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 1-18 are pending as originally filed and are considered herein.
Formalities:
The IDS of 5/30/24 and reference therein has been considered. The Korean document cited in the same IDS is considered only on the basis of the provided machine translation of the abstract provided, as the rest is in Korean. A signed copy of the IDS statement is provided herewith.
The drawings are objected to below. Figures 4-6 are in color, and the requirements for acceptance of color figures has not been provided by Applicant and granted by the office.
The specification of 5/30/24 is accepted.
The present filing has no priority claims, and the filing date is 5/30/24.
Drawings
The drawings are objected to.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “PVD-DLC formed by PVD”. The same recitation of “PVD-DLC” requires the formation of the DLC to be by PVD. Thus, the “formed by PVD” is redundant.
Appropriate correction is required.
Applicant is advised that should claim 1 be found allowable, claim 2 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 2 recites that graphite hardness is in a range of 1.5 Gpa or less, and the PVD-DLC is 35 Gpa or more. This means that the range of hardness of the first carbon allotrope is in the same range of what it can be. The ranges are basically open with “or more” and “or less”. Thus, despite a slight difference in wording, these claims have substantially the same scope.
Applicant is advised that should claim 1 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 15 limits the location of the cell contact surface to comprising the upper surface of the culture layer. However, Claim 1 requires the culture layer to be on top of the base. Thus, it is impossible to be anywhere else but on top of the culture layer. Therefore, despite a slight difference in wording, these claims have substantially the same scope.
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, 8 and 17-18 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 “an electronic conductive material”. It is not clear what is being claimed. Is it electrically conductive? Or is Applicant actually claiming the presence of transistors and logic circuits in the material? For purposes of compact prosecution, it will be considered to mean “an electrically conductive material”.
Claim 1 recites, in the last clause, “the first carbon allotrope has a higher hardness than graphite, which is another carbon allotrope, and lower hardness than ‘PVD-DLC’ formed by PVD, which is a diamond-like carbon (DLC) and another carbon allotrope”. The portion “and another carbon allotrope” appears to have no linkage to the rest of the claim. To wit, the first carbon allotrope has a higher hardness than graphite and a lower hardness than DLC formed by PVD, but “and another allotrope” has no meaning. Its clearly not referring to graphite or DLC, and there is nothing comparing it. The Artisan would not know what is being claimed.
Claim 8 recites the limitation "the graphite" in Claim 1. There is insufficient antecedent basis for this limitation in the claim. To wit, while it is recognized that graphite is an allotrope of carbon, it is not required to be present in the first allotrope portion of Claim 1.
Claim 9 recites the limitation "the PVD-DLC" in Claim 1. There is insufficient antecedent basis for this limitation in the claim. To wit, while it is recognized that PCV-DLC is an allotrope of carbon, it is not required to be present in the first allotrope portion of Claim 1.
Claims 17-18 both recite the limitation "the second carbon allotrope portion" in Claim 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, Claims 17-18 will be considered to depend from Claim 16.
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 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims are generic for allotropes having a higher hardness than the least hard form of graphite, and a lower hardness than the hardest form of PVD-DLC. Depending claims require double and single bond carbon-carbon ratios (e.g., Claims 6-7), pore volume comparisons to graphite and PVD-DLC (e.g., Claims 8-9), and electrical conductivity comparisons to PVD-DLC (e.g., Claim 13).
The specification provides antecedent basis for the same (e.g., pp. 10-13). The examples demonstrate three working embodiments (e.g., Examples 1-3) where all three meet the requirements of hardness, xps intensity ratio, and pore volume. Then there are comparative examples 2-5 which demonstrate that with two properties not meeting the requirements, the substrates do not satisfy the superior properties. This may be analyzed in Tables 1 and 2.
The Art fails to provide any direct analysis of these properties and how they influence cell growth and culture layer damage, so there is nothing to be gleaned here. Salgueiredo, et al. (2008) “Biocompatibility evaluation of DLC-coated Si3N4 substrates for biomedical applications”, Diamond and Related Materials, 17: 878-81, is the closest prior art and these properties are not even analyzed, but they do demonstrate superior growth (e.g., ABSTRACT).
Given the limited showing by Applicant, and absence of art to help, and given the showing that when properties are outside the desired ranges disclosed, they fail to meet the requirements in the examples by Applicant, the Artisan would not have understood Applicant to have been in possession of these properties separately, and only depending on the hardness of the first carbon allotrope.
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 (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 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) 1-9 and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Salgueiredo, et al. (2008) “Biocompatibility evaluation of DLC-coated Si3N4 substrates for biomedical applications”, Diamond and Related Materials, 17: 878-81 (hereinafter “Sal”).
Claim 1: Sal teaches the growth of MG63 osteoblast-like cells, which adhere to DLC films with normal morphology and compared to standard polystyrene culture plates, exhibited higher growth rate (e.g., ABSTRACT). The cell culture uses Si3N4 polished substrate and an intermediate silicon layer which may be considered the base (e.g., p. 879, col. 1, paragraph 3). Upon the base, DLC coatings are growth by DC magnetron sputtering (e.g., Id.). This allotrope of carbon has a hardness higher than graphite, and lower than another form of PVD-DLC, e.g., ta-DLC. Moreover, as the properties of higher growth is seen, it is presumed to meet the claim.
Claim 2: the DLC coating of Sal is presumed to meet the limitation as it shows the property of higher growth rate, and it is higher than graphite in hardness, being DLC, and less hard than the hardest form of DLC: ta-DLC.
Claims 3-9 and 13-14: as the properties of growth increase is found, it is presumed that the claimed properties of hardness are met. It is left to applicant to prove otherwise. Sal’s non-analysis of the composition on the various properties does not mean that it is not there, and the Examiner does not have the facilities to make and test the properties.
Claim 15: the cell contact surface is on top of the DLC layer.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT M KELLY whose telephone number is (571)272-0729. The examiner can normally be reached M-F: 8a-5p.
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ROBERT M. KELLY
Examiner
Art Unit 1638
/ROBERT M KELLY/ Primary Examiner, Art Unit 1638
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