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. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the State of Israel on 21 November 2021.
It is further noted that the instant application is a continuation-in-part of PCT/IL2022/051236 filed 21 November 2022.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted 14 July 2024 has been considered by the Examiner.
Specification
The disclosure is objected to because of the following informalities:
In paragraph [0027] in lines 1 and 4, the term “M33” should utilize proper subscripting to read “M33”. Also see paragraph [0129], line 3, paragraph [0130], line 6, and paragraph [0132], lines 1, 2, 4-6, 10, 12, 13, and 16.
In paragraph [0036] of the specification, the specification recites “Young’s modulus, Y,” however, the proper notation for Young’s modulus or elastic modulus is “E”. Also see paragraph [0130] which recites “elastic modulus, Y”, in line 1, “Y (Figure 11)” in line 8, and “La caused a drop in Y” in line 10. And paragraph [0132] line 1 which recites “Based on M33, Y”.
In paragraph [0132], line 13 the term “Zr0.1Ce0.9O2” should utilize proper subscripting to read “Zr0.1Ce0.9O2”.
Appropriate correction is required.
Drawings
The drawings are objected to because in Figure 11 the y-axis is labeled “Y, (GPa)” however the proper notation for Young’s modulus is “E” and should be labeled “E, (GPa)”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(b) or second paragraph
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 1-22 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 pre-AIA the applicant regards as the invention.
Claims 1, 2, 7, 9, 10, 12, 14, and 15 recite several limitations that recite a range in the format of “between X and Y”. This renders the claim indefinite since it is not clear if the claim limits the range to the values between the numbers or if the range is meant to include the recited endpoints of the range. For example, claim 1 recites “the electrostriction coefficient of said material ranges between 10-15 m2/V2 and 10-18 m2/V2 at a frequency ranging between 0.1 Hz and 105 Hz”. Does that include the electrostriction coefficient values of 10-15 m2/V2 and 10-18 m2/V2? Numerically, does between 10-15 m2/V2 and 10-18 m2/V2 mean a) 10-15 m2/V2 < electrostriction coefficient < 10-18 m2/V2 or b) 10-15 m2/V2 ≤ electrostriction coefficient ≤10-18 m2/V2 and does between 0.1 Hz and 105 Hz mean a) 0.1 Hz < frequency< 105 Hz or b) 0.1 Hz ≤ frequency ≤105 Hz? This is also true for ranges in claim 2, line 2 (x2), claim 7, line 2 and 3(x2), claim 9, line 1 and 2, claim 10, line 1, claim 12, line 1, claim 14, line 1, and claim 15, line 1.
Claim 6 recites the limitation "said lanthanide L" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 6 depends from claim 4, which does not refer to “said lanthanide L”, however claim5 recites “a lanthanide L”. The Examiner believes claim 6 was intended to depend from claim 5.
Claim 17 is rejected as indefinite for recited the limitation “optionally ions of metal L” since “L” is not defined in instant claim 17 or claim 1 from which it depends.
Claim 17 recites the limitation "the resultant mixture” and “ the resultant precipitate" in lines 4 and 6, respectively. There is insufficient antecedent basis for this limitation in the claim.
Claims 3-5, 8, 11, 13, 16, and 18-22 are rejected as indefinite since they depend either directly or indirectly from a claim rejected as indefinite without correcting the issue.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4 and 10-21 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Reed et al., U S. Patent Application Publication, US 2010/0242342 A1.
