DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 3-6 have been amended. New claims 9-18 are added. Claims 1-18 are pending in the instant application.
Priority
This application is a National Phase Application of International Application Serial No. PCT/JP2022/004918, filed February 8, 2022, which claims the benefit of and priority to Japan Application No. 2021-024006, filed February 18, 2021.
Information Disclosure Statements
Applicants’ Information Disclosure Statements, filed on 09/21/2023, 04/01/2025, and 05/28/2025, have been considered. Please refer to Applicant’s copies of the PTO-1449 submitted herewith.
Response to Amendment
Applicant’s preliminary amendment filed by representative Gerald M. Murphy on 08/17/2023 has been entered.
Status of the Claims
Claims 1-18 are under examination on the merits.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 1-2, 6, 8, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2015113278A (“the `278 publication”) to Fujimura et al.
Applicant’s claim 1 is drawn to a nanocarbon material dispersion composition comprising a dispersion medium and a nanocarbon material dispersed at nano-scale in the dispersion medium, the nanocarbon material comprising a nanodiamond particle and a graphene layer formed on a surface of the nanodiamond particle, wherein the nanocarbon material has a wavenumber, which corresponds to a peak-top value in a wavenumber range of 1580 ± 50 cm-1 in a Raman spectrum, from 1585 cm-1 to 1630 cm-1; and the nanocarbon material has a peak that appears at 2θ = 43 to 44° in an XRD analysis.
The `278 publication [0001, English translation] discloses a method for producing diamond microparticles having excellent water dispersibility, an aqueous dispersion of diamond microparticles with excellent water dispersibility obtained by heat treatment under an inert gas atmosphere, and an aqueous dispersion of diamond microparticles (i.e., a nanocarbon material dispersion composition comprising a dispersion medium and a nanocarbon material dispersed at nano-scale in the dispersion medium) obtained by the method thereof. The `278 publication [0002] discloses the diamond microparticles, particularly those produced by the explosion method, have a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell, and the shell structure has aqueous functional groups such as -COOH and -OH. In the low concentration range of 1 to 2 wt.% of the diamond microparticles, they are relatively dispersible in water, but in the high concentration range of 3 to 10 wt.% they do not disperse uniformly in water and precipitate, which causes a problem when used in the processing of high-concentration aqueous dispersion. In order to prepare diamond microparticles having excellent high-concentration water dispersibility, the `278 publication [0004] discloses diamond microparticles having excellent high-concentration water dispersibility can be produced by heat treating diamond microparticles in an inert gas atmosphere at a temperature in the range of 700-900°C with high hardness, abrasion resistance, high thermal conductivity, high refractive index, etc. In addition, the `278 publication [0041] discloses a polishing slurry using a diamond microparticle water dispersion with good dispersity, excellent polishing efficiency and productivity can be uniformly applied to the surface of fibers or films with diamond particles having little aggregation such that it is possible to produce fibers or films with excellent hardness and abrasion resistance.
In terms of the claimed limitation “wherein the nanocarbon material has a wavenumber, which corresponds to a peak-top value in a wavenumber range of 1580 ± 50 cm-1 in a Raman spectrum, from 1585 cm-1 to 1630 cm-1 ”, the present specification [0020 and 0022] describes the nanocarbon material preferably shows peaks in the G-band (generally in the range from 1550 to 1650 cm-1 in a Raman spectrum, and the presence of such peaks means that a graphene structure or a structure similar to a graphene structure is present, that a structure derived from a defect in a graphene structure or a structure similar to a structure derived from a defect in a graphene structure is present, and that a functional group is included; and when the wavenumber corresponding to the peak-top value is within the range from 1585 cm-1 to 1630 cm-1, the nanocarbon material has good dispersibility in the dispersion medium.
In terms of the claimed limitation “the nanocarbon material has a peak that appears at 2θ = 43 to 44° in an XRD analysis”, the specification [0026] describes the presence of the peak (at 2θ = 43 to 44° in an XRD analysis) means that the nanocarbon material has a diamond structure.
Since the aqueous dispersion of the heat-treated diamond microparticles disclosed in the `278 publication comprising a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell with excellent high-concentration water dispersibility, and prepared by the same method involving explosion method, and following heat method at a temperature in the range of 700-900°C, the two limitations of Raman spectrum and XRD peak are inherited property of the aqueous diamond microparticles dispersion composition, wherein the dispersion medium is water. Therefore, the `278 publication anticipates claim 1.
