DETAILED ACTION
Application 18/661485, “SOLID OXIDE FUEL CELLS WITH 3D INKJET-PRINTED MICROSTRUCTURES AND METHOD FOR FABRICATING THE SAME”, was filed with the USPTO on 5/10/24 and claims priority from a provisional application filed on 5/10/23.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action on the merits is in response to communication filed on 5/29/26.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a fuel cell, classified in H01M8/124,
II. Claims 11-20, drawn to method of making a fuel cell, classified in H01M4/8832.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process, such as by selective laser sintering.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions are drawn to divergent of search fields (the inkjet limitations are not necessarily required of the product) requiring searching in different subclasses and employing different search queries.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with James Buchanan on 9/18/26 a provisional election was made without traverse to prosecute the invention of product, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action.
Claims 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 3-6 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kelsall (US 2019/0207227).
Regarding claim 3, Kelsall teaches a solid oxide fuel cell (paragraphs [0043, 0134-0140]; see also [0163-0165]; Fig. 5), comprising:
an anode layer (e.g. NiO-YSZ substrate at paragraph [0135]);
an electrolyte layer deposited upon the anode layer; a plurality of microstructures comprising a microstructure material and deposited upon the electrolyte layer, each microstructure composed of a plurality of layers of microstructure ink that have been applied by an inkjet printing system and sintered, the microstructure ink comprising the microstructure material (paragraphs [0136-0139, 0032-0043]; [0136-0137] for instance describe an inkjet deposition process of depositing an initial solid electrolyte [YSZ] layer on the anode substrate [NiO-YSZ] and layer-wise building inkjet printed microstructures onto the initial layer); and
a cathode layer (paragraph [0140]) deposited upon the electrolyte layer and the plurality of microstructures.
It is noted that the claims have required include limitations drawn to the process of manufacture, e.g. “have been applied by an inkjet printing system and sintered...”, which are product-by-process limitations. Such limitations are only given weight in product claims only based on the structure required or implied by the process recitations; the actual process is not required to be taught by the prior art (MPEP 2113). Here, the citations of the prior art refer to an inkjet process; however, these citations are for sake of simplicity and completeness of record, noting that only the recited and implied structure is required of the prior art.
Regarding claim 4-6, the cited art remains as applied to claim 3. Kelsall further teaches wherein each microstructure of the plurality of microstructures is shaped like a frustum having a first base and a second base, wherein the first base is substantially parallel to the second base, and wherein the microstructure is coupled to the electrolyte layer through the second base, wherein the frustum is a conical frustum or an elliptical frustum (see Figs 3A and 3B, noting that a conical frustum, which is a special case of an elliptical frustum where the foci coincide at the center of the circle, is depicted).
Regarding claim 10, the cited art remains as applied to claim 3. Kelsall further teaches wherein the anode layer comprises yttria-stabilized zirconia (YSZ) and NiO, the cathode layer comprises lanthanum strontium manganite (LSM) and YSZ, the electrolyte layer comprises YSZ, and the microstructure material is YSZ (paragraphs [0134-0140]).
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 of this title, 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.
Claims 1, 7 and 9 is/are rejected under 35 U.S.C. 103 as being obvious over Kelsall (US 2019/0207227).
Regarding claim 7, Kelsall remains as as applied to claim 4. Kelsall does not expressly teach wherein a ratio between an area of the first base and an area of the second base of each frustum is less than 0.5.
However, it has been held that “where 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” (MPEP 2144.04 IIA) and that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04 IVA).
Here, although Kelsall does not expressly teach the base area ratio of each frustum being less than 0.5, Kelsall does appear to teach that the microstructures as conical frustums tending to have a base area ratio within the claimed range of less than 0.5 (see Figure 3, and the Examiner’s Modified Figure 3 below). The Examiner’s Modified Figure 3 is marked up with white markings to illustrate the apparent first and second bases of a selection of the clear microstructures, many or most of which appear to have a base area ratio of less than 0.5, determinable by mathematically comparing the first [top] base diameter to the second [bottom] base diameter. For example, the zoomed in Frustum of Figure 3b exhibits a diameter ratio of about 65%, which corresponds to a base area ratio of about 41%. The SEM image is useful for calculating ratios as it is an actual image; although the Examiner’s analysis is inexact. Nevertheless, the claimed requirement that the ratio is less than about 0.5 is found to be obvious because Kelsall suggests the general conditions of the claimed invention by suggesting frustums having a similar low base area ratio shape, many or most of which appear to lie within the less than 0.5 base ratio range for at least the Figure 3a,3b embodiment, and there is no evidence to demonstrate a critical functional difference between the claimed ratio range and the suggestion of Kelsall.
