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 Interpretation
Claim 1 recites the term “phase-stable.” The Specification as filed (See [0036]) indicates that said term, when referring to rhombohedral bismuth oxide, generally means that at least about 70% of the rhombohedral crystal lattice structure of the bismuth oxide is maintained under given conditions (e.g. at a given temperature for a given amount of time). Alternatively, the Specification as filed (See [0036]) indicates that said term refers to the ability of bismuth oxides to maintain conductivity with no more than about 25% loss or decay at given conditions (e.g. at a given temperature for a given amount of time). Therefore, and for purposes of examination, “phase-stable” will be interpreted in accordance with either of the aforementioned descriptions.
Claims 1-2, 4, 10, 12, 16-17 each use the term “about” in reference to the boundaries of a given range value. The Specification as filed (See [0035]) states that said term means within 1 standard deviation per the practice in the art, means generally ±20% of the numerical value, or means within an acceptable error range for the particular value. Therefore, and for purposes of examination, “about” will be interpreted in accordance with any of the aforementioned descriptions.
Claim Objections
Claim 1 is objected to because of the following informalities: the phrase “at temperature of about 500 °C” should be written, for example, as “at a temperature of about 500 °C.” Appropriate correction is required.
Claim 5 is objected to because of the following informalities: for sake of consistency, the full names of each of the elements listed should be provided (as in at least Claims 6-7). Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the phrase “wherein said second dopant comprising” should be written, for example, as “wherein said second dopant comprises.” Appropriate correction is required.
Claim 8 is objected to because of the following informalities: for sake of consistency, “said rhombohedral bismuth oxide” should be written as, for example, “said doped rhombohedral bismuth oxide.” Appropriate correction is required.
Claim 9 is objected to because of the following informalities: for sake of consistency, each instance of “said rhombohedral bismuth oxide” should be written as, for example, “said doped rhombohedral bismuth oxide.” Appropriate correction is required.
Claim 13 is objected to because of the following informalities: for sake of consistency, the full names of each of the elements listed should be provided (as in at least Claims 14-15). Appropriate correction is required.
Claim 16 is objected to because of the following informalities: for sake of consistency, “said electrolyte” should be written as, for example, “said rhombohedral bismuth oxide electrolyte.” Appropriate correction is required.
Claim 18 is objected to because of the following informalities: for sake of consistency, the full names of each of the elements listed should be provided (as in at least Claims 19-20). 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 1-15 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 the limitation "said bismuth oxide electrolyte." There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, said limitation will be interpreted as being in reference to the instantly claimed “doped rhombohedral bismuth oxide” (it is noted that this interpretation is consistent with the Specification as filed which also describes the doped rhombohedral bismuth oxide as an electrolyte),
Claim 2 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.
Claim 2 recites the limitation "the amount of bismuth." There is insufficient antecedent basis for this limitation in the claim (“an amount of bismuth” is suggested).
Claim 2 recites the limitation "the total metal content." There is insufficient antecedent basis for this limitation in the claim (“a total metal content” is suggested).
Claim 4 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.
Claim 4 recites the limitation "the total amount." There is insufficient antecedent basis for this limitation in the claim (“a total amount” is suggested).
Claim 4 recites the limitation "the total metal content." There is insufficient antecedent basis for this limitation in the claim (“a total metal content” is suggested).
Claims 9-15 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 9 recites the limitation "said method of doping solid bismuth oxide and producing said rhombohedral bismuth oxide." There is insufficient antecedent basis for this limitation in the claim (it is noted that Claim 8 is specifically in reference to a “method for producing a doped rhombohedral bismuth oxide,” wherein the method merely comprises both “doping a solid bismuth oxide” and “producing said rhombohedral bismuth oxide”).
Claim 10 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.
Claim 10 recites the limitation "the amount of bismuth oxide." There is insufficient antecedent basis for this limitation in the claim (“an amount of bismuth oxide” is suggested).
Claim 10 recites the limitation "the total metal content." There is insufficient antecedent basis for this limitation in the claim (“a total metal content” is suggested).
Claim 12 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.
Claim 12 recites the limitation "the total amount." There is insufficient antecedent basis for this limitation in the claim (“a total amount” is suggested).
Claim 4 recites the limitation "the total metal content." There is insufficient antecedent basis for this limitation in the claim (“a total metal content” is suggested).
Claims 16-20 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 16 specifically recites a method for producing rhombohedral bismuth oxide electrolyte. However, Claim 16 also states that said method comprises sintering to produce “said rhombohedral bismuth oxide.” Therefore, Claim 16 is rendered particularly indefinite insofar as it is unclear whether or not the “said rhombohedral bismuth oxide” itself is the “electrolyte” produced. For purposes of examination, said limitation will be interpreted as being in reference to the instantly claimed “rhombohedral bismuth oxide electrolyte” (it is noted that this interpretation is consistent with the Specification as filed which also describes the rhombohedral bismuth oxide as an electrolyte).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
In accordance with the aforementioned interpretations of the claims for purposes of examination, Claims 1-15 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1-15 of prior U.S. Patent No. 11,978,938. This is a statutory double patenting rejection.