In terms of claim 2, wherein the nanocarbon material has an average dispersed particle size (D50) of 100 nm or less that is obtained by a dynamic light scattering method, the `278 publication [0050] discloses the BD (diamond microparticle product) produced in Example 1 was crushed using zirconia to obtain BD with a median diameter of 50 nm. This BD had a medium diameter of 50 nm and specific gravity of 2.55 g/cm3.
In terms of claim 6, wherein the dispersion medium comprises water, an aliphatic hydrocarbon, an aromatic hydrocarbon, an alicyclic hydrocarbon, an alcohol, an ether, an ester, an ionic liquid, or a lubricant base, the `278 publication [0001] discloses a method for producing diamond microparticles having excellent water dispersibility, an aqueous dispersion of diamond microparticles with excellent water dispersibility obtained by heat treatment under an inert gas atmosphere, and an aqueous dispersion of diamond microparticles. Wherein the dispersion medium comprises water.
In terms of claim 8, the `278 publication [0041] discloses a polishing slurry using a diamond microparticle water dispersion with good dispersity, excellent polishing efficiency and productivity can be uniformly applied to the surface of fibers or films with diamond particles having little aggregation such that it is possible to produce fibers or films with excellent hardness and abrasion resistance, wherein the base material is fibers or films, and the coating film is the aqueous dispersion of the heat-treated diamond microparticles disclosed in the `278 publication
In terms of the claimed limitation “wherein the nanocarbon material has a wavenumber, which corresponds to a peak-top value in a wavenumber range of 1580 ± 50 cm-1 in a Raman spectrum, from 1585 cm-1 to 1630 cm-1 ”, the present specification [0020 and 0022] describes the nanocarbon material preferably shows peaks in the G-band (generally in the range from 1550 to 1650 cm-1 in a Raman spectrum, and the presence of such peaks means that a graphene structure or a structure similar to a graphene structure is present, that a structure derived from a defect in a graphene structure or a structure similar to a structure derived from a defect in a graphene structure is present, and that a functional group is included; and when the wavenumber corresponding to the peak-top value is within the range from 1585 cm-1 to 1630 cm-1, the nanocarbon material has good dispersibility in the dispersion medium. In terms of the claimed limitation “the nanocarbon material has a peak that appears at 2θ = 43 to 44° in an XRD analysis”, the specification [0026] describes the presence of the peak (at 2θ = 43 to 44° in an XRD analysis) means that the nanocarbon material has a diamond structure. Since the aqueous dispersion of the heat-treated diamond microparticles disclosed in the `278 publication comprising a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell with excellent high-concentration water dispersibility, and prepared by the same method involving explosion method, and following heat method at a temperature in the range of 700-900°C, the two limitations of Raman spectrum and XRD peak are inherited property of the aqueous diamond microparticles dispersion composition, wherein the dispersion medium is water.
In terms of claim 12, wherein the dispersion medium comprises water, an aliphatic hydrocarbon, an aromatic hydrocarbon, an alicyclic hydrocarbon, an alcohol, an ether, an ester, an ionic liquid, or a lubricant base, the `278 publication [0001] discloses a method for producing diamond microparticles having excellent water dispersibility, an aqueous dispersion of diamond microparticles with excellent water dispersibility obtained by heat treatment under an inert gas atmosphere, and an aqueous dispersion of diamond microparticles, wherein the dispersion medium comprises water.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 3-5, 7, 9-11, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over the `278 publication in view of US2010/261926 (“the `926 publication”) to Komatsu et al.
The `278 publication [0001, English translation] discloses a method for producing diamond microparticles having excellent water dispersibility, an aqueous dispersion of diamond microparticles with excellent water dispersibility obtained by heat treatment under an inert gas atmosphere, and an aqueous dispersion of diamond microparticles (i.e., a nanocarbon material dispersion composition comprising a dispersion medium and a nanocarbon material dispersed at nano-scale in the dispersion medium) obtained by the method thereof. The `278 publication [0002] discloses the diamond microparticles, particularly those produced by the explosion method, have a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell, and the shell structure has aqueous functional groups such as -COOH and -OH. In the low concentration range of 1 to 2 wt.% of the diamond microparticles, they are relatively dispersible in water, but in the high concentration range of 3 to 10 wt.% they do not disperse uniformly in water and precipitate, which causes a problem when used in the processing of high-concentration aqueous dispersion. In order to prepare diamond microparticles having excellent high-concentration water dispersibility, the `278 publication [0004] discloses diamond microparticles having excellent high-concentration water dispersibility can be produced by heat treating diamond microparticles in an inert gas atmosphere at a temperature in the range of 700-900°C with high hardness, abrasion resistance, high thermal conductivity, high refractive index, etc. In addition, the `278 publication [0041] discloses a polishing slurry using a diamond microparticle water dispersion with good dispersity, excellent polishing efficiency and productivity can be uniformly applied to the surface of fibers or films with diamond particles having little aggregation such that it is possible to produce fibers or films with excellent hardness and abrasion resistance.
