm or less.
However, JP 5839756 B1 teaches a coating film formed on the surface of a metal member composed of metal materials containing iron and chromium (paragraph [0007]). The coating film is composed of conductive ceramics, such as (Mn,Co)3O4 (paragraph [0011]). The coating film further includes MgO which functions as a trapping agent (so-called a getter) that captures chromium (Cr) (paragraph [0008-0009]). JP 5839756 B1 teaches that the MgO getter particles have a particle size of 0.5 - 5µm, and that the porosity and pore size of the coating film can be adjusted by adjusting the particle size of the powder in the paste (paragraph [0065], [0076], [0078]). JP 5839756 B1 further describes that the occurrence of cracks is strongly correlated with the average pore diameter within the coating film (paragraph [0094], [0099]).
In view of the teachings of JP 5839756 B1, it would have been obvious to one of ordinary skill in the art, through routine experimentation, to optimize the average particle diameter of the first oxide particles of Ashary to fall within the claimed range of 0.1 µm or more and 5µm or less, as JP 5839756 B1 teaches that the particle sizes can be adjusted so as to adjust porosity of the coating film, which is strongly correlated with the occurrence of cracks (JP 5839756 B1, paragraph [0065], [0076], [0078], [0094], [0099]).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ashary (US 2015/0194682) in view of Koi (US 2019/0067710).
Regarding claim 7, Ashary teaches the electrochemical cell device according to claim 6 (see claim 6 above) but is quiet to a module that comprises a storage container housing the electrochemical cell device.
Koi teaches a cell, a cell stack assembly, a module, and a module-accommodating assembly (paragraph [0002]) for fuel cells (paragraph [0003]). Koi teaches that the cell stack assembly, including the cells, is accommodated in a container (19), thus forming a module (18) having an enhanced long-term reliability (paragraph [0084]). Koi further teaches a module-accommodating assembly (23) accommodating the module (18), further enhancing the long-term reliability (paragraph [0088]).
It would have been obvious to one of ordinary skill in the art to modify Ashary so as to further include a storage container housing the electrochemical cell, so as to form a module having an enhanced long-term reliability, as taught in Koi (paragraph [0084]).
Regarding claim 8, the combination teaches a module housing device (Koi, fig 10, module-accommodating assembly 23) comprising:
the module according to claim 7 (see rejection of claim 7 above, Koi, fig 9, module 18);
an auxiliary device configured to operate the module (Koi, fig 10, paragraph [0085-0088], accessories operating the cell stack assembly); and
an external case (Koi, fig 10, paragraph [0085-0088], exterior case) housing the module and the auxiliary device (Koi, fig 10, paragraph [0085-0088], module-accommodating assembly accommodating module 18 and accessories operating the cell stack in an exterior case).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lee et al (US 2015/0118597) teaches a metal separator with a conductive spinel oxide film (abstract) having a composition of Mn3-xCox-yYyO4-b (paragraph [0012]) so as to suppress migration of oxygen through the grain boundaries and poisoning of electrodes by metal volatilization (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKY YUEN whose telephone number is (571)270-5749. The examiner can normally be reached 9:30 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
Prosecution Insights