DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of claims 1, 2, and 5-13, directed to a structure, on September 12, 2025 and election without traverse of Species 1A, directed to a structure having a silicon substrate, in the reply filed on January 23, 2026 are acknowledged. Claims 3, 4, and 14-20 are withdrawn from consideration.
In making their election of Species 1A, Applicant argued that a sintered coating comprising diamond particles, as taught by Bertagnolli, is not a diamond particle coating because it is common knowledge that a “diamond particle layer” is a layer obtained by depositing diamond particles without sintering. This argument is not persuasive because Bertagnolli’s coating layers are made up of diamond particles and because the neither the claims nor the instant disclosure exclude “diamond particle layers” from being sintered.
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(d):
(d) REFERENCE IN DEPENDENT FORMS—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 2, and 5-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor regards as the invention.
The meaning of claim 1 is unclear because it recites diamond particle layers “in close contact with each other”. As the claims do not recite that the layers are in direct contact with each other and the instant disclosure does not define a distance that qualifies two, contacting layers as being in “close contact”, the meaning of the term is unclear. For the sake of compact prosecution, two layers that are adjoined and can be considered “close” are considered herein to be in “close contact” with each other. Appropriate correction and explanation are required.
Claim 10 is indefinite because it recites a coating “with a color tone that varies depending on the number of diamond particle layers”. As neither of claim 10 or independent claim 1 positively recites a coating that includes different numbers of diamond particle layers in different areas, the quoted limitation appears to be functional language regarding the appearance of the coating in differing situations. As such, it is not clear if claim 10 is intended to require a coating with different areas having different numbers of diamond layers or if it is merely describing a hypothetical situation in which the color of the coating would change if some, unspecified number of additional diamond coatings were applied. For the sake of compact prosecution, either interpretation is considered herein to be correct. Appropriate explanation and correction are required.
Claims 10 and 12 are further indefinite because each recites a coating film that exhibits or has a “metal color”. As no specific metals (i.e. indicating which “metal color” is exhibited) or color tones are recited for the film, it is unclear what is meant by “a metal color”. Further, given that the film has a thickness in the tens to low hundreds of nanometers, the meaning of “metal color” is further indefinite because nanofilms of metals can have colors that would not normally be described as “metallic” (e.g. nanofilms of gold can be blue, nanofilms of silver can be brown, etc.). As such, the meaning of a “metal color” is unclear in the context of the claimed invention.
Claims 2 and 5-13 are also rejected under 35 U.S.C. 112(b) because they depend from claim 1.
Claim 11 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In particular, claim 11 fails to further limit claim 1, from which it depends, because claim 11 recites that “the structure is a substrate with a coating film”, which is already recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bertagnolli (US Pat. No. 7,635,035).
Regarding claims 1 and 11, Bertagnolli teaches a structure comprising a substrate (101) that is coated with a coating film comprising a first layer of diamond particles (102) affixed to the substrate surface and a second layer of diamond particles (103) on, adjacent, and integrally bonded (i.e. the layers are in close contact with each other in the height direction) to the first layer of diamond particles (Fig. 1; col. 10, ln. 36-40).
Claims 1 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suresh (US PG Pub. No. 2016/0122551).
Regarding claims 1 and 11, Suresh teaches a structure comprising a substrate and a coating comprising a diamond particles fixed on a surface on the substrate (Abstract; par. 26). Suresh further discloses that the diamond particle coating may be formed as a multilayer coating made up of layers of diamond particles having different compositions (par. 26). Therefore, Suresh teaches a structure with a substrate and a coating film comprising at least a first layer of diamond particles and a second layer of diamond particles disposed on the first layer (i.e. in “close contact” with each other in the height direction).
Claims 1, 2, 5, and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Girard (Girard et al. Appl. Mater. Interf., 2009, vol. 1, p. 2738-2746). Evidence for claim 5 is provided by Luo (Luo, Y. et al. PNAS, 2014, p. 18422-18427).
