Notice of Pre-AIA or AIA Status
1. 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 Amendments
2. The applicant’s amendment response dated 20 October 2025 has been entered into the record and is considered fully responsive. Basis for the applicant’s amendment to Claim 1 can be found in ¶73 of the instant application (cited as US Pub. No. US 20220372646 A1), so no new matter has been added. Claims 1-11 are currently pending and under examination.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, and 11 are rejected under 35 U.S.C. 103 as being obvious over Myrick et al. in view of Escobedo et al.
Myrick et al. (US Patent No. 10,941,500) is directed toward a method and system of diamond electrodeposition (title). Escobedo et al. (“Infrared Irradiation: Toward Green Chemistry, a Review,” Int. J. Mol. Sci. 2016, 17(4), article 453, pg. 1-26) is directed toward the use of IR radiation in chemical synthesis (pg. 1: title and abstract).
Regarding Claim 1, Myrick et al. discloses a process of liquid phase synthesis of a carbonaceous film (Col 19 Lines 7-51) according to which:
A voltage is applied (Col 19 Lines 36-41 and FIG. 8), in a solution containing carbonaceous molecules (liquid electrolyte 108 in Col 19 lines 13-15), to a substrate (electrodeposition substrate 110 in Col 19 Lines 12) on which a carbonaceous film is to be deposited (Col 19 Lines 7-9). Myrick et al. further discloses the electrolyte 108 comprises adamantane or higher diamondoid sp3 carbon sources dissolved in methanol (Col 21 Lines 30-33).
Photons as sent on the surface of the substrate as described in Col 6 Lines 39-42 by the application of blue/UV light to the substrate surface to facilitate the removal non-sp3 carbon via anodic oxidation.
Therefore, Myrick et al. discloses the carbonaceous film is formed on the substrate by conversion of the carbonaceous molecules under the action voltage (Col 19 Lines 36-41; Col 19 Lines 41-49; FIG. 8) and light (Col 6 Lines 39-42). As listed indicated above, Myrick et al. discloses the use of UV light/blue light to activate. Under the broadest reasonable interpretation, the UV light disclosed in Myrick et al. would include UVC photons (as required by the limitations of amended Claim 1).
Myrick et al. discloses a means to increase the temperature of the electrolyte during the electrodeposition by using a detachable thermoelectric heater in Col. 35 Lines 29-33, but does not explicitly disclose the use of IR photons.
Escobedo et al. is a review directed toward IR applications in chemical synthesis (pg. 1: title) and explains the advantages of IR heat in the introduction on pg. 2. Escobedo et al. indicates that the infrared region in the electromagnetic spectrum is divided into three zones: shortwave infrared, also known as “near” or “high intensity” infrared with band spans from 0.76 to 2 µm (NIR); medium wave infrared also known as “middle” or “medium intensity” infrared with band spans from 2 to 4 µm (MIR); and long wave infrared also knows as “far” or “low intensity” infrared with band spans from 4 to 1000 µm (FIR). Escobedo et al. further indicates that infrared energy is dispersed from an infrared emitter (lamp) and consequently exposes product surfaces, which easily absorb it and are heated. IR radiation is a direct source of heating that is most effective for line of sight between the IR source and the product (i.e.: that substrate and liquid electrolyte in the instant application). Escobedo et al. teaches that IR radiation further promotes the activation of vibrational modes resulting in high energy efficiency of infrared systems to drive (electrochemical) reactions.
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of DLC formation disclosed by Myrick et al. by applying IR radiation as suggested by Escobedo et al. as the heating source with the reasonable expectation of providing high efficiency heating with the potential to improve reactivity by the application of IR radiation.
Regarding Claim 2, Myrick et al. discloses the process according to Claim 1 according to which the voltage is applied to at least two electrodes as described in Col 19 lines 34-52 in the identification of the electrodeposition substrate 110 and the graphite counter electrode 114 to which pulsed DC voltage is applied (FIG. 1).
Regarding Claim 3, Myrick et al. discloses the process according to Claim 2, in which one of the electrodes comprises the substrate in the identification of the electrodeposition substrate 110 (Col 19 lines 34-52 and FIG. 1).
Regarding Claim 4, Myrick et al. discloses the process according to Claim 1, in which the solution containing the carbonaceous molecules (e.g.: adamantane or higher diamondoids) comprises at least one organic solvent (e.g.: methanol) as described by the formulation of electrolyte 108 (Col 21 Lines 30-33).
Regarding Claim 5, Myrick et al. discloses the process according to Claim 1, in which the solution containing the carbonaceous species comprises cycloalkanes as per Col 21 Lines 30-33 where it is indicated that the electrolyte 108 comprises adamantane or higher diamondoids as sp3 carbon sources.
