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 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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 and 5-6 are rejected under 35 U.S.C. 112(b)/2nd par. 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 2-3’s “the A site” lacks sufficient antecedent bases, rendering said claims rejected as indefinite under 35 U.S.C. 112(b)/2nd par.
Claims 5-6’s “the trivalent cation” and “the divalent cation” lack sufficient antecedent bases, rendering said claims rejected as indefinite under 35 U.S.C. 112(b)/2nd par.
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.
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.
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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 1-3 and 5-8 are rejected under AIA 35 U.S.C. 103 as being unpatentable over the 7/25/20 Zhou et al. J. Eur. Ceramic Soc. article (see applicant’s 7/17/24 IDS) (“Zhou”) in view of He et al., US 2021/0347699 (published 11/11/21; PCT filed 10/9/19; US Prov’l Appl’n filed 10/9/18) (“He”). Regarding claims 1-2 and 5-7, Zhou teaches a high-entropy rare earth zirconate (“HE-REZ”) thermal barrier coating (“TBC”) comprising (La0.2Nd0.2Sm0.2Eu0.2Gd0.2)2Zr2O7, which has a pyrochlore structure. See Zhou at, e.g., abstr.; §§ 1-2.1; Fig. 2(a) (and descriptive blurb). While Zhou’s HE-REZ TBC does not also comprise a divalent cation, He so teaches.
He teaches that high entropy oxides (“HEOs”) (such as Zhou’s HE-REZ) “typically contain five or more different metal cation types as well as oxygen, to form one or more oxide sublattices. HEOs have high levels of lattice distortion and other lattice defects. This reduces thermal conductivity and can improve mechanical properties, such as toughness.” See He at, e.g., par. 9. He also teaches that its HEOs can also comprise ≥1 of the (divalent) alkaline earth metal cations Be, Mg, Ca, Sr, or Ba (Mg and/or Ca being preferred), in addition to transition-and/or-lanthanide-metal cations, rendering it prima facie obvious to do so. See id. at, e.g., par 42-53, 72, 106-113; MPEP 2143 I.(G) & 2144.06-2144.07. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhou’s overall methodology by additionally incorporating ≥1 of Be, Mg, Ca, Sr, or Ba cation(s) (esp. Mg and/or Ca) into its HE-REZ as taught by He, to desirably achieve and/or enhance the resulting material’s mechanical toughness and/or reduce the thermal conductivity thereof. MPEP 2143 I.(G). This conclusion of obviousness is further supported by the fact that it has been held prima facie obvious to combine two compositions, each useful for the same purpose, to form a third composition also useful for the same purpose. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); MPEP 2144.06.
Regarding claim 3, Zhou’s (La0.2Nd0.2Sm0.2Eu0.2Gd0.2)2Zr2O7 parenthetical (“A site”) cations have an equimolar ratio as detailed above. Given this, and He’s teaching that its Ca+2 can be present in 0-15 wt% (e.g. as CaO), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ascertain and employ a desired molar amount of Ca+2, such as in an equimolar amount with the other A site cations, via routine experimentation; 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.” See MPEP 2144.05, citing In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Regarding claim 8, the HE-REZ TBC has a single phase after 1h of heating @ 1,100oC. See Zhou at, e.g., §3 (1st par.). While this T is lower than the claimed range’s 1,200oC maximum, Zhou’s HE-REZ TBC is reasonably inferred (MPEP 2144.01) to maintain its single phase structure between 1,100-1,200oC as well, there being no evidence to suggest the contrary.
Claim 4 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Zhou in view of He, as further illustrated by the 1991 Jia J. Solid State Chem. Article and the 1968 Boswarva J. Phys. Solid State Phys. article.1 Regarding claim 4, Zhou and he collectively teach or at least suggest a (La0.2Nd0.2Sm0.2Eu0.2Gd0.2Cax)2Zr2O7 HE-REZ TBC, where x can be 0.2 or otherwise, as detailed above. While neither Zhou nor He teach a comparison of the ionic radii of said cations, Jia teaches that La, Nd, Sm, Eu, and Gd respectively have ionic radii in the +3 valence state (@ a coordination number of 6, chosen at random as the first-listed data column) of 1.03 Å, 0.98 Å, 0.958 Å, 0.947 Å, and 0.938 Å (see Jia at, e.g., Table I) while Boswarva teaches that Ca+2 has an ionic radius of 0.99-1.08 Å (see Boswarva at, e.g., Table 3). As such, the claimed relationship is met/present.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ September 9, 2026
Primary Examiner
Art Unit 1736
1 Note: Jia and Boswarva are not meant to be combined with Zhou and He’s collective teachings and suggestions, but are merely cited to show/illustrate the ionic radii of the cations taught/employed within Zhou and He.
Prosecution Insights