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 .
RESPONSE TO AMENDMENT
Claims 1-20 are pending in the application.
Amendments to the specification and the claims 1-20, filed on 24 August 2026, have been entered in the above-identified application.
Answers to Applicants' Arguments
Applicants' arguments in the response filed 24 August 2026, regarding the objections made of records, have been fully considered and are deemed persuasive. The objections have been withdrawn in view of the applicants' arguments and amendments to the claims, except for those objections maintained below.
Applicants' arguments in the response filed 24 August 2026, regarding the 35 U.S.C. §112(b) rejections made of records, have been fully considered and are deemed persuasive. The rejections have been withdrawn in view of the applicants' arguments and amendments to the claims.
Applicants' arguments in the response filed 24 August 2026, regarding the 35 U.S.C. §112(f) rejections made of records, have been fully considered and are deemed persuasive. The rejections have been withdrawn in view of the applicants' arguments and amendments to the claims.
Applicants' arguments in the response filed 24 August 2026, regarding the 35 U.S.C. §102 and §103 rejections made of records, have been fully considered and are deemed persuasive. The rejections have been withdrawn in view of the applicants' arguments and amendments to the claims.
New and Repeated Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Objections
Claims 1, 3, 7, 8, and 18 are objected to because of the following informalities:
With Regards to Claim 1: Claim 1 recites --wherein X comprises-- in line 13, which appears to be a typographical error; it is recommended to correct this to read "wherein x[[X]] comprises".
With Regards to Claim 3: Claim 3 recites --Y2O3-- in line 2, which appears to be a typographical error; for clarity and consistency, it is recommended to correct this to read "Y2O3
With Regards to Claim 7: Claim 7 recites --ZrO2, Y2O3, HfO2, and Yb2O3-- in line 2, which appears to be a typographical error; for clarity and consistency, it is recommended to correct this to read "ZrO2, Y2O3, HfO2, and Yb2O3".
With Regards to Claim 8: Claim 8 recites --ZrO2, Y2O3, HfO2, Yb2O3, and Er2O3-- in line 2, which appears to be a typographical error; for clarity and consistency, it is recommended to correct this to read "ZrO2, Y2O3, HfO2, Yb2O3, and Er2O3
With Regards to Claim 18: Claim 18 recites --which comprises a segmentation-- in lines 1 to 2, which appears to be a typographical error; it is recommended to correct this to read "which comprises a.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-20 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.
With Regards to Claims 1-20: Claim 1 recites the limitation --the ceramic material comprises (8.0 - x) of Y2O3 and between 2*x wt% and 4*x wt% of Yb2O3 and/or Er2O3, and wherein x comprises values of greater than or equal to zero and less than or equal to five-- in lines 11 to 14. Claim 1 also recites --0.2 wt% to 8.0 wt% of base stabilizers: yttrium oxide (Y2O3), hafnium oxide (HfO2), cerium oxide (CeO2), calcium oxide (CaO) and/or magnesium oxide (MgO), wherein at least yttrium oxide (Y2O3) is used-- in lines 3 to 7. As written, a person having ordinary skill in the art would not be adequately apprised as to the intended scope of the claimed invention, because in the instant case where only Y2O3 is the base stabilizer, the initial amount of 0.2 wt% to 8.0 wt% contradicts the latter amount of 3.0 wt% [=(8.0 - 5.0), when x = 5.0] to 8.0 wt% [=(8.0 - 0.0), when x=0]. As such, the claim becomes indefinite when only Y2O3 is used as the base stabilizer, because the limitations present two conflicting ranges.
Claims 2-20, which depends from claim 1, are rejected for the same reasons as recited above.
With Regards to Claims 1-20: Claim 1 recites the limitation --the ceramic material comprises (8.0 - x) of Y2O3 and between 2*x wt% and 4*x wt% of Yb2O3 and/or Er2O3, and wherein x comprises values of greater than or equal to zero and less than or equal to five-- in lines 11 to 14. Claim 1 also recites --at least one additional stabilizer: 0.2 wt% to 20 wt% of erbium oxide (Er2O3) and/or ytterbium oxide (Yb2O3)-- in lines 9 to 10. As written, a person having ordinary skill in the art would not be adequately apprised as to the intended scope of the claimed invention. In the instant case, where only Er2O3 is present, the range of 0 wt% [=2*x, when x=0] to 0 wt% [=4*x, when x=0] would render the claim indefinite unless the second range is referring to Er2O3. In the instant case, where only Yb2O3 is present, the range of 0 wt% [=2*x, when x=0] to 0 wt% [=4*x, when x=0] would render the claim indefinite unless the second range is referring to Yb2O3. Furthermore, in the instant case where the second range of 0 wt% [=2*x, when x=0] to 0 wt% [=4*x, when x=0] when referring to both Er2O3 and Yb2O3 the claim is entirely indefinite, because the first range requires a minimum of 0.2 wt%. As such, the claim becomes indefinite, particularly when x=0, because the limitations present two conflicting ranges.