Regarding claims 1, 11, and 13, Girard teaches a structure comprising a silicon substrate and a coating comprising a first layer of diamond particles fixed on a surface on the substrate and one or more additional layers of diamond particles disposed on the first layer (p. 2743, left and right col.; p. 2745, right col). As the instant claims do not exclude the recited diamond particle layers from including materials other than diamond particles, as every layer in Girard’s product either directly or indirectly contacts each other layer, and as Girard’s exemplary coating has an overall thickness of 70 nm (p. 2745, right col.), the individual, adjacent diamond layers in the height direction are necessarily in “close” (i.e. nanometer-scale distances) contact with each other in the prior art coating.
Regarding claims 2 and 5, Girard teaches that the diamond particles become deposited on the substrate and successive layers through electrostatic attractions (i.e. Coulomb force) between the particles and the underlying substrate or layer (p. 2740, right col.) and, as noted above, the all of the layers within the coating, including adjacent layers are in close contact with each other. Additionally, as evidenced by the instant disclosure, charged diamond particles approach an oppositely charged substrate via Coulomb force and, as the particles approach the substrate, van der Waals force also acts on the particles to adsorb and fix them to the substrate (Applicant’s published application, par. 73). Luo further teaches that van der Waals interaction is a ubiquitous force between particles (p. 18422, “Significance”). Therefore, Girard’s adjacent diamond particle layers are in close contact with each other via Coulomb and van der Waal’s forces.
Regarding claims 10 and 12, although Girard does not disclose that that the diamond coating is decorative in nature or discuss the color of the diamond coating, the requirement that the coating is decorative is a statement of intended use. Additionally, as discussed above, Girard’s diamond coatings are made up of multiple layers of diamond particle coatings comprising particles having a diameter in the range of 15 to 50 nm (p. 2740, left col.). Figure 8 also shows that the coating of diamond nanoparticles has a color that one might describe as a “metal color” (p. 2474, Fig. 8). Additionally, as evidenced by the instant disclosure, coatings made up of stacked diamond nanoparticle layers exhibit a metal color with a tone that can be varied according to the number of diamond particle layers (Applicant’s published application, par. 17). Therefore, Girard’s coating film, which comprises stacked diamond nanoparticle layers, has a “metal color”, can have its color tone varied with the addition of further diamond nanoparticle layers, and meets the requirement of being a “decorative coating” because it is capable of being used in a decorative manner.
Claims 1, 2, and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berthet (WO 2017/102734 A1), the text of which is cited herein according to an English language translation. Evidence for claim 5 is provided by Luo.
Regarding claims 1 and 11, Berthet teaches a structure comprising a substrate and a coating comprising a first layer of diamond particles fixed on a surface on the substrate and one or more additional layers of diamond particles disposed on the first layer (Abstract; par. 21-24, 28, 29, 33, 60, 76). As the instant claims do not exclude the recited diamond particle layers from including materials other than diamond particles, as every layer in Berthet’s product either directly or indirectly contacts each other, and as Berthet’s coating has an overall thickness of 20 nm to 2 µm, including wherein the coating’s thickness equals the product of the particle size multiplied by the number of applied number (par. 42-43), the individual, adjacent diamond layers in the height direction are necessarily in “close” (i.e. nanometer-scale distances) contact with each other in the prior art coating.
Regarding claims 2 and 5, Berthet teaches that the diamond particles become deposited on the substrate and successive layers through electrostatic attractions (i.e. Coulomb forces) between the particles and the underlying substrate or layer (par. 76) and, as noted above, the all of the layers within the coating, including adjacent layers are in close contact with each other. Additionally, as evidenced by the instant disclosure, charged diamond particles approach an oppositely charged substrate via Coulomb force and, as the particles approach the substrate, van der Waals force also acts on the particles to adsorb and fix them to the substrate (Applicant’s published application, par. 73). Luo further teaches that van der Waals interaction is a ubiquitous force between particles (p. 18422, “Significance”). Therefore, Berthet’s adjacent diamond particle layers are in close contact with each other via Coulomb and can der Waal’s forces.