In terms of the claimed limitation “wherein the nanocarbon material has a wavenumber, which corresponds to a peak-top value in a wavenumber range of 1580 ± 50 cm-1 in a Raman spectrum, from 1585 cm-1 to 1630 cm-1 ”, the present specification [0020 and 0022] describes the nanocarbon material preferably shows peaks in the G-band (generally in the range from 1550 to 1650 cm-1 in a Raman spectrum, and the presence of such peaks means that a graphene structure or a structure similar to a graphene structure is present, that a structure derived from a defect in a graphene structure or a structure similar to a structure derived from a defect in a graphene structure is present, and that a functional group is included; and when the wavenumber corresponding to the peak-top value is within the range from 1585 cm-1 to 1630 cm-1, the nanocarbon material has good dispersibility in the dispersion medium.
In terms of the claimed limitation “the nanocarbon material has a peak that appears at 2θ = 43 to 44° in an XRD analysis”, the specification [0026] describes the presence of the peak (at 2θ = 43 to 44° in an XRD analysis) means that the nanocarbon material has a diamond structure.
Since the aqueous dispersion of the heat-treated diamond microparticles disclosed in the `278 publication comprising a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell with excellent high-concentration water dispersibility, and prepared by the same method involving explosion method, and following heat method at a temperature in the range of 700-900°C, the two limitations of Raman spectrum and XRD peak are inherited property of the aqueous diamond microparticles dispersion composition, wherein the dispersion medium is water.
In terms of claims 3-5, the difference is the `278 publication does not teach a nanocarbon material comprises a surface-modified nanocarbon material in which a surface of the nanocarbon material is modified by a group represented by Formula (I) -X-R, wherein X represents an amino group, an ether bond, an ester bond, a phosphinic acid group, a phosphonic acid group, a phosphoric acid ester, a sulfide bond, a carbonyl group, an amide group, an imide bond, a thiocarbonyl group, a siloxane bond, a sulfuric acid ester group, a sulfonyl group, a sulfone group, a sulfoxide, or a group in which two or more of those listed above are bonded, and a bond extending left from X binds to the nanocarbon material, R represents a monovalent organic group, and an atom that binds to X is a carbon atom. Instead, the `278 publication [0002] teaches the diamond microparticles, particularly those produced by the explosion method, have a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell, and the shell structure has aqueous functional groups such as -COOH and -OH.
However, the difference is further taught and/or suggested by the `926 publication. The
`926 publication (claims 1-3) teaches a surface-modified nanodiamond comprising a base nanodiamond and at least one polyglycerol-chain-containing group present on at least a surface portion of the base nanodiamond, the polyglycerol-chain-containing group represented by following Formula (1) -X-R wherein X represents one member selected from the group consisting of single bond, -NH-, -O-, -COO-, -PH(=O)O-, and -S-; and R represents a polyglyceryl group. In addition, the `926 publication [0014] teaches the surface-modified nanodiamond has significantly improved solubility or dispersibility and dispersion stability in water and/or polar organic solvents, can thereby be handled with remarkably improved handleability, and can be used in various uses as a stable solution or dispersion in water or a polar organic solvent or can be subjected to any of chemical reactions and physical reactions in water and/or a polar organic solvent. This gives a nanodiamond material that is usable in engineering applications such as materials for polishing agents and dressers adopted to CMP (Chemical Mechanical Polishing); plating materials for corrosion-resistant electrodes adopted to fuel cells; materials for forming very hard surface coating layers typically of cutting tools; and highly heat-resistant and highly thermally conductive materials.
One ordinary skilled in the art would have been motivated to further modify the nanocarbon material disclosed by the `278 publication with the modification group of the `926 publication (claims 1-3) through the method disclosed by the `926 publication (claims 4-6 and Example 1). Therefore, the `278 publication in view of the `926 publication would have rendered claims 3-5 obvious.