In accordance with the aforementioned interpretations of the claims for purposes of examination, Claims 16-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 16-20 of prior U.S. Patent No. 11,978,938. This is a statutory double patenting rejection.
Allowable Subject Matter
Assuming all aforementioned objections and rejections under 35 U.S.C. 112(b) are overcome, and in the absence of the aforementioned double patenting rejections, Claims 1-20 are indicated as being otherwise allowable.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art references relevant to at least independent Claims 1 and 16 are Sammes et al. (“Bismuth Based Oxide Electrolytes—Structure and Ionic Conductivity”), Shuk et al. (“Oxide ion conducting solid electrolytes based on Bi2O3”), Suzuki et al. (JPS59227727, using the provided English machine translation), and Jung et al. (“Dysprosium and Gadolinium Double Doped Bismuth Oxide Electrolytes for Low Temperature Solid Oxide Fuel Cells”).
Sammes teaches bismuth oxide and doped bismuth oxide solid electrolyte systems (Title, Abstract). Sammes teaches that bismuth oxide systems exhibit high oxide ion conductivities and may function as good electrolyte materials in solid oxide fuel cells (Abstract). In particular, Sammes teaches a (Bi2O3)1-x(Ln2O3)x (where Ln = Nd, La, Er) solid electrolyte system (Pages 1810-1811, Section 3.4, Fig. 16). As outlined in Figure 16, and when Ln = Nd, La, the (Bi2O3)1-x(Ln2O3)x solid electrolyte system maintains an electrical conductivity of at least about 1 x 10-2 S/cm at a temperature of about 500°C.
Shuk teaches Bi2O3-based solid electrolytes (Title, Abstract). Shuk teaches that when doped, a Bi2O3 solid electrolyte may exhibit a rhombohedral structure (Pages 183-184, Section 3.1.1). In particular, Shuk teaches that when doped with Ln2O3 (where Ln = La, Nd, Sm, Gd), a (Bi2O3)1-x(Ln2O3)x solid electrolyte is formed which is rhombohedral in terms of structure (Pages 183-184, Section 3.1.1).
However, neither Sammes nor Shuk, alone or in combination, teach or suggest doping a rhombohedral bismuth oxide with more than one dopant such that the instantly claimed electric conductivity and/or phase-stable characteristics are realized. At best, said references teach or suggest a doped rhombohedral bismuth oxide electrolyte comprising one dopant therein (e.g. Nd, La, Er, Sm, Gd).
Furthermore, Suzuki teaches that a bismuth oxide may be doped with “at least one” of BaO, CaO, SrO, La2O3 while still exhibit a rhombohedral crystal structure (Abstract). In other words, Suzuki teaches a bismuth oxide which may comprise two or more dopants therein.
However, Suzuki does not actually provide any example or embodiment of said bismuth oxide being doped with two or more of said dopants. Further, Suzuki fails to disclose that such a rhombohedral bismuth oxide exhibits electric conductivity characteristics as instantly claimed, and there is no teaching or suggestion in Sammes, Shuk, or Suzuki that such a rhombohedral bismuth oxide would inherently exhibit said characteristics.
Finally, Jung teaches a double dopant bismuth oxide electrolyte system using dysprosium and gadolinium as co-dopants (Abstract). Jung teaches a plurality of such electrolyte systems each having different amounts of co-dopants therein (e.g. 10D5GSB indicates a dysprosium-and-gadolinium stabilized bismuth oxide comprising 10 mol% dysprosium and 5 mol% gadolinium) (See Experimental – Sample preparation). As illustrated in Figure 2, Jung teaches that the XRD patterns indicate that after a first calcination (a step in its method of manufacture), the 10D5GSB system was 85.4% rhombohedral phase, but after a second calcination (also a step in its method of manufacture), the 10D5GSB system was instead 96.2% cubic phase (See Results and Discussion – Phase stability). As illustrated in Figure 6, Jung teaches the conductivity vs. time characteristics of a plurality of the electrolyte systems (See Results and Discussion – Conductivity).
However, Jung neither teaches nor suggests doping a rhombohedral bismuth oxide with more than one dopant such that the instantly claimed electric conductivity and/or phase-stable characteristics are realized. Although Jung discloses the aforementioned conductivity vs. time characteristics, none of the electrolyte systems in Figure 6 exhibit the claimed characteristics (at best, the 10D5GSB system appears to be approximately in accordance with the instant Claims, but there is no explicit conductivity and time data provided alongside Figure 6). Moreover, even if it could be said 10D5GSB system did exhibit the claimed characteristics based on Figure 6, Jung explicitly teaches that the 10D5GSB electrolyte system illustrated in Figure 6 is the cubic phase system as opposed to the instantly claimed rhombohedral system, and there is nothing in Jung to suggests that the 10D5GSB rhombohedral phase system exhibits the same conductivity vs. time characteristics as in Figure 6 (See last paragraph of Results and Discussion – Phase stability).
Conclusion
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/MATTHEW W VAN OUDENAREN/Primary Examiner, Art Unit 1728