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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 17 July 2024 was considered by the examiner.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities: Line 3 of Claim 1 contains an extra period. Line 6 of Claim 8 also contains an extra period. Appropriate correction is required.
Claims 5 and 6 are objected to grammatically. Claim 5 reads, “wherein a crystal structure is a cubic-fluorite structure at room temperature of 15°C to 25°C in the electrolyte material”. It is suggested that the claim should be rewritten to state, “where the electrolyte material has a crystal structure of a cubic-fluorite structure at room temperature of 15°C to 25°C”.
Claim 6 reads, “where after 1,100 hours at 600°C, a crystal structure maintains a cubic-fluorite structure in the electrolyte material”. It is suggested that the claim should be rewritten to state, “wherein the electrolyte material has a crystal structure of cubic-fluorite structure, and the crystal structure maintains the cubic-fluorite structure after 1,100 hours at 600°C”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 11 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention
It has been held that “[a]ny analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied.” Please see MPEP 2164 and In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Upon applying this test to claims 1 - 11, it is believed that undue experimentation would be required because:
The nature of the invention is drawn to a bismuth oxide-based compound with a metal to oxygen ratio of 1 to 1. There would be undue experimentation to form this material given that applicants have shown that this is not correct in their written opinion filed 25 September 2024 in KR20220007318 where they changed the oxygen value/subscript in the formula to 1.5.
The level of predictability in the art suggests that a bismuth oxide-based compound would have a metal to oxygen ratio of 1 to 1.5; however, applicant’s claims are drawn to a metal to oxygen ratio of 1 to 1. There would be undue experimentation to form a bismuth oxide-based compound with a metal to oxygen ratio of 1 to 1 given the prior art.
The level of ordinary skill in the art is consistent with the ratio taught in the written description filed on 25 September 2024, which is that the metal to oxygen ratio in a bismuth oxide compound is 1 to 1.5. There would be undue experimentation to form a bismuth oxide-based compound with a metal to oxygen ratio of 1 to 1. There is further evidence of this issue when one looks to applicants’ own work in H. Yu et al. “Lowering the Temperature of Solid Oxide Electrochemical Cells Using Triple-Doped Bismuth Oxides.” Adv. Mater. 2024, 36, 2306205.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1 - 11.
Claims 1-11 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.
Claims 1 and 8 contain the phrase, “(where, a+b+c=1, and 0<x<1.)”. This is indefinite because it is unclear whether the limitations contained within the parentheses are optional or required by the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAXIMILIAN D BAGILEO whose telephone number is (571)270-5460. The examiner can normally be reached Monday-Friday 8:00AM-4:00PM.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
/M.D.B./Examiner, Art Unit 1785
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