DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Gröger, et al. application filed with the Office on 26 December 2024.
Claims 16-30 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The preliminary amendment filed on 26 December 2024, is acknowledged and has been entered.
Priority
The instant application is the US National Stage Application of an International Patent Application, PCT/EP2023/066648, filed on 20 June 2023, which claims priority to a German Patent Application, DE 10 2022 115 912.4, filed on 27 June 2022. Thus, 27 June 2022, is the effective filing date of the present application.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted regarding the present application filed on 26 December 2024 and 14 March 2025, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs have been considered by the Examiner.
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 16-30 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.
The term “several” in claim 16 is a relative term which renders the claim indefinite. The term “several” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. How many times constitutes “several repetitions”? As claims 17-28 ultimately depend from claim 16, they are rejected for the same reason.
Regarding claim 18, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 19, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 29, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 30 depends from claim 29, and is therefore rejected for the same reason.
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.
Claims 16, 17, 19, 25, 26, and 28-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a published paper by Hong, et al. ("Thick Film Planar CO2 Sensors Based on Na β-Alumina Solid Electrolyte", JOURNAL OF ELECTROCERAMICS, 2005, Vol. 15, No. 2, pages 151-157; hereinafter, “Hong”).
Regarding claim 16, Hong discloses a method for manufacturing an electrical component (Abstract: “Practical small-sized thick film CO2 sensor with self-heater was fabricated with Na β-Alumina (NBA), Na2Ti6O13-TiO2, and Na2CO3 as a solid electrolyte, reference electrode, and a sensing electrode, respectively.”), comprising at least the following steps:
(a) providing a substrate (4th ¶, 1. Introduction, p. 151: “In this work, a thick film planar CO2 sensor with self heater was fabricated on the alumina substrate …”),
(b) printing a first layer of an ink onto the substrate, the ink comprising a flowable binder and a plurality of particles of at least one of a metallic, metal oxide and ceramic material embedded in the binder, (c) sintering the substrate including the first layer of ink at a temperature above 300°C for a time in a range of 1 min to 1 h (2nd ¶, 2.1. CO2 Sensor Preparation, p. 152: “Firstly, NBA paste was printed on the alumina substrate and fired at 1300–1600◦C for 1 hour.”)
(d) printing a further layer of an ink onto the substrate, the ink comprising a flowable binder and a plurality of particles of at least one of a metallic and ceramic material embedded in the binder, (e) sintering the substrate including the further layer of ink at a temperature above 300°C for a time in a range from 1 min to 1 h, (2nd ¶, 2.1. CO2 Sensor Preparation, p. 152: “On the back of the substrate, Pt paste for the heater was screen-printed and heat-treated at 1000◦C for 1 hour.”),
wherein the steps (d) and (e) are repeated with several repetitions (3rd ¶, 2.1. CO2 Sensor Preparation, p. 152: “Then, Au paste was deposited on the designated region of the NBA film as electrodes for the EMF signal, and Na2Ti6O13-TiO2 paste was covered on one Au electrode before they were baked at 900◦C in air together. Na2CO3 was painted on the other Au electrode and baked at 700◦C for 30 minutes.”).
Regarding claim 17, Hong teaches substrate being sintered at least once at a temperature above 500 °C (3rd ¶, 2.1. CO2 Sensor Preparation, p. 152: “Then, Au paste was deposited on the designated region of the NBA film as electrodes for the EMF signal, and Na2Ti6O13-TiO2 paste was covered on one Au electrode before they were baked at 900◦C in air together. Na2CO3 was painted on the other Au electrode and baked at 700◦C for 30 minutes.”).
Regarding claim 19, Hong teaches an alumina substrate (4th ¶, 1. Introduction, p. 151).
Regarding claim 25, Hong teaches the first layer ink comprises particles of a ceramic material (2nd ¶, 2.1. CO2 Sensor Preparation, p. 152: “Firstly, NBA paste was printed on the alumina substrate and fired at 1300–1600◦C for 1 hour.”).
Regarding claim 26, Hong teaches the further layer ink comprises at least one of a metallic or a metal oxide material (2nd ¶, 2.1. CO2 Sensor Preparation, p. 152: “On the back of the substrate, Pt paste for the heater was screen-printed and heat-treated at 1000◦C for 1 hour.”).
Regarding claim 28, Hong teaches two electrodes printed with Au (Figure 2).
Regarding claim 29, Hong teaches the shared limitations with instant claim 16, as outlined above.
Regarding claim 30, the limitations are product-by-process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)
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, 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 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 20, 21, 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Hong.
Regarding claim 20, Hong does not mention any further step between printing and sintering, it is assumed that the sintering follows the printing directly.
Regarding claim 21, Hong does not disclose a protective gas atmosphere nor an applied voltage, it can be assumed that the process described therein is conducted without any such protective gas atmosphere or voltage.
Regarding claim 23, Hong does not explicitly teach the layer thickness after printing and prior to sintering.
However, it has been held 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 VI A
Regarding claim 24, Hong does not explicitly mention cooling before the next print. However, it is obvious to a person skilled in the art that a component must be cooled before it can be printed further.
No prior art rejections have been made to claims 18, 22, or 27.
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
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, Luan Van can be reached at (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
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