Regarding claims 6-9, Berthet exemplifies a structure with an adhered coating, as discussed above, wherein the coating is made up of four, stacked diamond particle layers and has a root mean square roughness of 20 nm (par. 75, 87). As noted above, Berthet teaches that his coatings have a thickness in the range of 20 nm to 2 µm, including wherein the coating’s thickness equals the product of the particle size multiplied by the number of applied coating layers (par. 42-43). As such, Berthet’s four-layer diamond particle coating is expected to have a thickness that falls in the range of 5 to 150 nm. Additionally, Berthet teaches that his coatings have a minimum thickness (i.e. smallest thickness based on four stacked layers of nanoparticles) of 20 to 400 nm (par. 42).
Regarding claims 10 and 12, although Berthet does not disclose that that the diamond coating is decorative in nature or discuss the color of the diamond coating, the requirement that the coating is decorative is a statement of intended use. Additionally, as discussed above, Berthet’s diamond coatings are made up of four or more layers of diamond particle coatings comprising particles having a diameter in the range of 5 to 100 nm (par. 42). As evidenced by the instant disclosure, coatings made up of stacked diamond nanoparticle layers exhibit a metal color with a tone that can be varied according to the number of diamond particle layers (Applicant’s published application, par. 17). Therefore, Berthet’s coating film, which comprises stacked diamond nanoparticle layers, has a “metal color”, can have its color tone varied with the addition of further diamond nanoparticle layers, and meets the requirement of being a “decorative coating” because it is capable of being used in a decorative manner.
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.
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Girard, as applied above.
Regarding claims 6-9, Girard exemplifies a substrate with a coating including two diamond particle layers that has an overall thickness of 70 nm (p. 2743, right col.). The teachings of Girard differ from the current invention in that he does not explicitly teach the roughness of the 70 nm coating or another coating including multiple diamond particle layers, as discussed above. However, Girard does disclose that there are several applications for such diamond films, such as films for bioinert layers in biocell interfacing, that require low film thicknesses of less than 100 nm and low surface roughness (p. 2738, left col). Therefore, it would have been obvious to one of ordinary skill in the art to configure the 70 nm coating to have as low of a roughness as possible and/or to configure another structure including a substrate and a multilayer diamond particle coating, as discussed above, to have a thickness of less than 100 nm and as low of a surface roughness as possible in order to render the film and product, as a whole, as suitable as possible for the various applications (e.g. diamond-coated bioinert biocell interfaces) that require very thin films with low roughnesses. The instantly claimed thickness ranges are anticipated or rendered obvious by Girard. See MPEP 2144.05.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Berthet, as applied above.
Regarding claim 9, as discussed above, Berthet’s exemplified coating having a root mean square roughness of 20 nm is expected to have a thickness falling in the recited range. However, to the extent that Berthet’s absence of an explicit teaching for the coating thickness is considered a difference from the current invention, it is noted that it would have been obvious to one of ordinary skill in the art to configure the coating to have a an overall thickness of 20 nm to 2 µm because Berthet teaches that such a thickness range is appropriate for his coating material (par. 42, 43). The instantly claimed thickness range is overlapped and rendered obvious by Berthet. See MPEP 2144.05.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Berthet, as applied above, and further in view of Jansen (US Pat. No. 5,204,210).
Regarding claim 13, the teachings of Berthet differ from the current invention in that his diamond nanoparticle coating is not disclosed to be deposited on a silicon substrate. However, Berthet does disclose that the coating is protective, may be applied to non-metallic bodies, and may be used in numerous application fields (par. 44, 46, 48). Jansen further teaches that diamond thin films have been found to be useful in microelectronic applications due to their excellent properties, and that such films can negate stress components in a semiconductor wafer arising from thermal expansion and intrinsic stress (col. 2, ln. 5-13). Jansen also teaches that a common prior art method of making diamond films involves depositing a film on a silicon substrate (col. 1, ln. 45-61) and, his own teachings involve depositing a diamond film on a silicon substrate (col. 3, ln. 24-30). As such, it would have been obvious to one of ordinary skill in the art to apply Berthet’s diamond particle coating to a silicon substrate because Berthet discloses that his coating is protective (and, therefore, to protect a silicon substrate), that nonmetal substrates may be coated, and that his coating is useful in a wide range of applications, and because Jansen makes clear that applying diamond films to silicon substrates is common and beneficial, particularly in protecting substrates in microelectronic applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784