DETAILED ACTION
Claim(s) 1-27 were rejected in the Office Action mailed 09/10/2025.
Applicants filed a Request for Continued Examination, and amended claim(s) 1 and 20, and on 01/07/2026.
Claim(s) 1-27 are pending, and claim(s) 1-10, 12-14 and 24-26 are withdrawn.
Claim(s) 11, 15-23 and 27 are rejected.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/07/2026 has been entered.
Examiner’s Note
Applicants is advised that there is a new examiner of record.
Specification
The disclosure is objected to because of the following informalities:
The present abstract exceeds 150 words. However, the abstract should be in narrative form and generally limited to a single paragraph on a separate sheet preferably within the range of 50 to 150 words in length. See MPEP 608.01(b).
Appropriate correction is required.
Claim Objections
Claims 21-23 are objected to because of the following informalities:
Claim 21, line 2, it is suggested to amend “starting diamond” to “starting volume of diamond” to be consistent with the phrase “a starting volume of diamond” in Claim 1, line 2.
Claim 22, line 1 and line 3, “starting diamond” to “starting volume of diamond” to be consistent with the phrase “a starting volume of diamond” in Claim 1, line 2.
Claim 23, line 1 and line 3, “starting diamond” to “starting volume of diamond” to be consistent with the phrase “a starting volume of diamond” in Claim 1, line 2.
Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 11, 15-23 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka, WO 0214452A1 (Yamanaka) in view of Dumm et al., US 2010/0064593 A1 (Dumm) (US equivalent of JP 5518871B2, provided in IDS received on 07/01/2022).
Regarding claims 11 and 18-20, Yamanaka teaches diamond particles suitable for use in the precision grinding and polishing fields of hard materials and method of producing (Yamanaka, page 1, bottom paragraph);
diamond particles as a starting material are mainly separated from a diamond prepared by a so-called static high-pressure synthesis method using a static pressurizing structure such as a press, and then pulverized and classified to such a particle size (Yamanaka, page 2, bottom paragraph);
in Example, micron size diamond manufactured by Tomei Diamond is used as a starting material (Yamanaka, page 5, 1st paragraph), which necessarily would be a static high pressure-high-temperature process, given it is identical or essential identical material used in the present invention, i.e., diamond by Tomei Diamond.
Yamanaka further teaches a more appropriate treatment temperature range is 900 to 1400 ° C, and particularly those treated at 1100 to 1300 ° C show good results in both the processing amount and the finished surface roughness; from the viewpoints of processing reliability and cost, it is better to enclose argon or nitrogen gas in the processing vessel (Yamanaka, page 2, second paragraph) (reading upon subjecting said diamond particles, to a heating process at a treatment temperature of 10000 C or higher in a non-oxidizing atmosphere);
Yamanaka further teaches fine cracks being generated inside diamond particles, due to the promoting action of the metal element contained or included in the order of atoms (reading upon generating microcracks within the diamond particles) (Yamanaka, page 3, first paragraph).
Yamanaka further teaches the sample diamond being sieved and exposed to impact crushing for measuring the crushing strength value of the diamond particles (Yamanaka, page 3, last 7 lines of first paragraph). Given that the sample diamond is sieved, it is clear that diamond particles of Yamanaka are recovered after being treated.
Further regarding claims 11 and 20, Yamanaka does not explicitly teach having the diamond particles in intimate contact with an oxidizing etchant, and causing a surface of the diamond particles to corrode forming increased surface irregularities, wherein said oxidizing etchant is one selected from carbon-reducible oxides, hydroxides and carbonates of metals; or in which the microcracks are generated within the diamond particles and at the same time the surface of the diamond particles is corroded to cause increased surface irregularities on the diamond particles.
With respect to the difference, Dumm teaches abrasive particle, particularly, roughening the surface of diamond particles to enhance the surface of diamond particles to enhance their performance in industrial applications. Dumm specifically teaches in one embodiment, a reactive coating is used to modify the abrasive particles, such reactive coating includes alkali metal hydroxides, such as lithium hydroxide, sodium hydroxide, potassium hydroxide, and potassium carbonate (Dumm, [0057]); after the diamond particles have been coated, the coated particles are placed into a furnace and, in a an inert gas atmosphere, heated from about 650˚C to about 1000˚C (Dumm, [0062]); the diamond particles having very rough, irregular surfaces (Dumm, [0066]); the modified diamond particles include significantly more spikes an pits than conventional diamonds (Dumm, [0067]).