Reed et al. disclose a material comprising a cerium-containing one or more metal ions other than cerium wherein the doped cerium oxide formula is Ce1-xMxO2-d, wherein x has a value of 0.001 to 0.95 and d has a value of 0 to 0.5 and M is one or more metal ions. See Abstract and the entire specification, specifically, paragraphs [0012], [0013], and [0032]. Reed et al. disclose that the metal ions include elements from the Periodic Table includes all elements other than those with atomic numbers: 1, 2, 5-10, 14-18, 33-36, 52-54, 85, and 86, the transition metals include 40 chemical elements of atomic numbers: 21-30, 39-48, and 72-80, which includes Periods 4, 5, and 6 of the Periodic Table, and rare earth metals include 15 chemical elements of atomic numbers: 57-71, which includes Period 5 of the Periodic Table. See paragraph [0024]-[0026]. Reed et al. disclose that the doped particles metal ion dopants particularly include transition metals are particularly Zr, Fe, and Pd, and rare earth metals are La or Y or combinations. See paragraph [0032]. Reed et al. disclose the doped cerium oxide is made by a method of producing the particles by mixing the provided aqueous reaction mixture comprising the source of cerous ion, a source of one or more metal ions, and at least one monoether carboxylic acid nanoparticle stabilizer. See paragraph [0035]. Reed et al. disclose that the doped cerium oxide nanoparticles are formed in an aqueous environment. See paragraph [0039]. Reed et al. disclose the method utilizes solvents or solvent mixtures that are less polar than water. See paragraph [0040]. Reed et al. disclose include an oxidant which includes ammonium perchlorate. See paragraph [0041]. Reed et al. disclose that the cerium source includes synthetic routes that utilize water as a solvent and the cerium dioxide particles can be prepared by reacting hydrate of cerium nitrate with hydroxide ion from aqueous ammonium hydroxide. See paragraph [0044]. Reed et al. disclose a continuous process for producing cerium oxide nanoparticles containing one or more transition and/or rare earth metal ions. See Paragraph [0048]. Reed et al. disclose that an aqueous preparation can be employed using cerium salts such as Ce(OH)2(NO3) or (NH4)2Ce(NO3)5. See paragraphs [0046] and [0049]. Reed et al. disclose that the source materials further include aqueous salts: Ce(NO3)3•6H2O, ZrO(NO3)2•xH2O, and Fe(NO3)3•9H2O. See paragraph [0067]. Reed et al. disclose a method of making a doped ceria material comprising stirring a flask of methoxyacetic acid with distilled water and holding at a temperature of 85°C, adding an aqueous solution of a cerium nitrate hexahydrate salt and an aqueous zirconyl nitrate hydrate to the flask, with a concentrate of ammonium hydroxide, the mixture was held at 85°C for at least 60 minutes, the mixture was cooled overnight and diafiltered to form a Ce0.85Zr0.15O2-d precipitate. See paragraph [0094]. Reed et al. additionally disclose a method of making a doped ceria material comprising stirring a flask of methoxyacetic acid with distilled water and holding at a temperature of 85°C, adding an aqueous solution of a cerium nitrate hexahydrate salt, an aqueous zirconyl nitrate hydrate, and an aqueous iron nitrate nonahydrate to the flask, with a concentrate of ammonium hydroxide, the mixture was held at 85°C for at least 60 minutes, the mixture was cooled overnight and diafiltered to form a Ce0.45Zr0.15Fe00.40O2-d precipitate. See paragraph [0096]. Reed et al. disclose that particle precipitation can further include steps such as but not limited to, washing, drying, calcination, grinding, milling, and particle size classification. See paragraph [0004]. The compositional ranges of Reed et al. are sufficiently specific to anticipate the ceria-based material having the composition as recited in claims 1-4 and 10-21.
Specifically, as to claim 1, Reed et al. disclose Examples 2a-2d, 6, 7a-7f, 10a, 10c, 10d, 12a, 12c, 12d, 16, and 21 (see Tables 1 and 3-5 and paragraphs [0119], [0120], [0131], and [0132]), which reads on a ceria-based material, doped by a metal M, said metal M is selected from Hf, Zr and Ti, as recited in instant claim 1.
Since the composition of Reed et al. is the same as those claimed herein it follows that the materials of Reed et al. would inherently possess upon application of an electric field said ceria-based material generates displacement, stress or a combination thereof, wherein the electrostriction coefficient of said material ranges between 10-15 m2/V2 and 10-18 m2/V2 at a frequency ranging between 0.1 Hz and 105 Hz, as recited in claim 1. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 2, Reed et al. disclose Examples 2a-2d, 6, 7a-7f, 10a, 10c, 10d, 12a, 12c, 12d, 16, and 21 (see Tables 1 and 3-5 and paragraphs [0119], [0120], [0131], and [0132]), which reads on said material is represented by the formula Ce1-xMxO2-d wherein x ranges between 0.02 and 0.7 and d ranges between 0 and 0.03, as recited in instant claim 2.