In terms of claim 7, the `278 publication [0001, English translation] discloses a method for producing diamond microparticles having excellent water dispersibility, an aqueous dispersion of diamond microparticles with excellent water dispersibility obtained by heat treatment under an inert gas atmosphere, and an aqueous dispersion of diamond microparticles (i.e., a nanocarbon material dispersion composition comprising a dispersion medium and a nanocarbon material dispersed at nano-scale in the dispersion medium) obtained by the method thereof. The `278 publication [0002] discloses the diamond microparticles, particularly those produced by the explosion method, have a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell, and the shell structure has aqueous functional groups such as -COOH and -OH. In the low concentration range of 1 to 2 wt.% of the diamond microparticles, they are relatively dispersible in water, but in the high concentration range of 3 to 10 wt.% they do not disperse uniformly in water and precipitate, which causes a problem when used in the processing of high-concentration aqueous dispersion. In order to prepare diamond microparticles having excellent high-concentration water dispersibility, the `278 publication [0004] discloses diamond microparticles having excellent high-concentration water dispersibility can be produced by heat treating diamond microparticles in an inert gas atmosphere at a temperature in the range of 700-900°C with high hardness, abrasion resistance, high thermal conductivity, high refractive index, etc. In addition, the `278 publication [0041] discloses a polishing slurry using a diamond microparticle water dispersion with good dispersity, excellent polishing efficiency and productivity can be uniformly applied to the surface of fibers or films with diamond particles having little aggregation such that it is possible to produce fibers or films with excellent hardness and abrasion resistance.
The difference is the `278 publication does not teach a nanocarbon material comprises a surface-modified nanocarbon material in which a surface of the nanocarbon material is modified by a group represented by Formula (I) -X-R, wherein X represents an amino group, an ether bond, an ester bond, a phosphinic acid group, a phosphonic acid group, a phosphoric acid ester, a sulfide bond, a carbonyl group, an amide group, an imide bond, a thiocarbonyl group, a siloxane bond, a sulfuric acid ester group, a sulfonyl group, a sulfone group, a sulfoxide, or a group in which two or more of those listed above are bonded, and a bond extending left from X binds to the nanocarbon material, R represents a monovalent organic group, and an atom that binds to X is a carbon atom. Instead, the `278 publication [0002] teaches the diamond microparticles, particularly those produced by the explosion method, have a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell, and the shell structure has aqueous functional groups such as -COOH and -OH.
However, the difference is further taught and/or suggested by the `926 publication. The
`926 publication (claims 1-3) teaches a surface-modified nanodiamond comprising a base nanodiamond and at least one polyglycerol-chain-containing group present on at least a surface portion of the base nanodiamond, the polyglycerol-chain-containing group represented by following Formula (1) -X-R wherein X represents one member selected from the group consisting of single bond, -NH-, -O-, -COO-, -PH(=O)O-, and -S-; and R represents a polyglyceryl group. In addition, the `926 publication [0014] teaches the surface-modified nanodiamond has significantly improved solubility or dispersibility and dispersion stability in water and/or polar organic solvents, can thereby be handled with remarkably improved handleability, and can be used in various uses as a stable solution or dispersion in water or a polar organic solvent or can be subjected to any of chemical reactions and physical reactions in water and/or a polar organic solvent. This gives a nanodiamond material that is usable in engineering applications such as materials for polishing agents and dressers adopted to CMP (Chemical Mechanical Polishing); plating materials for corrosion-resistant electrodes adopted to fuel cells; materials for forming very hard surface coating layers typically of cutting tools; and highly heat-resistant and highly thermally conductive materials.
One ordinary skilled in the art would have been motivated to further modify the nanocarbon material disclosed by the `278 publication with the modification group of the `926 publication (claims 1-3) through the method disclosed by the `926 publication (claims 4-6 and Example 1). Therefore, the `278 publication in view of the `926 publication would have rendered claim 7 obvious.
In terms of claims 9-11, the difference is the `278 publication does not teach a nanocarbon material comprises a surface-modified nanocarbon material in which a surface of the nanocarbon material is modified by a group represented by Formula (I) -X-R, wherein X represents an amino group, an ether bond, an ester bond, a phosphinic acid group, a phosphonic acid group, a phosphoric acid ester, a sulfide bond, a carbonyl group, an amide group, an imide bond, a thiocarbonyl group, a siloxane bond, a sulfuric acid ester group, a sulfonyl group, a sulfone group, a sulfoxide, or a group in which two or more of those listed above are bonded, and a bond extending left from X binds to the nanocarbon material, R represents a monovalent organic group, and an atom that binds to X is a carbon atom. Instead, the `278 publication [0002] teaches the diamond microparticles, particularly those produced by the explosion method, have a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell, and the shell structure has aqueous functional groups such as -COOH and -OH.
