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 .
Claims 1-20 are pending.
Election/Restrictions
Applicant’s election without traverse of claims 1-6 in the reply filed on 10/20/2025 is acknowledged. Claims 7-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-6 are under consideration in this Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is 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.
Claim 3 recites the limitation "the gradient boron-doped diamond layer is uniformly deposited on the surface of the substrate" in lines 2-3. Claim 1 previously states an alternative limitation of “a transition layer [being] disposed on a surface of the substrate”. It is therefore unclear how the diamond layer is deposited on the surface of the substrate when the transition layer is already present there. For examination purposes, the limitation of claim 3 has been interpreted to refer to the diamond layer being deposited on the surface of the electrode matrix.
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.
Claims 1 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (CN 106435518 A, citations based on translation) in view of Terajima et al. (JP 2008230905 A, citations based on translation); claim 1 evidenced by Long et al. (“The concentration gradient of boron along the growth direction in boron doped chemical vapor deposited diamond”, Materials Letters, 2015).
Regarding claim 1, Wei teaches a high specific surface area and gradient boron-doped diamond electrode, wherein in the high-specific surface area gradient boron-doped electrode, a substrate is directly used as an electrode matrix, or a transition layer is disposed on a surface of the substrate and used as the electrode matrix, and a gradient boron-doped diamond layer is disposed on a surface of the electrode matrix (see e.g. Paragraph 0010, lines 1-4, and Paragraph 0081, line 1, electrode comprising boron-doped diamond layer deposited on substrate or transition layer on substrate by hot wire CVD; evidenced by Long to result in a boron concentration gradient; see e.g. Long Fig. 3C, Page 34, Col. 2, bottom paragraph, lines 1-2, and Page 37, “Conclusions”).
Wei does not explicitly teach the electrode being super-hydrophilic and having a contact angle θ of less than 40°. Wei does however teach the electrode undergoing an etching process to achieve a high surface area (see e.g. Paragraph 0008, lines 1-4) and being used in an electrolytic cell containing water (see e.g. Paragraphs 0042 and 0111).
Terajima teaches a diamond electrode (see e.g. Paragraph 0001) comprising a layer of diamond doped with a dopant such as boron which undergoes etching with oxygen plasma to achieve a high surface area (see e.g. Paragraphs 0012 and 0016), the irradiation with oxygen plasma causing the diamond surface to be oxygen-terminated and stable and exhibit high electrical conductivity and electrochemical performance (see e.g. Paragraph 0014), and the oxygen-termination resulting in a super-hydrophilic diamond surface with contact angles of 20° or less that also enhances water electrolysis efficiency due to water being allowed to easily penetrate the surface (see e.g. Paragraph 0057 and Paragraph 0060, lines 4-8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the diamond electrode of Wei to be oxygen-terminated by irradiation with oxygen plasma in the etching process, resulting in a super-hydrophilic diamond surface with a contact angle of 20° or less as taught by Terajima to provide a stable surface that allows water to easily penetrate, increasing water electrolysis efficiency, as well as provide the electrode with high electrical conductivity and electrochemical performance.
Regarding claim 4, modified Wei teaches a substrate material being selected from one of the metals nickel, niobium, copper, titanium, cobalt, tungsten, molybdenum, chromium and iron or one of an alloy of the nickel, an alloy of niobium, an alloy of tantalum, an alloy of copper, an alloy of titanium, an alloy of cobalt, an alloy of tungsten, an alloy of molybdenum, an alloy of chromium, and an alloy of iron; or an electrode substrate material is selected from one of ceramics Al2O3, ZrO2, SiC, Si3N4, BN, B4C, AIN, WC, and Cr7C3 (see e.g. Wei Paragraph 0011);
the substrate is in a shape of a solid cylinder or a plate (see e.g. Wei Paragraph 0012, lines 1-2, cylindrical or planar structure); and
the substrate is in a three-dimensional continuous network structure, a two-dimensional continuous network structure, or a two-dimensional closed plate structure (see e.g. Wei Paragraph 0012, 3-D woven network, planar woven network or planar structure).
Regarding claim 5, modified Wei teaches a transition layer material is selected from at least one of titanium, tungsten, molybdenum, chromium, tantalum, platinum, silver, aluminum, copper, and silicon (see e.g. Wei Paragraph 0013), and the transition layer has a thickness of 500 nm (see e.g. Wei Paragraphs 0079, 0105, 0114 and 0123).