As to claim 3, Reed et al. disclose Examples 2a-2d, 7a-7f, 10a, 10c, 10d, 12a, 12c, 12d, 16, and 21 (see Tables 1 and 3-5 and paragraphs [0119], [0120], [0131], and [0132]),), which reads on the material co-doped with a metal with a lower valence than said metal M, as recited in instant claim 3. See MPEP 2144.05.
As to claim 4, Reed et al. disclose Examples 2a-2d, 6, 7a-7f, 10a, 10c, 10d, 12a, 12c, 12d, 16, and 21 (see Tables 1 and 3-5 and paragraphs [0119], [0120], [0131], and [0132]), which reads on said metal with a lower valence is selected from: Ca, Mg, Fe, Sc, Sn and Y or combinations thereof, as recited in instant claim 4. See MPEP 2144.05.
As to claim 10, since the composition of Reed et al. is the same as those claimed herein it follows that the materials of Reed et al. would inherently possess a displacement ranging between 0.1 ppm and 500 ppm, as recited in claim 10. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 11, since the composition of Reed et al. is the same as those claimed herein it follows that the materials of Reed et al. would inherently possess a stress is at least 0.01 MPa, as recited in claim 11. See MPEP 2112.
As to claim 12, since the composition of Reed et al. is the same as those claimed herein it follows that the materials of Reed et al. would inherently possess a Young’s modulus which ranges between 100 GPa and 250 GPa, as recited in claim 12. See MPEP 2112.
As to claim 13, since the composition of Reed et al. is the same as those claimed herein it follows that the materials of Reed et al. would inherently possess an electrostriction coefficient is frequency independent, as recited in claim 13. See MPEP 2112.
As to claim 14, since the composition of Reed et al. is the same as those claimed herein it follows that the materials of Reed et al. would inherently possess a dielectric constant which ranges between 10 and 1000, as recited in claim 14. See MPEP 2112.
As to claim 15, since the composition of Reed et al. is the same as those claimed herein it follows that the materials of Reed et al. would inherently possess an electrical conductivity which ranges between 10-9 S/m and 10-5 S/m, as recited in claim 15. See MPEP 2112.
As to claim 16, Reed et al. disclose a material comprising a cerium-containing one or more metal ions other than cerium wherein the doped cerium oxide formula is Ce1-xMxO2-d, wherein x has a value of 0.001 to 0.95 and d has a value of 0 to 0.5 and M is one or more metal ions. (see paragraphs [0012], [0013], and [0032]). Reed et al. disclose that the doped cerium oxide nanoparticles are formed in an aqueous environment (see paragraph [0039]) and Reed et al. disclose that particle precipitation can further include steps such as but not limited to, washing, drying, calcination, grinding, milling, and particle size classification. (see paragraph [0004]), which would result in the doped ceria-based material being a powder, which reads on a material form selected from: a disk, a film, a powder, a bar, a pellet or any combinations thereof, as recited in claim 16.
As to claim 17, Reed et al. disclose the doped cerium oxide is made by a method of producing the particles by mixing the provided aqueous reaction mixture comprising the source of cerous ion, a source of one or more metal ions, and at least one monoether carboxylic acid nanoparticle stabilizer. See paragraph [0035]. Reed et al. disclose that the doped cerium oxide nanoparticles are formed in an aqueous environment. See paragraph [0039]. Reed et al. disclose the method utilizes solvents or solvent mixtures that are less polar than water. See paragraph [0040]. Reed et al. disclose include an oxidant which includes ammonium perchlorate. See paragraph [0041]. Reed et al. disclose that the cerium source includes synthetic routes that utilize water as a solvent and the cerium dioxide particles can be prepared by reacting hydrate of cerium nitrate with hydroxide ion from aqueous ammonium hydroxide. See paragraph [0044]. Reed