However, the difference is further taught and/or suggested by the `926 publication. The
`926 publication (claims 1-3) teaches a surface-modified nanodiamond comprising a base nanodiamond and at least one polyglycerol-chain-containing group present on at least a surface portion of the base nanodiamond, the polyglycerol-chain-containing group represented by following Formula (1) -X-R wherein X represents one member selected from the group consisting of single bond, -NH-, -O-, -COO-, -PH(=O)O-, and -S-; and R represents a polyglyceryl group. In addition, the `926 publication [0014] teaches the surface-modified nanodiamond has significantly improved solubility or dispersibility and dispersion stability in water and/or polar organic solvents, can thereby be handled with remarkably improved handleability, and can be used in various uses as a stable solution or dispersion in water or a polar organic solvent or can be subjected to any of chemical reactions and physical reactions in water and/or a polar organic solvent. This gives a nanodiamond material that is usable in engineering applications such as materials for polishing agents and dressers adopted to CMP (Chemical Mechanical Polishing); plating materials for corrosion-resistant electrodes adopted to fuel cells; materials for forming very hard surface coating layers typically of cutting tools; and highly heat-resistant and highly thermally conductive materials.
One ordinary skilled in the art would have been motivated to further modify the nanocarbon material disclosed by the `278 publication with the modification group of the `926 publication (claims 1-3) through the method disclosed by the `926 publication (claims 4-6 and Example 1). Therefore, the `278 publication in view of the `926 publication would have rendered claims 9-11 obvious.
In terms of claims 13-18, the difference is the `278 publication does not teach a nanocarbon material comprises a surface-modified nanocarbon material in which a surface of the nanocarbon material is modified by a group represented by Formula (I) -X-R, wherein X represents an amino group, an ether bond, an ester bond, a phosphinic acid group, a phosphonic acid group, a phosphoric acid ester, a sulfide bond, a carbonyl group, an amide group, an imide bond, a thiocarbonyl group, a siloxane bond, a sulfuric acid ester group, a sulfonyl group, a sulfone group, a sulfoxide, or a group in which two or more of those listed above are bonded, and a bond extending left from X binds to the nanocarbon material, R represents a monovalent organic group, and an atom that binds to X is a carbon atom. Instead, the `278 publication [0002] teaches the diamond microparticles, particularly those produced by the explosion method, have a core-shell structure consisting of a SP3 diamond core and a SP2 graphite shell, and the shell structure has aqueous functional groups such as -COOH and -OH.
However, the difference is further taught and/or suggested by the `926 publication. The
`926 publication (claims 1-3) teaches a surface-modified nanodiamond comprising a base nanodiamond and at least one polyglycerol-chain-containing group present on at least a surface portion of the base nanodiamond, the polyglycerol-chain-containing group represented by following Formula (1) -X-R wherein X represents one member selected from the group consisting of single bond, -NH-, -O-, -COO-, -PH(=O)O-, and -S-; and R represents a polyglyceryl group. In addition, the `926 publication [0014] teaches the surface-modified nanodiamond has significantly improved solubility or dispersibility and dispersion stability in water and/or polar organic solvents, can thereby be handled with remarkably improved handleability, and can be used in various uses as a stable solution or dispersion in water or a polar organic solvent or can be subjected to any of chemical reactions and physical reactions in water and/or a polar organic solvent. This gives a nanodiamond material that is usable in engineering applications such as materials for polishing agents and dressers adopted to CMP (Chemical Mechanical Polishing); plating materials for corrosion-resistant electrodes adopted to fuel cells; materials for forming very hard surface coating layers typically of cutting tools; and highly heat-resistant and highly thermally conductive materials.
One ordinary skilled in the art would have been motivated to further modify the nanocarbon material disclosed by the `278 publication with the modification group of the `926 publication (claims 1-3) through the method disclosed by the `926 publication (claims 4-6 and Example 1). Therefore, the `278 publication in view of the `926 publication would have rendered claims 13-18 obvious.
Conclusions
Claims 1-18 are rejected.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731