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 .
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, line 2 describes the metal salt as a “light” metal salt. This is unclear.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 2, 3, 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kimoto (US Pub.: 2017/0313590) and in view of Retsch “Bead Mills” and in view of Mochalin (US Pub.: 2018/0134563).
Kimoto describes a nanodiamond suspension (title). The process produces nanodiamond by detonation, followed by air-cooling the nanodiamonds (para. 15). The aggregates of nanodiamonds are then deaggregated using crushing (para. 16), followed by further treatments (para. 19), followed by another deaggregation treatment, such as bead milling (para. 20). The particles produced have a d50 of 3.5 to 9nm (para. 35) or from 4 to 6nm (para. 89). As to the particles having the feature of having the dimension of 30nm2 or more being 39% or less of the solution (d), Kimoto teaches a total size of 4-6nm and that these particles may be deagglomerated using a bead mill (para. 20).
Retsch explains that a bead mill operates by grinding a dispersion of particles and agitating the chamber and using beads to break them down into smaller sizes while being rotated (see Retsch, para. 1).
Therefore, since the particles are rotated and ground, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the product made would be substantially spherical.
Further, since the nanodiamond products are spherical, a size of 4-6nm would result in a total surface area of about 16-36nm2. In one example, Kimoto states that the D50 is 5.4nm (para. 97) This would result in a surface area of about 29nm2. The particles with a D50 of 5.4nm has an electrical conductivity of 1410 µS/cm (para. 97). When the D50 is 7.4nm, the electrical conductivity found was about 1230 µS/cm (para. 95).
Therefore, although Kimoto does not specifically state that the total nanodiamonds have less than 20% particles with a size of about 10nm or more (step a of Claim 1) (which includes zero), less than 24% of particles sized 8.9nm or more (b of Claim 1), or less than 39% of particles with a size of 7nm or more (c of Claim 1), since at least 50% of the particles have a size less than this range, since the particles in the 5.4nm range have a higher electrical conductivity, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the particles through bead milling to produce particles that fall within the smaller size range of 5.4nm.
Further, in tests, Kimoto teaches that their particles after tests did not show aggregation after one month (para. 102).
As to the water feature, Kimoto teaches dispersing the nanodiamonds in water (para. 67).
As to the heavy metal content, Kimoto explains that the metal impurities in the nanodiamond are removed by dissolving the nanodiamond in a strong acid (para. 55). Although Kimoto describes removing metal impurities from nanodiamond, the reference does not specifically state that the content of heavy metal is from 1-100 parts by mass of the nanodiamond particles.
Mochalin describes a disaggregation of nanodiamond composition (title and abstract). The process disperses nanodiamonds in a solvent (para. 18 and 23 and 23). The dispersed nanodiamonds (para. 24) and manufactured in a way to prevent agglomeration (para. 21). The nanodiamonds are then surface treated with functional groups (para. 65). The solvent is preferably water (para. 47).
As to the heavy metal content, Mochalin shows that in atomic concentration analysis, the percent concentration of Fe, for every 99.74 atoms of the nanodiamond is about 0.26% (see table 3). When calculated for their mass percent, the amount of iron in the nanodiamond is about 1mass % (given the molecular weight and the total mass of the nanodiamond in table 3). The mass % of Fe is about 1 in either calculating the total weight of the nanodiamond with or without sodium chloride.
As to Claim 2, Mochalin teaches that the iron is in the form of a metal salt (para. 43).
As to Claims 2, 3, 4 and 9, Kimoto teaches that their compound is rinsed with a NaCL electrolyte (para. 66), but does not describe inclusion of NaOH in the solvent.
Mochalin describes inclusion of a disaggregating agent in the slurry (para. 38). Effective disaggregating agent can include NaCl (para. 40).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include NaCl in the slurry, as taught by Mochalin for use with the nanodiamond slurry of Kimoto and Retsch because these salts are effective for facilitating deagglomeration of the nanodiamonds in an aqueous slurry.
Claim(s) 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kimoto, Retsch and Mochalin as applied to claim 1 above, and further in view of Takeuchi (WO 2021039521), EPO translation and in view of Yamada (JP 2005306617).
The references do not describe the zeta potential of the nanodiamond.
Takeuchi teaches that the nanodiamond dispersion can be produced with either a positive zeta potential (para. 32) or a negative zeta potential (para. 32, second paragraph). This is done by adjusting the pH of the slurry (para. 32, para. 2).
As to the specific value, Yamada describes a dispersion of diamond fine particles designed to prevent reaggregation (abstract). The mixture is controlled to have a zeta potential designed to prevent this reaggregation (abstract). Specifically, Yamada teaches a zeta potential of about -10mV (page 8, para. 3, 6) to effectively achieve this value (page 10, para. 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the zeta potential by adjusting the pH of the slurry, as taught by Takeuchi to a value of about -10mV, as taught by Yamada for use with the dispersed nanodiamond of Kimoto, Retsch and Mochalin because this value is known to facilitate deagglomeration of diamond fine particles.
Claim(s) 5, 6, 10, 11, 12, 13, 14, 15, 16, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kimoto, Retsch and Mochalin as applied to claim 1 above, and further in view of Takeuchi (WO 2021039521), EPO translation.
Kimoto, Retsch and Mochalin teaches surface modifying the nanodiamond, but does not specifically describe modifying the surface of the nanodiamond with polyglycerin.
Takeuchi teaches a surface-modified nanodiamond (abstract) from a nanodiamond made by detonation (para. 3) that is then milled and then dispersed into an aqueous dispersion of the nanodiamond in the solution (para. 3). Takeuchi explains that surface modification of the nanodiamond is known to improve the solubility of dispersibility in water or solvent (para. 4). In their invention, Takeuchi describes modifying their nanodiamond with polyglycerin chains (para. 7)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to surface modify the nanodiamond with polyglycerin, as taught by Takeuchi for use the dispersed nanodiamond of Kimoto, Retsch and Mochalin because Takeuchi explains that this facilitates improved solubility in water/solvent.
Claim(s) 18, 19, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kimoto, Retsch and Mochalin as applied to claims 2 or 3 above, and further in view of Takeuchi (WO 2021039521), EPO translation and in view of Yamada (JP 2005306617).
The references do not describe the zeta potential of the nanodiamond.
Takeuchi teaches that the nanodiamond dispersion can be produced with either a positive zeta potential (para. 32) or a negative zeta potential (para. 32, second paragraph). This is done by adjusting the pH of the slurry (para. 32, para. 2).
As to the specific value, Yamada describes a dispersion of diamond fine particles designed to prevent reaggregation (abstract). The mixture is controlled to have a zeta potential designed to prevent this reaggregation (abstract). Specifically, Yamada teaches a zeta potential of about -10mV (page 8, para. 3, 6) to effectively achieve this value (page 10, para. 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the zeta potential by adjusting the pH of the slurry, as taught by Takeuchi to a value of about -10mV, as taught by Yamada for use with the dispersed nanodiamond of Kimoto, Retsch and Mochalin because this value is known to facilitate deagglomeration of diamond fine particles.
Conclusion
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 July 24, 2026
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