et al. disclose a continuous process for producing cerium oxide nanoparticles containing one or more transition and/or rare earth metal ions. See Paragraph [0048]. Reed et al. disclose that an aqueous preparation can be employed using cerium salts such as Ce(OH)2(NO3) or (NH4)2Ce(NO3)5. See paragraphs [0046] and [0049]. Reed et al. disclose that the source materials further include aqueous salts: Ce(NO3)3•6H2O, ZrO(NO3)2•xH2O, and Fe(NO3)3•9H2O. See paragraph [0067]. Reed et al. disclose a method of making a doped ceria material comprising stirring a flask of methoxyacetic acid with distilled water and holding at a temperature of 85°C, adding an aqueous solution of a cerium nitrate hexahydrate salt and an aqueous zirconyl nitrate hydrate to the flask, with a concentrate of ammonium hydroxide, the mixture was held at 85°C for at least 60 minutes, the mixture was cooled overnight and diafiltered to form a Ce0.85Zr0.15O2-d precipitate. See paragraph [0094]. Reed et al. additionally discloses a method of making a doped ceria material comprising stirring a flask of methoxyacetic acid with distilled water and holding at a temperature of 85°C, adding an aqueous solution of a cerium nitrate hexahydrate salt, an aqueous zirconyl nitrate hydrate, and an aqueous iron nitrate nonahydrate to the flask, with a concentrate of ammonium hydroxide, the mixture was held at 85°C for at least 60 minutes, the mixture was cooled overnight and diafiltered to form a Ce0.45Zr0.15Fe00.40O2-d precipitate. See paragraph [0096]. Reed et al. disclose that particle precipitation can further include steps such as but not limited to, washing, drying, calcination, and particle size classification. See paragraph [0004], which reads a process for making the ceria-based material doped with metal M material, comprising: a. adding an alkaline aqueous solution to an aqueous solution containing Ce ions, ions of metal M and optionally ions of a metal L; b. keeping the resulting mixture at an elevated temperature, optionally while stirring, for a period of time of at least 25 mins; and c. optionally washing the resulted precipitate, as recited in instant claim 17.
As to claim 18, Reed et al. disclose that the source materials further include aqueous salts: Ce(NO3)3•6H2O, ZrO(NO3)2•xH2O, and Fe(NO3)3•9H2O, (see paragraph [0067]), which reads on the origin of the Ce ions, the metal M ions and optionally the metal L ions is a salt of said ions, as recited in instant claim 18.
As to claim 19, Reed et al. disclose that the source materials further include aqueous salts: Ce(NO3)3•6H2O, ZrO(NO3)2•xH2O, and Fe(NO3)3•9H2O, (see paragraph [0067]), which reads the salts of said ions are Ce(NO3)3·6H2O, ZrO(NO3)2·6H2O, and optionally L(NO3)3·6H2O, as recited in instant claim 19.
As to claim 20, Reed et al. disclose that the doped cerium oxide nanoparticles are formed in an aqueous environment. See paragraph [0039]. Reed et al. disclose the method utilizes solvents or solvent mixtures that are less polar than water. See paragraph [0040]. Reed et al. disclose include an oxidant which includes ammonium perchlorate. See paragraph [0041]. Reed et al. disclose that the cerium source includes synthetic routes that utilize water as a solvent and the cerium dioxide particles can be prepared by reacting hydrate of cerium nitrate with hydroxide ion from aqueous ammonium hydroxide. (see paragraph [0044]), which reads on the alkaline aqueous solution comprises (NH4)2CO3, as recited in claim 20.
As to claim 21, Reed et al. disclose that particle precipitation can further include steps such as but not limited to, washing, drying, calcination, grinding, milling, and particle size classification (see paragraph [0004]), reads on the resultant precipitate is a powder, and wherein said powder is ground and optionally calcined, as recited in instant claim 21.
Claims 5-9 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Reed et al., U S. Patent Application Publication, US 2010/0242342 A1.