Claims 2-20, which depends from claim 1, are rejected for the same reasons as recited above.
With Regards to Claim 17: Claim 17 recites the limitation --which optionally is at least 20% thinner than the at least one ceramic layer and comprises yttrium-stabilized zirconium oxide (YSZ)-- in lines 4 to 6. As written the claim is rendered indefinite, because it can have three conflicting interpretations with respect to what part is optional: (1) wherein the optional limitation is "at least 20% thinner that the at least one ceramic layer"; (2) wherein the optional limitation is "comprises yttrium-stabilized zirconium oxide (YSZ)"; or (3) wherein the optional limitation is both (i.e., "at least 20% thinner than the at least one ceramic layer and comprises yttrium-stabilized zirconium oxide (YSZ)"). For the purposes of examination, it is the decision of the examiner that latter interpretation applies.
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.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With Regards to Claim 11: Claim 11 recites the limitation --comprising (6.0 - x) wt% of Y2O3 and between 2*x wt% and 4*x wt% of Yb2O3 and/or Er2O3-- in lines 1 to 4. Claim 1, from which claim 11 depends, recites --the ceramic material comprises (8.0 - x) of Y2O3 and between 2*x wt% and 4*x wt% of Yb2O3 and/or Er2O3, and wherein x comprises values of greater than or equal to zero and less than or equal to five-- in lines 11 to 14. As such, the limitation of claim 11 would have Y2O3 present in the amount of 6.0 wt% to 1.0 wt%, which expands the range of Y2O3 present (i.e., the aforementioned range recited in claim 1, recites Y2O3 being present in the amount of 8.0 wt% to 3.0 wt%) (in the case where Y2O3 is the only base stabilizer). Therefore, claim 11 is deemed to be of improper dependent form for failing to further limit the subject matter upon which the claim depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
With regards to the closest prior art of record Zhu et al. (US 6,812,176 B1): Zhu teaches --a ceramic material--, wherein Zhu's ceramic material further comprises the structure --a ceramic composition comprising about 46 to 97 molar percent base oxide, about 2 to 25 molar percent primary stabilizer, about 0.5 to 12.5 molar percent group A dopant, and about 0.5 to 12.5 molar percent group B dopant, wherein the base oxide is selected from the group consisting of ZrO2, HfO2, and combinations thereof, wherein the primary stabilizer dopant is selected from the group consisting of Y2O3, Er2O3, and combinations thereof, wherein the group A dopant is selected from the group consisting of alkaline earth oxides, transition metal oxides, rare earth oxides, and combinations thereof (e.g., Yb2O3 and Er2O3); wherein in one exemplary embodiment (e.g., Example 1) the composition can comprise 94 mol% zirconia, 3 mol% yttria, 1.5 mol% ytterbia, and 1.5 mol % samaria-- (Tables 1, 2, and [Col. 1: 66 to Col. 3: li. 33] of Zhu). However, Zhu is silent with respect to the presence of --(8.0 - x) wt% of Y2O3 and 2*x wt% to 4*x wt% of Yb2O3 and/or Er2O3, and wherein x comprises values of greater than or equal to zero and less than or equal to five--. Therefore, the claims as written overcome the prior art of record. Furthermore, no combination of Zhu with any other prior art of record would have provided sufficient motivation for a person having ordinary skill in the art at the time of the invention to have modified Zhu in such a way as to meet the claimed invention. It is these teachings that makes the claim(s) allowable over the prior art of record.
With regards to the closest prior art of record Darolia et al. (US 6,887,595 B1): Darolia teaches --a ceramic material--, wherein Darolia's ceramic material further comprises the structure --a thermal barrier coating on a metal substrate, wherein the thermal barrier coating, formed from a powder, is of a zirconia-containing ceramic composition having a lower layer and a upper layer, wherein the lower layer has a ceramic composition of 86.7 wt.% zirconia, 2.5 wt.% yttria, 5.8 wt.% ytterbia, 1.5 wt.% lanthana, and 3.5 wt.% hafnia, or a composition of 85 wt.% zirconia, 3.0 wt.% yttria, 3.0 wt.% ytterbia, 3.0 wt.% lanthana, and 6.0 wt.% hafnia-- (Tables 1 to 2, [Col. 2: li. 48 to Col. 3: li. 20], [Col. 7: li. 34-58], and [Col. 9: li. 62 to Col. 10: li. 25] of Darolia). However, Darolia is silent with respect to the presence of --(8.0 - x) wt% of Y2O3 and 2*x wt% to 4*x wt% of Yb2O3 and/or Er2O3, and wherein x comprises values of greater than or equal to zero and less than or equal to five--. Therefore, the claims as written overcome the prior art of record. Furthermore, no combination of Darolia with any other prior art of record would have provided sufficient motivation for a person having ordinary skill in the art at the time of the invention to have modified Darolia in such a way as to meet the claimed invention. It is these teachings that makes the claim(s) allowable over the prior art of record.