Regarding claim 6, modified Wei teaches micropores and/or spikes are distributed on a surface of the gradient boron-doped diamond layer (see e.g. Wei Paragraph 0010, line 5), and wherein the micropores have a diameter of 500 nm-0.5 mm, and the spikes have a diameter of 1 µm-30 µm (see e.g. Wei Paragraph 0017).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Wei in view of Terajima, as applied to claim 1 above, and further in view of Zeng et al. (U.S. 2016/0362803) and Nagai et al. (U.S. 2011/0247929).
Regarding claim 2, modified Wei teaches all the elements of the electrode of claim 1 as stated above. Modified Wei does not explicitly teach the gradient boron-doped diamond layer comprising, in a succession from a bottom to a top, a gradient boron-doped diamond bottom layer, a gradient boron-doped diamond middle layer, and a gradient boron-doped diamond top layer, and boron contents of the three layers gradually increasing.
Wei is however evidenced by Long to have a gradient with increasing boron content from a bottom to a top of the layer (see e.g. Wei Paragraph 0081, line 1, boron doped diamond film deposited by hot-wire CVD; see e.g. Long Fig. 3C, Page 34, Col. 2, bottom paragraph, lines 1-2, and Page 37, “Conclusions”, BDD film by hot-filament CVD has increase in boron concentration in growth direction, i.e. bottom to top, during the CVD process).
Zeng teaches a multi-layer conductive diamond electrode (see e.g. Paragraph 0002, lines 1-2) comprising at least a composite bilayer of a thin microcrystalline diamond (MCD) layer overlaying a thick underlying ultrananocrystalline (UNCD) layer on a substrate to deliver a robust combination of properties such as hardness, durability and chemical inertness that outperforms a single layer coated electrode (see e.g. Paragraph 0013, lines 8-9 and 32-39), which may further include a third diamond layer similar in properties, but not necessarily in thickness, as the UNCD layer as an additional underlying layer to provide extreme reliability or thicker diamond layers (see e.g. Paragraph 0032, lines 6-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the gradient diamond layer of Wei to comprise a three layer composite structure of an MCD layer and two underlying UNCD layers, each of which would comprise a gradient increasing boron content from bottom to top due to the CVD method, as taught by Zeng to provide properties such as hardness, extreme durability, chemical inertness and thickness.
Modified Wei does not explicitly teach, in the gradient boron-doped diamond bottom layer, an atomic ratio B/C being 3333 ppm-33333 ppm, in the gradient boron-doped diamond middle layer, an atomic ratio B/C being 10000ppm-33333 ppm, and in the gradient boron-doped diamond top layer, an atomic ratio B/C being 16666 ppm-50000 ppm. Wei does however teach the diamond films being doped with boron to provide conductivity (see e.g. Wei Paragraph 0004, lines 5-6).
Nagai teaches a diamond electrode comprising a diamond film formed from plurality of diamond layers on a substrate (see e.g. Abstract), the diamond film having a boron doping amount in the range of 1,000 to 20,000 ppm with respect to carbon content of the film to provide suitable electrical conductivity (see e.g. Paragraph 0069), overlapping the claimed ranges of the present invention.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified each of the bottom, middle and top gradient diamond layers of modified Wei, which are each formed with a gradient of increasing boron content due to the CVD method, to have a boron to carbon atomic ratio of 1,000 ppm-20,000 ppm as taught by Nagai as a suitable boron doping amount to provide the desired electrical conductivity to a diamond electrode film. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results. MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
Regarding claim 3, Wei as modified by Zeng teaches the gradient boron-doped diamond layer being uniformly deposited on the surface of the substrate by a chemical vapor deposition, the gradient doped diamond layer having a thickness of 1 µm-2 mm (see e.g. Wei Paragraph 0015), and a thickness of the gradient boron-doped diamond middle layer accounts more than 50% and less than 100% of the thickness of the gradient boron-doped diamond layer (see e.g. Zeng Paragraph 0013, lines 28-34, Paragraph 0032, and Claims 21 and 31-32, thick UNCD layer accounting for the bulk of the thickness of the composite, particularly being at least twice the thickness of the overlying MCD layer as well as greater than twice the thickness of the additional underlying UNCD layer, resulting in at least 50% thickness), encompassing the claimed ranges of the present invention (see MPEP § 2144.05 I as cited above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rueffer et al. (U.S. 2008/0160271) discloses an electrode comprising a coating of multiple diamond layers, wherein a doping amount in a first layer is lower than a doping amount in a second and/or outermost layer to provide improved electrical conductivity.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOFOLUWASO S JEBUTU whose telephone number is (571)272-1919. The examiner can normally be reached M-F 9am-5pm.
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/M.S.J./Examiner, Art Unit 1795
/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795