Reed et al. teach a material comprising a cerium-containing one or more metal ions other than cerium wherein the doped cerium oxide formula is Ce1-xMxO2-d, wherein x has a value of 0.001 to 0.95 and d has a value of 0 to 0.5 and M is one or more metal ions. See Abstract and the entire specification, specifically, paragraphs [0012], [0013], and [0032]. Reed et al. teach that the metal ions include elements from the Periodic Table includes all elements other than those with atomic numbers: 1, 2, 5-10, 14-18, 33-36, 52-54, 85, and 86, the transition metals include 40 chemical elements of atomic numbers: 21-30, 39-48, and 72-80, which includes Periods 4, 5, and 6 of the Periodic Table, and rare earth metals include 15 chemical elements of atomic numbers: 57-71, which includes Period 5 of the Periodic Table. See paragraph [0024]-[0026]. Reed et al. teach that the doped particles metal ion dopants particularly include transition metals are particularly Zr, Fe, and Pd, and rare earth metals are La or Y or combinations. See paragraph [0032]. Reed et al. teach the doped cerium oxide is made by a method of producing the particles by mixing the provided aqueous reaction mixture comprising the source of cerous ion, a source of one or more metal ions, and at least one monoether carboxylic acid nanoparticle stabilizer. See paragraph [0035]. Reed et al. teach that the doped cerium oxide nanoparticles are formed in an aqueous environment. See paragraph [0039]. Reed et al. teach the method utilizes solvents or solvent mixtures that are less polar than water. See paragraph [0040]. Reed et al. teach include an oxidant which includes ammonium perchlorate. See paragraph [0041]. Reed et al. teach that the cerium source includes synthetic routes that utilize water as a solvent and the cerium dioxide particles can be prepared by reacting hydrate of cerium nitrate with hydroxide ion from aqueous ammonium hydroxide. See paragraph [0044]. Reed et al. teach a continuous process for producing cerium oxide nanoparticles containing one or more transition and/or rare earth metal ions. See Paragraph [0048]. Reed et al. teach that an aqueous preparation can be employed using cerium salts such as Ce(OH)2(NO3) or (NH4)2Ce(NO3)5. See paragraphs [0046] and [0049]. Reed et al. teach that the source materials further include aqueous salts: Ce(NO3)3•6H2O, ZrO(NO3)2•xH2O, and Fe(NO3)3•9H2O. See paragraph [0067]. Reed et al. teach a method of making a doped ceria material comprising stirring a flask of methoxyacetic acid with distilled water and holding at a temperature of 85°C, adding an aqueous solution of a cerium nitrate hexahydrate salt and an aqueous zirconyl nitrate hydrate to the flask, with a concentrate of ammonium hydroxide, the mixture was held at 85°C for at least 60 minutes, the mixture was cooled overnight and diafiltered to form a Ce0.85Zr0.15O2-d precipitate. See paragraph [0094]. Reed et al. additionally teach a method of making a doped ceria material comprising stirring a flask of methoxyacetic acid with distilled water and holding at a temperature of 85°C, adding an aqueous solution of a cerium nitrate hexahydrate salt, an aqueous zirconyl nitrate hydrate, and an aqueous iron nitrate nonahydrate to the flask, with a concentrate of ammonium hydroxide, the mixture was held at 85°C for at least 60 minutes, the mixture was cooled overnight and diafiltered to form a Ce0.45Zr0.15Fe00.40O2-d precipitate. See paragraph [0096]. Reed et al. teach that particle precipitation can further include steps such as but not limited to, washing, drying, calcination, grinding, milling, and particle size classification. See paragraph [0004].
Reed et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 5-9 and 22. However, the atomic percent ranges taught by Reed et al. have overlapping compositional ranges with instant claims 5-9 and 22. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Reed et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to claim 5, Reed et al. teach a material comprising a cerium-containing one or more metal ions other than cerium wherein the doped cerium oxide formula is Ce1-xMxO2-d, wherein x has a value of 0.001 to 0.95 and d has a value of 0 to 0.5 and M is one or more metal ions. See paragraphs [0012], [0013], and [0032]. Reed et al. teach that the metal ions include elements from the Periodic Table includes all elements other than those with atomic numbers: 1, 2, 5-10, 14-18, 33-36, 52-54, 85, and 86, the transition metals include 40 chemical elements of atomic numbers: 21-30, 39-48, and 72-80, which includes Periods 4, 5, and 6 of the Periodic Table, and rare earth metals include 15 chemical elements of atomic numbers: 57-71, which includes Period 5 of the Periodic Table. See paragraph [0024]-[0026]. Reed et al. teach that the doped particles metal ion dopants particularly include transition metals are particularly Zr, Fe, and Pd, and rare earth metals are La or Y or combinations (see paragraph [0032]), which reads on said metal with a lower valence comprises a lanthanide L, as recited in instant claim 5. See MPEP 2144.05.
