Ex Parte Ackerman et al - Page 6


         Appeal No. 2006-2027                                                       
         Application No. 10/735,370                                                 

         second paragraph), the examiner also maintains that the                    
         reference teaches that the cerium-oxide compound is a stable               
         one and, therefore, CeO2, i.e., cerium-oxide with cerium in the            
         +4 oxidation state.  Clearly, if the cerium-oxide applied to the           
         primary ceramic coating of Subramanian is the stable CeO2, it              
         is not the cerium-oxide-precursor compound of claim 1 wherein              
         cerium is not in the +4 oxidation state.  Also, whereas the                
         heating step of claim 1 converts the precursor compound to                 
         cerium-oxide with cerium in the +4 oxidation state, the heating            
         step of Subramanian reacts CeO2 with the thermal barrier coating           
         to produce “an oxide of A and C or an oxide of B and C” (column            
         5, lines 44-45).  The examiner incorrectly states that “[w]hile            
         later reaction of the CezOw and the primary ceramic is provided,           
         at this point, CezOw is provided as a coating, which is all that           
         is required by the claim” (page 16 of answer, first paragraph).            
         As a matter of fact, however, claim 1 requires depositing a                
         cerium-oxide-precursor compound and then heating the compound to           
         form cerium-oxide with cerium in the +4 oxidation state. This              
         method is neither taught nor suggested by Subramanian, and this            
         deficiency is not remedied by the disclosure of Ueda.  While               
         Ueda teaches forming cerium-oxide by calcining ammonium cerium             
         sulfate, Ueda is directed to an abrasive particle and would not            


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