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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/26/2026 has been entered.
Status of Rejections
The rejection(s) of claim(s) 10 is/are obviated by applicant’s cancellation.
All other previous rejections are withdrawn in view of applicant’s amendments.
New grounds of rejection are necessitated by applicant’s amendments.
Claims 1-3, 5-7, 9, 11-12, 14-16 and 21-22 are pending and under consideration for this Office Action.
Claim Objections
Applicant is advised that should claim 2 be found allowable, claim 9 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 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 22 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 22 recites the limitation "the boron atom concentration in the conductive layer (2) is 5 x 1019 atoms/cm3 to 3 x 1022 atoms/cm3". However, the limitation of “a boron atom concentration in the conductive layer (2) is 1 x 1021 atoms/cm3 or greater” is previously introduced in line 9 of claim 1, upon which claim 22 depends. As the concentration range of claim 22 has a lower limit below the concentration range of claim 1, it is unclear what the specific limits of the boron atom concentration are in claim 22.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-7, 9, 11-12, 14-16 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Wort et al. (WO 2006013430 A1) in view of Kobashi (U.S. Patent No. 5,776,323).
Regarding claim 1, Wort teaches a laminate (see e.g. Page 2, bottom two paragraphs, electrode body comprising combined, i.e. laminated, layers) comprising:
a layer (1) having a diamond crystal structure in which some carbon atoms are substituted with nitrogen atoms (see e.g. Page 2, bottom paragraph, and Page 3, lines 1-10, lightly doped diamond layer which may be doped with, i.e. have carbon substituted by, N); and
a conductive layer (2) having a diamond crystal structure in which some carbon atoms are substituted with boron atoms (see e.g. Page 3, lines 1-10, heavily doped CVD diamond layer which may be doped with, i.e. have carbon substituted by, boron),
wherein the layer (1) has a thickness from 100 nm to 50 µm (see e.g. Page 6, lines 5-10), overlapping the claimed range of the present invention, and
a boron atom concentration in the conductive layer (2) is 1x1018 atoms/cm3 to 3x1021 atoms/cm3 (see e.g. Page 6, bottom paragraph), overlapping the claimed range of the present invention.
MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
Wort does not explicitly teach a surface layer portion of the layer (1) being hydrogen-terminated, but does teach the layer (1) being disposed on a surface of the laminate to be exposed to an electrochemical environment as a working surface (see e.g. Page 3, lines 11-16, lightly doped diamond layer on working sides of electrode).
Kobashi teaches a diamond electrode (see e.g. Abstract), wherein a surface of the diamond electrode may be chemically modified with substituents such as hydrogen, i.e. be hydrogen-terminated, to contribute to stability and high performance of the electrode, the hydrogen substituent being particularly desirable for creating a hydrophobic surface in special chemical reaction processes (see e.g. Col. 3, lines 20-23, and Col. 4, lines 16-23, 27-28 and 37-46).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the layer (1) of Wort to have a hydrogen-modified, i.e. hydrogen terminated, surface as taught by Kobashi to contribute to stability and high performance of the electrode, the hydrogen substituent being particularly desirable for creating a hydrophobic surface in special chemical reaction processes.
Regarding claims 2 and 9, modified Wort teaches a nitrogen concentration in the layer (1) being 2x1017 atoms/cm3 to 6x1020 atoms/cm3 (see e.g. Wort Page 6, lines 11-13 and bottom 2 paragraphs, lightly doped diamond layer with dopant such as N has dopant concentration lower than that of the heavily doped diamond layer, defined as between 1x1018 atoms/cm3 to 3x1021 atoms/cm3, by a factor of 5), overlapping the claimed range of the present invention (see MPEP § 2144.05 I as cited above).
Regarding claim 3, modified Wort teaches the layer (1) having a thickness of 100 nm to 50 µm (see e.g. Wort Page 6, lines 5-10), overlapping the claimed range of the present invention (see MPEP § 2144.05 I as cited above), and the conductive layer (2) having a thickness of greater than 100 µm (see e.g. Wort Page 6, lines 2-4).
Regarding claim 5, modified Wort teaches an electrode comprising the laminate described in claim 1 (see e.g. Wort Page 2, 2nd to last paragraph, electrode comprising the electrode body).
