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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/2/2026 has been entered.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. It is noted that the arguments indicate that the limitations of claim 4 have been added to claim 1, but this is inaccurate.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for performing a treatment on larger diamond particles depending on their particle size as in amended claim 1, does not reasonably provide enablement for treating both particle sizes as the same time or separating the particle sizes as is broadly included in the amended claim language. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. According to In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), the claims are broad and indefinite regarding how the larger diamond particles are determined or selected and the disclosure/examples does not provide guidance. The state of the prior art does not teach a selection method, nor would one of ordinary skill in the art find it apparent which method to use nor would the selection be predictable. Thus, the amount of experimentation to make and use the invention is unreasonable.
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, 3 and 8-9 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.
Claim 1 recites the limitation "those larger diamond micro-nanoparticles" in both lines 15 and 18. There is insufficient antecedent basis for this limitation in the claim as both mentions of this term require different method steps.
Further, referring to two sets of “those larger diamond micro-nanoparticles" is confusing and indefinite. Are there two sets created by the mixing and spin coating steps that are separated? Or can the mixing and spin coating steps only create one set of larger diamond nanoparticles (either 10-500 nm or 500 nm-10 micron)? Clarification in the claim language is required. The examiner recommends either limiting “larger diamond micro-nanoparticle" to only one of the sizes. Or, defining a determining step where the size is limited to either of the two steps, or, a separate steps where both occur to make the claim definite. All amendments must be supported in the instant specification.
Claims 8-9 include a ‘high pressure’ without any further clarification but appears to be atmospheric pressure in the air, but clarification is required. The ‘high temperature’ is assumed to be the ranges given in the claim, but clarification is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/ Primary Examiner, Art Unit 1718