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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-4 and 6-9 in the reply filed on 12/29/2025 is acknowledged.
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.
Claims 1-4 and 6-9 are 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.
In claim 1, the phrase “observing one or more of the nanodiamond dispersion compositions obtained in the separating, using a microscope, to obtain a classified and purified nanodiamond dispersion composition” is indefinite because it is unclear how an observational step without any physical manipulations to change the composition can be performed to “obtain a classified and purified nanodiamond dispersion composition.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koniakhin, “Ultracentrifugation for ultrafine nanodiamond fractionation”.
Regarding claim 1, Koniakhin teaches a process of ultracentrifugation for ultrafine nondiamond fractionation (Title). The process includes subjecting a mixture of nanodiamonds and deionized water to centrifugation (Experimental). The centrifugation was performed in tube wherein the top of the supernatant was separated from the bottom, which are considered layers (Experimental). After centrifugation larger particles were concentrated at the bottom of the tube and polyethylene glycol was added to prevent the larger particles from reentering the supernatant (Experiment). In Koniakhin the number of nanodiamond particles having a particle size of 20 nm or greater in a microscopic field of view of 1 µm² is inherently smaller than the number of nanodiamond particles having a particle size of 20 nm or greater in a microscopic field of view of 1 µm² in the crude nanodiamond dispersion composition because the larger particles are collected at the bottom of the centrifuge tube (Experimental).
Regarding claim 2, Koniakhin does not expressly state that the number of nanodiamond particles having a particle size of 20 nm or greater in the classified and purified nanodiamond dispersion composition is 20 or less. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The supernatant of Koniakhin is substantially similar because the large particles are collected at the bottom of the centrifuge tube (Experimental) and the size of nanodiamonds in the supernatant is about 6nm (See Results and Discussion).
Regarding claim 3 and 6, the polyethylene glycol is used to functionalize the particles so that they do not return to the supernatant (Experimental). Polyethylene glycol forms a polyoxyalkylene chain according to applicant’s teachings in the specification (See Instant Specification, Paragraph [0080]).
Regarding claim 4, and 7-9, the suspension may include water (Experimental).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731