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Regarding independent claim 1, the limitations of claim 1 taught by, or obvious over Kelsall as previously described (e.g. see rejection of claims 3, 5 and 10).
Regarding claim 9, the cited art remains as applied to claim 3. Kelsall further teaches wherein each microstructure of the plurality of microstructures is composed of at least 160 layers of microstructure ink (paragraph [0098] teaches “up to 200” layers; the claimed range of at least 160 layers is at least obvious for overlapping the range suggested by Kelsall).
Claims 2 and 8 is/are rejected under 35 U.S.C. 103 as being obvious over the combination of Kelsall (US 2019/0207227), Bredt (US 2002/0026982) and Elimelech (US 2021/0046670).
Regarding claims 2 and 8, Kelsall remains as applied to clains 1 or 3. Kelsall does not appear to teach wherein each layer of the plurality of layers of microstructure ink is at most 0.3 μm thick.
However, in the inkjet printing art, Bredt teaches that “[i]n theory, there is no limit on the thickness of layers” of a 3D build (paragraph [0043]), but further teaches that the thickness of the layer to be printed is coupled to the particle size of the particulate material used for the printing such that “the particles in the particulate material is limited by the thickness of the layers to be printed” (paragraph [0033]).
Moreover, in the inkjet printing art, Elimelech teaches that traditional 3D manufacturing methods for ceramics may not be able to produce complex geometries and high resolutions using thin layers (paragraphs [0003-0004]). Elimelech further teaches that his inventive systems may utilize layer thicknesses of equal to or less than 0.3 μm-10,000 μm (paragraph [0048]).
As Kelsall teaches that the particles used to form the microstructure may be about 1000 nm or less, preferably about 100 to about 800 nm (paragraph [0067]), it would have been obvious to a person having ordinary skill in the art at the time of invention to utilizes layers as thin as 100 nm, making use of the small particle size of the ceramic material to produce microstructural features consistent with the size of the particles used in the ink in view of Bredt. Moreover, it would have been obvious to endeavor to utilize thin layers in order to provide the versatility to produce more complex geometries in view of Elimelech. Thus, the claimed range of at most 0.3 μm thick is found to be obvious as the artisan would have been capable of producing thin layers due to the small particulate size of the ceramic particles, and understood that thin layers, such as less than 0.3 μm or less in thickness, enable production of complex geometries.
It is noted that Bredt and Elimelech are each from a different field of endeavor (rapid prototyping techniques) than Kelsall and the instant invention (fuel cell fabrication). However, as described in MPEP 2141.01(a) I, a reference may be considered analogous art and therefore used in an obviousness rejection if: “1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Here, Bredt and Elimelech are reasonably pertinent to the problem faced by the inventor because they provides teachings for inkjet fabrication techniques, used by both Kelsall and the instant invention, and even teaches inkjet printing for ceramic materials specifically for 3D manufacture (Bredt paragraph [0011], Elimelech throughout). Thus, Bredt and Elimelech are found to be analogous art under (2).
Relevant or Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, though not necessarily pertinent to applicant’s invention as claimed.
Hart (US 2006/0099473) SOFC manufacture using inkjet printing;
Bone (US 2011/0143038) nanoscale SOFC manufacturing;
Sullivan (US 2014/0072702) SOFC manufacture using inkjet printing;
Hall (US 2020/0144647) SOFC manufacture using additive manufacturing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH R SMITH whose telephone number is (571)270-7005. The examiner can normally be reached Mon-Fri: 9 AM-5 PM (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tiffany Legette-Thompson can be reached on (571)270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMIAH R SMITH/Primary Examiner, Art Unit 1723
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