As Dumm expressly teaches, roughening the surface of diamond particles to enhance their performance in industrial applications (Dumm, [0002]); the modified abrasive particles, as described above, may be useful in many applications including free abrasive applications, fixed abrasive applications, lapping, grinding, cutting, polishing, drilling, dicing, sintered abrasives or abrasive compacts, and wire for wire saws. In general, one would expect that the roughened surface would aid in the retention of the diamond particle within the tool or resin bond system (Dumm, [0088]); the performance of the diamond particles significantly improves when used in free abrasive lapping applications within a liquid slurry or suspension; when the modified diamond particles are used in a fixed bond system, the pits and the spikes help secure the particle within the bond system (Dumm, [0067]).
Dumm is analogous art as Dumm is drawn to abrasive particle, particularly, roughening the surface of diamond particles to enhance the surface of diamond particles to enhance their performance in industrial applications.
In light of the motivation of roughening the surface of diamond particles, e.g., through applying a reactive coating of alkali metal hydroxides, such as lithium hydroxide, sodium hydroxide, potassium hydroxide, and potassium carbonate to diamond (reading upon in intimate contact with an oxidizing etchant), followed by heat treatment in inert atmosphere, as taught by Dumm, it therefore would have been obvious to a person of ordinary skill in the art, to apply a coating to the diamond particles of Yamanaka, such as lithium hydroxide, sodium hydroxide, potassium hydroxide, and potassium carbonate, prior heat treatment, in order to roughen the surface of diamond particles of Yamanaka, i.e., also forming spike and pits on the surface (reading upon causing a surface of the diamond particles to corrode forming increased surface irregularities) to enhance their performance in industrial applications, for example, when used in free abrasive lapping applications within a liquid slurry or suspension, to achieve improved performance; when the modified diamond particles are used in a fixed bond system, the particle within the bond system can be better secured, and thereby arrive at the claimed invention.
Regarding claims 15-16, as applied to claim 11, Yamanaka in view of Dumm further teaches in other embodiments, metal particles are used to modify the diamond particles. Therefore, when applying a reactive coating of alkali metal hydroxides, such as lithium hydroxide, sodium hydroxide, potassium hydroxide, and potassium carbonate to diamond, it would have been obvious to a person of ordinary skill in the art to use particles of alkali metal hydroxides, such as lithium hydroxide, sodium hydroxide, potassium hydroxide, and potassium carbonate to modify diamond, with reasonable expectation of success.
Regarding claims 21 and 27, as applied to claim 11 and claim 20 respectively, Yamanaka in view of Dumm further teaches the surface of the diamond particles being partially converted to non-diamond carbon by a heat treatment (Yamanaka, last three lines of page 2).
Regarding claim 22, as applied to claim 11, Yamanaka in view of Dumm further teaches the starting diamond particles are Tomei Diamond’s IRM 4-8 micron-sized diamond (D50 average size being 5.10 µm) (i.e., a particle size in a mesh size range) (Yamanaka, page 5, first paragraph).
Yamanaka in view of Dumm further teaches the heat-treated diamond particles exhibit a volume expansion (Yamanaka, page 3, first paragraph). Given that the Yamanaka in view of Dumm teaches the heat-treated diamond particles are substantially identical to the presently claimed treated particles in composition (i.e., diamond particles with improved friability) and structure (i.e., comprising internal cracks and a partial conversion to non-diamond carbon) and a substantially identical method for producing diamond particles (i.e., diamond particles mixed applied with a reactive coating followed by heat treatment in inert atmosphere), it is clear the heat-treated diamond particles of Yamanaka in view of Dumm would intrinsically exhibit a bulk density of 10% or more relative to the starting diamond particles.
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).
Regarding claim 23, as applied to claim 11, Yamanaka in view of Dumm further teaches the starting diamond particles are Tomei Diamond’s IRM 4-8 micron-sized diamond (D50 average size being 5.10 µm) (Yamanaka, page 5, first para.).
Given that the Yamanaka in view of Dumm teaches the heat-treated diamond particles are substantially identical to the presently claimed treated particles in composition and structure (i.e., comprising internal cracks and a partial conversion to non-diamond carbon) and a substantially identical method for producing diamond particles (i.e., diamond particles mixed applied with a reactive coating followed by heat treatment in inert atmosphere), it is clear the heat-treated diamond particles of Yamanaka in view of Dumm would intrinsically have a specific surface area increased by 10% or more relative to the starting diamond particles.
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).
Response to Arguments
In response to the amended claims, the previous claim objections and 35 U.S.C. 112(a) rejections are withdrawn.