As to claim 6, Reed et al. teach a material comprising a cerium-containing one or more metal ions other than cerium wherein the doped cerium oxide formula is Ce1-xMxO2-d, wherein x has a value of 0.001 to 0.95 and d has a value of 0 to 0.5 and M is one or more metal ions. See paragraphs [0012], [0013], and [0032]. Reed et al. teach that the metal ions include elements from the Periodic Table includes all elements other than those with atomic numbers: 1, 2, 5-10, 14-18, 33-36, 52-54, 85, and 86, the transition metals include 40 chemical elements of atomic numbers: 21-30, 39-48, and 72-80, which includes Periods 4, 5, and 6 of the Periodic Table, and rare earth metals include 15 chemical elements of atomic numbers: 57-71, which includes Period 5 of the Periodic Table. See paragraph [0024]-[0026]. Reed et al. teach that the doped particles metal ion dopants particularly include transition metals are particularly Zr, Fe, and Pd, and rare earth metals are La or Y or combinations (see paragraph [0032]), which reads on said lanthanide L is any lanthanide selected from La, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu or any combination thereof, as recited in instant claim 6. See MPEP 2144.05.
As to claim 7, Reed et al. teach a material comprising a cerium-containing one or more metal ions other than cerium wherein the doped cerium oxide formula is Ce1-xMxO2-d, wherein x has a value of 0.001 to 0.95 and d has a value of 0 to 0.5 and M is one or more metal ions. See paragraphs [0012], [0013], and [0032]. Reed et al. teach that the metal ions include elements from the Periodic Table includes all elements other than those with atomic numbers: 1, 2, 5-10, 14-18, 33-36, 52-54, 85, and 86, the transition metals include 40 chemical elements of atomic numbers: 21-30, 39-48, and 72-80, which includes Periods 4, 5, and 6 of the Periodic Table, and rare earth metals include 15 chemical elements of atomic numbers: 57-71, which includes Period 5 of the Periodic Table. See paragraph [0024]-[0026]. Reed et al. teach that the doped particles metal ion dopants particularly include transition metals are particularly Zr, Fe, and Pd, and rare earth metals are La or Y or combinations (see paragraph [0032]), which reads on said ceria-based material is represented by the formula Ce1-x-yMxLyO2-y/2-d, and wherein said x ranges between 0.01-0.7 and said y range between 0.01-0.7 and said d ranges between 0 and 0.03, as recited in instant claim 7. See MPEP 2144.05.
As to claim 8, Reed et al. teach a material comprising a cerium-containing one or more metal ions other than cerium wherein the doped cerium oxide formula is Ce1-xMxO2-d, wherein x has a value of 0.001 to 0.95 and d has a value of 0 to 0.5 and M is one or more metal ions. See paragraphs [0012], [0013], and [0032]. Reed et al. teach that the metal ions include elements from the Periodic Table includes all elements other than those with atomic numbers: 1, 2, 5-10, 14-18, 33-36, 52-54, 85, and 86, the transition metals include 40 chemical elements of atomic numbers: 21-30, 39-48, and 72-80, which includes Periods 4, 5, and 6 of the Periodic Table, and rare earth metals include 15 chemical elements of atomic numbers: 57-71, which includes Period 5 of the Periodic Table. See paragraph [0024]-[0026]. Reed et al. teach that the doped particles metal ion dopants particularly include transition metals are particularly Zr, Fe, and Pd, and rare earth metals are La or Y or combinations (see paragraph [0032]), which reads on said L is La or Yb, as recited in instant claim 8. See MPEP 2144.05.
As to claim 9, Reed et al. teach a material comprising a cerium-containing one or more metal ions other than cerium wherein the doped cerium oxide formula is Ce1-xMxO2-d, wherein x has a value of 0.001 to 0.95 and d has a value of 0 to 0.5 and M is one or more metal ions. See paragraphs [0012], [0013], and [0032]. Reed et al. teach that the metal ions include elements from the Periodic Table includes all elements other than those with atomic numbers: 1, 2, 5-10, 14-18, 33-36, 52-54, 85, and 86, the transition metals include 40 chemical elements of atomic numbers: 21-30, 39-48, and 72-80, which includes Periods 4, 5, and 6 of the Periodic Table, and rare earth metals include 15 chemical elements of atomic numbers: 57-71, which includes Period 5 of the Periodic Table. See paragraph [0024]-[0026]. Reed et al. teach that the doped particles metal ion dopants particularly include transition metals are particularly Zr, Fe, and Pd, and rare earth metals are La or Y or combinations (see paragraph [0032]), which reads on said L is La, x = 0.10 ± 0.02 and y ranges between 0.01 and 0.08, or wherein L is Yb, x = 0.10 ± 0.02 and y ranges between 0.05 and 0.15, as recited in instant claim 9. See MPEP 2144.05.