With regards to the closest prior art of record Gong et al. (CN 102153346 A): Gong teaches --a ceramic material--, wherein Gong's ceramic material further comprises the structure --a pink rare earth combined oxidation zircon ceramic ball comprising 4.81 to 5.49 wt% Y2O3, 92.01 to 94.40 wt% ZrO2, 0.11 to 0.79 wt% Nd2O3, 0.51 to 2.81 wt% Er2O3, 0.06 to 0.49 wt% La2O3, and 0.11 to 0.29 wt% Sc2O3-- (Claim 1 of Gong). However, Gong is silent with respect to the presence of --(8.0 - x) wt% of Y2O3 and 2*x wt% to 4*x wt% of Yb2O3 and/or Er2O3, and wherein x comprises values of greater than or equal to zero and less than or equal to five--. Therefore, the claims as written overcome the prior art of record. Furthermore, no combination of Gong with any other prior art of record would have provided sufficient motivation for a person having ordinary skill in the art at the time of the invention to have modified Gong in such a way as to meet the claimed invention. It is these teachings that makes the claim(s) allowable over the prior art of record.
With regards to the closest prior art of record Appleby et al. (RU 2008151785 A): Appleby teaches --a ceramic material--, wherein Appleby's ceramic material further comprises the structure --a zirconium oxide powder comprising: about 0 to about 0.15 wt% impurity oxides, about 0 to about 2 wt% hafnium oxide, about 6 to about 25 wt% yttrium oxide or about 10 to about 36 wt% ytterbium oxide, and the rest being zirconium oxide; and wherein steel plates are coated with the zirconium oxide powder by a bond coating of MCrAlY+X disposed therebetween, wherein M can be Ni, Co, Fe, or any combination of the three, and wherein X can be Ta or Re-- ([0002], [0009], [0012]-[0022], and [0065] of Appleby). However, Appleby is silent with respect to the presence of --(8.0 - x) wt% of Y2O3 and 2*x wt% to 4*x wt% of Yb2O3 and/or Er2O3, and wherein x comprises values of greater than or equal to zero and less than or equal to five--. Therefore, the claims as written overcome the prior art of record. Furthermore, no combination of Appleby with any other prior art of record would have provided sufficient motivation for a person having ordinary skill in the art at the time of the invention to have modified Appleby in such a way as to meet the claimed invention. It is these teachings that makes the claim(s) allowable over the prior art of record.
With regards to the closest prior art of record Doesburg et al. (US 2007/0082131 A1): Doesburg teaches --a ceramic material--, wherein Doesburg's ceramic material further comprises the structure -- a ceramic material for a thermal barrier coating comprising a first material and a second material, wherein the first material is essentially about 4 to 20 weight percent of a stabilizer of one or more rare earth oxides (e.g., yttria and/or ytterbia) and a balance of at least one of zirconia, hafnia, and combinations thereof, wherein the zirconia and/or hafnia is partially stabilized by the stabilizer, and wherein the second material is of a different composition that the first material and essentially about 4 to 20 weight percent of a stabilizer of one or more rare earth oxides, and a balance of at least one of zirconia, hafnia, and combinations thereof, wherein the zirconia and/or hafnia is partially stabilized by the stabilizer, wherein the first material and the second material are blended together; wherein the first material can have about 4 to 12 weight percent yttria stabilizer with the remainder being zirconia, hafnia, or combinations thereof, that the second material can have about 4 to 16 weight percent ytterbia stabilizer with the remainder being zirconia, hafnia, or combinations thereof, and that the combination of the first material and the second material can comprise 5 to 50 weight percent of the second material and 50 to 95 weight percent of the first material; and wherein the thermal barrier coating can be bonded by a MCrAlY bonding layer to a turbine blade surface-- ([0008], [0015], [0039], and [0076] of Doesburg). However, Doesburg is silent with respect to the presence of --(8.0 - x) wt% of Y2O3 and 2*x wt% to 4*x wt% of Yb2O3 and/or Er2O3, and wherein x comprises values of greater than or equal to zero and less than or equal to five--. Therefore, the claims as written overcome the prior art of record. Furthermore, no combination of Doesburg with any other prior art of record would have provided sufficient motivation for a person having ordinary skill in the art at the time of the invention to have modified Doesburg in such a way as to meet the claimed invention. It is these teachings that makes the claim(s) allowable over the prior art of record.
Conclusion
Applicants' amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donald M. Flores, Jr. whose telephone number is (571) 270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off.
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/DONALD M FLORES JR/
Donald M. Flores, Jr.Examiner, Art Unit 1781