In response to the amended claim 11, which recites, “wherein said oxidizing etchant is one selected from carbon-reducible oxides, hydroxides and carbonates of metals”, it is noted that Yamanaka in view of Morofushi would not meet the present claims. Therefore, the previous 35 U.S.C. 103 rejections over Yamanaka in view of Morofushi are withdrawn from the record. However, the amendment necessitates a new set of rejections over Yamanaka in view of Dumm as set forth above.
Applicant primarily argues:
“First, one skill in the art would not have been led to modify the method disclosed in Yamanaka with the etching process disclosed in Morofushi.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
Firstly, the new ground of rejection is Yamanaka in view of Dumm, therefore, the argument above is moot.
Secondly, Yamanaka and Dumm are related art, as Yamanaka is drawn to diamond abrasive material particles and Dumm is drawn to abrasive particles, such as diamond particles.
Dumm provides proper motivation to combine, namely roughening the surface of diamond particles to enhance their performance in industrial applications (Dumm, [0002]); the modified abrasive particles, as described above, may be useful in many applications including free abrasive applications, fixed abrasive applications, lapping, grinding, cutting, polishing, drilling, dicing, sintered abrasives or abrasive compacts, and wire for wire saws. In general, one would expect that the roughened surface would aid in the retention of the diamond particle within the tool or resin bond system (Dumm, [0088]); the performance of the diamond particles significantly improves when used in free abrasive lapping applications within a liquid slurry or suspension; when the modified diamond particles are used in a fixed bond system, the pits and the spikes help secure the particle within the bond system (Dumm, [0067]).
Therefore, it is the examiner’s position that it would be obvious to one of ordinary skill in the art to combine Yamanaka with Dumm, in order to enhance their performance in industrial applications, for example, when used in free abrasive lapping applications within a liquid slurry or suspension, to achieve improved performance; when the modified diamond particles are used in a fixed bond system, the particle within the bond system can be better secured, absent evidence to contrary.
Applicant further argues:
“Yamanaka discloses a heat treatment in an inert atmosphere without any oxidizing etchant.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Yamanaka does not expressly teach the claimed oxidizing etchant. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Yamanaka does not disclose the entire claimed invention. Rather, Dumm is relied upon to teach claimed elements missing from Yamanaka, with proper motivation to combine, namely, roughening the surface of diamond particles to enhance their performance in industrial applications (Dumm, [0002]); the modified abrasive particles, as described above, may be useful in many applications including free abrasive applications, fixed abrasive applications, lapping, grinding, cutting, polishing, drilling, dicing, sintered abrasives or abrasive compacts, and wire for wire saws. In general, one would expect that the roughened surface would aid in the retention of the diamond particle within the tool or resin bond system (Dumm, [0088]); the performance of the diamond particles significantly improves when used in free abrasive lapping applications within a liquid slurry or suspension; when the modified diamond particles are used in a fixed bond system, the pits and the spikes help secure the particle within the bond system (Dumm, [0067]), as set forth above.
Applicant further argues:
“Third, Yamanaka in view of Morofushi would not have led one skilled in the art to a method having the features of subjecting said diamond particles, in intimate contact with an oxidizing etchant, to a heating process at a treatment temperature of 10000 C or higher in a non- oxidizing atmosphere.
…
Morofushi teaches an etching temperature of 1000 K to 1200 K, which is equal to726.85°C to 926.85°C. (Page 490, left column, first paragraph). Morofushi also discloses that "the processes at temperatures lower than 1150K (876.85°C) were preferred." (Page 494, right column, first paragraph).
Meanwhile, Yamanaka teaches that in the heat treatment process for its own purpose, "the effect becomes remarkable at a temperature of 600°C or more." (Yamanaka machine translation, page 2).
Accordingly, Yamanaka in view of Morofushi would have led one skilled in the art to a heat treatment at a temperature of 726.85°C-926.85°C because this temperature range works for both the processes disclosed in Yamanaka and Morofushi.”
Remarks, p. 9
The Examiner respectfully traverses as follows:
Firstly, Dumm is only used as teaching reference in order to teach the use of reactive coating to roughen the surface of diamond particles. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference Yamanaka. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Secondly, even if the heat treatment temperature of Dumm were to be incorporated into Yamanaka, Dumm teaches after the diamond particles have been coated, the coated particles are placed into a furnace and, in an inert gas atmosphere, heated from about 650˚C to about 1000˚C (Dumm, [0062]); the diamond particles having very rough, irregular surfaces (Dumm, [0066]), which overlaps the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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