As to claim 22, Reed et al. teach the doped cerium oxide is made by a method of producing the particles by mixing the provided aqueous reaction mixture comprising the source of cerous ion, a source of one or more metal ions, and at least one monoether carboxylic acid nanoparticle stabilizer. See paragraph [0035]. Reed et al. teach that the doped cerium oxide nanoparticles are formed in an aqueous environment. See paragraph [0039]. Reed et al. teach the method utilizes solvents or solvent mixtures that are less polar than water. See paragraph [0040]. Reed et al. teach include an oxidant which includes ammonium perchlorate. See paragraph [0041]. Reed et al. teach that the cerium source includes synthetic routes that utilize water as a solvent and the cerium dioxide particles can be prepared by reacting hydrate of cerium nitrate with hydroxide ion from aqueous ammonium hydroxide. See paragraph [0044]. Reed et al. teach a continuous process for producing cerium oxide nanoparticles containing one or more transition and/or rare earth metal ions. See Paragraph [0048]. Reed et al. teach that an aqueous preparation can be employed using cerium salts such as Ce(OH)2(NO3) or (NH4)2Ce(NO3)5. See paragraphs [0046] and [0049]. Reed et al. teach that the source materials further include aqueous salts: Ce(NO3)3•6H2O, ZrO(NO3)2•xH2O, and Fe(NO3)3•9H2O. See paragraph [0067]. Reed et al. teach a method of making a doped ceria material comprising stirring a flask of methoxyacetic acid with distilled water and holding at a temperature of 85°C, adding an aqueous solution of a cerium nitrate hexahydrate salt and an aqueous zirconyl nitrate hydrate to the flask, with a concentrate of ammonium hydroxide, the mixture was held at 85°C for at least 60 minutes, the mixture was cooled overnight and diafiltered to form a Ce0.85Zr0.15O2-d precipitate. See paragraph [0094]. Reed et al. additionally teach a method of making a doped ceria material comprising stirring a flask of methoxyacetic acid with distilled water and holding at a temperature of 85°C, adding an aqueous solution of a cerium nitrate hexahydrate salt, an aqueous zirconyl nitrate hydrate, and an aqueous iron nitrate nonahydrate to the flask, with a concentrate of ammonium hydroxide, the mixture was held at 85°C for at least 60 minutes, the mixture was cooled overnight and diafiltered to form a Ce0.45Zr0.15Fe00.40O2-d precipitate. See paragraph [0096]. Reed et al. teach that particle precipitation can further include steps such as but not limited to, washing, drying, calcination, grinding, milling, and particle size classification. See paragraph [0004].
Reed et al. fail to teach that the doped ceria-based material is a powder that undergoes pressing in a mold or die, resulting in the formation of a disk, bar, or a pellet.
However, Reed et al. teach that doped ceria-based material is in particulate form and that the precipitate can undergo washing, drying, and grinding into a powder (see paragraph [0004]). One of ordinary skill in the art would have known at the time the application was file to take the doped ceria-based material powder and press molding said powder into a disk, bar, or pellet, as recited in instant claim 22. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. See MPEP 2143(I)(E).
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lubomirsky et al., U.S. Patent Application Publication, US 2013/0207513 A1.
Lubomirsky et al. teach a material that is electromechanically active which are classified as piezoelectric and electrostrictive. See Abstract and the entire specification, specifically, paragraphs [0001]-[0004] and [0048]. Lubumirsky et al. teach an embodiment of the material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4. Specifically, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof. See paragraph [0077]. Lubomirsky et al. further teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof. See paragraph [0080].
Lubomirsky et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claims 1-16. However, the atomic percent ranges taught by Lubomirsky et al. have overlapping compositional ranges with instant claims 1-16. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Lubomirsky et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Specifically, as to claim 1, Lubumirsky et al. teach a material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]), which reads on a ceria-based material, doped by a metal M, said metal M is selected from Hf, Zr and Ti, as recited in instant claim 1. See MPEP 2144.05.