Regarding claim 6, the electrode being a “visible light-responsive reduction electrode” is a statement of intended use. MPEP § 2114 states “"[A]pparatus claims cover what a device is, not what a device does."…A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.”. Modified Wort teaches all the structural limitations of the claimed electrode as stated above. The electrode of modified Wort would therefore be capable of use as a visible light-responsive reduction electrode, particularly as paragraphs 0008 and 0019 of the instant specification described the diamond laminate material generally being suitable for a visible-light responsive electrode, with the nitrogen-containing layer particularly being inherently responsive to irradiation with visible light.
Regarding claim 7, modified Wort teaches an electrolytic reaction apparatus comprising the electrode described in claim 5 (see e.g. Wort connecting paragraph of Pages 9-10, apparatus with inventive electrode immersed in liquid to conduct chemical reactions in electrolyte under application of voltage, i.e. electrolytic reaction).
Regarding claim 11, modified Wort teaches a nitrogen atom concentration in a portion from a surface of the layer (1) to a depth of 30 nm being 2x1017 atoms/cm3 to 6x1020 atoms/cm3 (see e.g. Wort Page 6, lines 5-13 and bottom 2 paragraphs, and Page 8, lines 3-5, lightly doped diamond layer with lower thickness limit of 100 nm with dopant such as N having dopant concentration lower than that of the heavily doped diamond layer, defined as between 1x1018 atoms/cm3 to 3x1021 atoms/cm3, by a factor of 5, the dopant concentration being common throughout the entire thickness when not graded), overlapping the claimed range of the present invention (see MPEP § 2144.05 I as cited above).
Regarding claim 12, modified Wort teaches a concentration of heteroatoms other than boron atoms and nitrogen atoms in the layer (1) being 0 atoms/cm3 (see e.g. Page 3, lines 1-3, dopant such as N may be selected for the lightly doped layer, with different dopants being used in each layer, i.e. the other potential dopants being excluded from the lightly doped layer).
Regarding claim 14, modified Wort teaches a nitrogen atom concentration in the conductive layer (2) being 0 atoms/cm3 (see e.g. Wort Page 3, lines 1-3, and Page 6, bottom 2 paragraphs, boron being selected as the sole dopant of the heavily doped diamond layer).
Regarding claim 15, modified Wort teaches the laminate having a thickness of greater than 100.1 µm (see e.g. Wort Page 3, lines 5-10, and Page 6, lines 2-10, entire structure consisting of the lightly doped diamond layer with a lower thickness limit of 100 nm and heavily doped diamond layer with a thickness exceeding 100 µm), overlapping the claimed range of the present invention (see MPEP § 2144.05 I as cited above).
Regarding claim 16, modified Wort teaches a total weight of the layer (1) and the conductive layer (2) accounting for 100 wt% of a total weight of the laminate (see e.g. Wort Page 3, lines 5-10, entire structure consisting of the lightly doped diamond layer and heavily doped diamond layer).
Regarding claim 21, modified Wort teaches an upper limit of the boron atom concentration in the conductive layer (2) being 3x1021 atoms/cm3 (see e.g. Wort Page 6, bottom paragraph), falling within the claimed upper limit range.
Regarding claim 22, modified Wort teaches the boron atom concentration in the conductive layer (2) being 1x1018 atoms/cm3 to 3x1021 atoms/cm3 (see e.g. Wort Page 6, bottom paragraph), overlapping the claimed range of the present invention (see MPEP § 2144.05 I as cited above).
Response to Arguments
Applicant’s arguments, see pages 7-8, filed 02/26/2026, with respect to the rejection(s) of amended claim(s) 1 under 35 USC 103 over Rueffer, particularly regarding the boron atom concentration in the conductive layer, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wort and Kobashi.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Seki et al. (U.S. 2006/0144702) discloses a diamond electrode comprising a diamond layer having a boron concentration of 10,000 ppm to 100,000 ppm, i.e. 1.76x1021 atoms/cm3 to 1.76x1022 atoms/cm3.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOFOLUWASO S JEBUTU whose telephone number is (571)272-1919. The examiner can normally be reached M-F 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOFOLUWASO S JEBUTU/Examiner, Art Unit 1795
Prosecution Insights