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 Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive.
Applicant argues claim 1 includes the limitations of "generating noble gas defects within the doped amorphous carbon aerogel; without using ion implantation". Applicant also argues claim 1 includes the limitations of "heating the doped amorphous carbon aerogel incorporating the noble gas dopants". Applicant further argues claim 1 includes the limitations of "transforming the doped amorphous carbon aerogel incorporating the noble gas dopants into molecularly doped nanodiamond incorporating the noble gas dopants." Applicant concludes this is new and not obvious from Dr. Pauzauski's earlier application.
Applicant’s argument is not persuasive for the following reasons:
First, the pending claims are product-by process claims and therefore are not limited by process claims. MPEP §2113 recites “[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).
Second, Pauzauskie et al. teaches applying heat to the pressurized aerogel (paragraphs 41, 42 and 47). Furthermore, Pauzauskie et al. teaches homogenous filling of the void volume of the highly-porous carbon aerogel starting material with solid cubic-close-packed (ccp) neon and laser heating while applying pressure (paragraphs 38 and 52). Pauzauskie et al. may not specify "generating noble gas defects within the doped amorphous carbon aerogel" the Office maintains the rejection because the method taught by Pauzauskie et al. is the same or substantially same to the claimed process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pauzauskie et al. (U.S. Pub. No. 2011/0129614).
Claims 1-4 recite a product defined by process of making and thus the claims product by process claims. MPEP §2113 “[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). It is the position of the Office the ultrananocrystalline diamond taught by Pauzauskie et al. is the same as or obvious from a product claimed by the pending application (paragraph 55).
Furthermore, it is the position of the Office the method taught by Pauzauskie et al. is not patentably distinct. Pauzauskie et al. teaches doping starting aerogel with an element of interest to make a diamond aerogel and therefore meets a broad and reasonable interpretation of a method of making molecularly doped nanodiamond (paragraphs 50 and 51). Pauzauskie et al. teaches doping the starting aerogel which meets a broad and reasonable interpretation of adding a dopant to a sol-gel precursor (paragraph 50). Pauzauskie et al. teaches an aerogel of carbonized resorcinol-formaldehyde that has a specific density of about 40 mg/cm3 may be loaded into the sample chamber which meets the limitation of “synthesizing via sol-gel synthesis an amorphous carbon aerogel comprising an open pore network; drying the amorphous carbon aerogel; sintering the amorphous carbon aerogel; preserving the open pore network; loading the amorphous carbon aerogel into a diamond anvil cell (paragraph 35). Pauzauskie et al. teaches sample chamber is then filled with an inert pressure medium and the inert pressure medium conformally and homogeneously occupies a void volume of the sample chamber 106 and the void volume of the pores of the aerogel without disturbing the pore morphology of the aerogel and therefore meets the limitation of preserving the open pore network, forming a sealed chamber around the doped amorphous carbon aerogel allowing the gas to fill the open pore network of the doped amorphous carbon aerogel (paragraphs 34-39). Pauzauskie et al. teaches noble gases such as neon, helium, krypton, xenon (paragraphs 38-39). Pauzauskie et al. teaches heating the carbonized resorcinol-formaldehyde aerogel with and infrared to a temperature above 500 degrees Celsius which meets the limitation of heating the doped amorphous carbon aerogel and transforming the doped amorphous carbon aerogel into molecularly doped nanodiamond (paragraph 43). Pauzauskie et al. teaches a pressure of 21 x 10 21 which converts to 21 GPa and meets the limitation of pressurizing diamond anvil cell (paragraph 43).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 01/10/2026