Regarding Claim 6 of the instant application, the limitation of “at least one catalyst” is defined in the specification on pg. 4 in lines 8-15 to mean a material, including the electrolyte, that does one or more of the following: directs the formation reaction towards a specific form of diamond/DLC, improves the deposition kinetics, improves the quality of the diamond deposit, or guides an isomerization of reaction intermediates. Therefore, Myrick et al. discloses the process according to Claim 1 in which the solution containing the carbonaceous molecules (e.g.: adamantane in Myrick et al) comprises at least one catalyst. In Col 7 Lines 27-30, Myrick et al. discloses that including acetic acid/acetate or formic acid/formate added to the electrolyte preferentially removes non-sp3 carbon or sp2-carbon by anodic processes. Therefore, the carboxylic acids/carboxylates added to the electrolyte in Myrick et al. act as a catalyst in the process of Claim 1 based on the definition of catalyst in the specification as these species drive the formation of a specific form of DLC (i.e.: removal of non-sp3 or sp2 hybridized carbon centers and the increase in sp3-hybridized carbon centers).
Regarding Claim 7, Myrick et al. discloses the process according to Claim 1 according to which the substrate is subjected to a direct voltage as per Col 19 Lines 36-41 and FIG. 8 where the DC voltage is cathodically applied across the electrodeposition substrate 110 and subsequently pulsed between anodic and cathodic potentials as per Col 19 Lines 41-49.
Regarding Claim 8, Myrick et al. discloses the process according to Claim 1, according to which a magnetic field is applied to the substrate as explained in Col 38 Lines 7-11 when magnetic components are included in the electrolyte. These magnetic materials (e.g.: NdFeB particles) are oriented and deposited in the matrix during the DLC film growth when the magnetic field is applied close to the substrate (Col 38 Lines 7-11).
Regarding Claim 9, Myrick et al. discloses the process according to Claim 1 according to which a gas is bubbled through the solution containing the carbonaceous species (electrolyte 108) as described in Col 25 lines 25-26 by the use of an argon or a nitrogen purge to remove oxygen from the electrolyte.
Regarding Claim 10, Myrick et al. discloses the process according to Claim 1 according to which the solution containing the carbonaceous material (electrolyte 108) is circulated as described in Col 7 Lines 48-53 and depicted in FIG. 1.
Regarding Claim 11, Myrick et al. discloses the process according to Claim 1 according to which the temperature of the solution containing the carbonaceous species is regulated by the description of a temperature-controlled circulation pump for heating or cooling the electrolyte per Col 7 Lines 48-53.
Response to Arguments
6. The applicant has amended Claims 5 and 8 to correct the lack of clarity in said claims. Therefore, the rejections under 35 USC § 112(b) are withdrawn.
7. Applicant’s arguments, see pg. 6-8, filed 20 October 2025, with respect to the rejection(s) of Claims 1-11 under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Myrick et al. in view of Escobedo et al. These new grounds are further explained above.
8. In response to applicant's argument that Myrick does not teach the use of UVC photons on pg. 7, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use (i.e.: apply UV-C photons), then it meets the claim. The applicant argues that the reasons for Myrick et al. using UV light would not include the use of UVC photons. However, the reasons or support for using UV-C photons (i.e.: to generate C-H bond activation) would have to be explicitly incorporated into Claim 1 to not solely be intended use.
9. Myrick expressly lists UV LED lamps as a specific source of UV photons in Col. 42 lines 48-52. Since the applicant is arguing that Myrick et al. would not teach the use of UV-C photons, it is reasonable to understand what types of UV LED lamps were available on the market around the time of the filing of Myrick. In other words, what types of UV LED lamps would be available to one of ordinary skill in the art in 2012.
Digikey-2012 (“Next Generation UV LED Technology Benefits Industrial Curing, Coating,” blog post by Digikey European Editors published 28 August 2012. https://www.digikey.com/en/articles/next-generation-uv-led-technology-benefits-industrial-curing-coating) discusses the available UV LED tech in 2012. In Figure 2 (reproduced below), Digikey-2012 teaches the range of UV LED lamps available covers 230 nm to 400 nm. Therefore, UV LED lamps for the upper end of UVC (i.e.: 230-280 nm) were available to one of ordinary skill in the art. Given that range of wavelengths, the incident radiation from a UV source would provide at the most 124 kcal/mol of energy (calculate from E = hc/λ, where λ = 230 nm). This means that the UV LED lamps available in 2012 could break chemical bonds that are at most ~120 kcal/mol.
[AltContent: textbox ([img-media_image1.png]
Figure 2 reproduced from Digikey-2012)]
Yang et al. (“Catalyst-Controlled C-H Functionalization of Adamantanes Using Selective H-Atom Transfer, ACS Catal. 2019, 9(6), 5708-5715) discloses the bond strength of C-H bonds in diamondoids, such as adamantane (Figure 1A). The C-H bonds in adamantane are relatively strong and would require photons of ~300 nm in order to break the secondary C-H bonds allowing for the formation of DLC. Therefore, it is clear to the examiner that Myrick et al., which generally describes UV LED lamps as source of UV photons, would have covered UV LED lamps at least in the upper range of UV-C photons.
[AltContent: textbox ([img-media_image2.png]
Figure 1A reproduced from Yang et al.)]
Conclusion
10. Applicant's 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN SYLVESTER whose telephone number is (703)756-5536. The examiner can normally be reached Mon - Fri 8:15 AM to 4:30 PM EST.
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/KEVIN SYLVESTER/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794