One of ordinary skill in the art would expect that a ceria-based material doped with a metal having overlapping compositional ranges would have upon application of an electric field said ceria-based material generates displacement, stress or a combination thereof, wherein the electrostriction coefficient of said material ranges between 10-15 m2/V2 and 10-18 m2/V2 at a frequency ranging between 0.1 Hz and 105 Hz, as recited in claim 1.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 2, Lubumirsky et al. teach a material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]), which reads on said material is represented by the formula Ce1-xMxO2-d wherein x ranges between 0.02 and 0.7 and d ranges between 0 and 0.03, as recited in instant claim 2. See MPEP 2144.05.
As to claim 3, Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), which reads on the material co-doped with a metal with a lower valence than said metal M, as recited in instant claim 3. See MPEP 2144.05.
As to claim 4, Lubumirsky et al. teach a material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]), which reads on said metal with a lower valence is selected from: Ca, Mg, Fe, Sc, Sn and Y or combinations thereof, as recited in instant claim 4. See MPEP 2144.05.
As to claim 5, Lubumirsky et al. teach a material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]), which reads on said metal with a lower valence comprises a lanthanide L, as recited in instant claim 5. See MPEP 2144.05.
As to claim 6, Lubumirsky et al. teach a material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]), which reads on said lanthanide L is any lanthanide selected from La, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu or any combination thereof, as recited in instant claim 6. See MPEP 2144.05.
As to claim 7, Lubumirsky et al. teach a material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), which reads on said ceria-based material is represented by the formula Ce1-x-yMxLyO2-y/2-d, and wherein said x ranges between 0.01-0.7 and said y range between 0.01-0.7 and said d ranges between 0 and 0.03, as recited in instant claim 7. See MPEP 2144.05.
As to claim 8, Lubumirsky et al. teach a material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), which reads on said L is La or Yb, as recited in instant claim 8. See MPEP 2144.05.
As to claim 9, Lubumirsky et al. teach a material comprises derivatives of CeO2, including one having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), which reads on said L is La, x = 0.10 ± 0.02 and y ranges between 0.01 and 0.08, or wherein L is Yb, x = 0.10 ± 0.02 and y ranges between 0.05 and 0.15, as recited in instant claim 9. See MPEP 2144.05.
As to claim 10, one of ordinary skill in the art would expect that a material having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), having a displacement ranging between 0.1 ppm and 500 ppm, as recited in claim 10.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 11, one of ordinary skill in the art would expect that a material having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), having a stress is at least 0.01 MPa, as recited in claim 11.
As to claim 12, one of ordinary skill in the art would expect that a material having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), having a Young’s modulus which ranges between 100 GPa and 250 GPa, as recited in claim 12.
As to claim 13, one of ordinary skill in the art would expect that a material having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), having an electrostriction coefficient is frequency independent, as recited in claim 13.
As to claim 14, one of ordinary skill in the art would expect that a material having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), having a dielectric constant which ranges between 10 and 1000, as recited in claim 14.
As to claim 15, one of ordinary skill in the art would expect that a material having the general formula CexMyO(2-delta), wherein 0<x<1, 0≤y<1, and 0≤delta<1, and M is any metal that has a valency less than or equal to 4, M is selected from all lanthanides, Ca, Mg, Sr, Fe, Y, Sc, Zr, Ti, Ni, Co, or combinations thereof (see paragraph [0077]). Lubomirsky et al. teach that the active material comprises any metal oxide of the general formula MO1.5 where M is a trivalent metal and some of the cations are partially of completely replaced by another divalent or trivalent metal or combinations thereof (see paragraph [0080]), having an electrical conductivity which ranges between 10-9 S/m and 10-5 S/m, as recited in claim 15.
As to claim 16, Lubomirsky et al. teach that the ceria-based material is in the form of a layer or a film (see paragraph [0009]-[0022]), which reads on a material form selected from: a disk, a film, a powder, a bar, a pellet or any combinations thereof, as recited in claim 16.
Conclusion
The additional references cited on the 892 have been cited as art of interest since they are considered to be cumulative to or less than the art relied upon in the rejections above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
4 August 2026
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