DETAILED ACTION
Information Disclosure Statement
The information disclosure statement filed June 9, 2026 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the lined-through information referred to therein has not been considered.
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.
Claim 12 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claim contains subject matter that 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 at the time the application was filed, had possession of the claimed invention. Specifically, claim 12 now recites a coating film with a “metallic luster”. This limitation is insufficiently supported by the instant disclosure and constitutes new matter because the instant disclosure contains no teachings of a “metallic luster”. Appropriate correction is required.
The rejections made under 35 U.S.C. 112(b) in the previous Office Action are withdrawn in view of Applicant’s amendment, filed June 9, 2026.
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, 2, 5, 10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Welch (US PG Pub. No. 2012/0202047). Evidence for claim 5 is provided by Luo (Luo, Y. et al. PNAS, 2014, p. 18422-18427).
Regarding claim 1, Welch teaches a structure comprising a substrate (201) and a coating film on the substrate comprising a first layer of diamond particles (211) having a negative charge (212) and a second layer of diamond particles (221) having a positive charge (222; i.e. a charge opposite that of the first layer) stacked in the height direction on, adjacent to, and contacting the first layer of particles of particles (Fig. 2C; par. 23, 23, 28, 53).
Regarding claims 2 and 5, Welch teaches that the nanoparticle layers are bonded to each other through electrostatic attractions (i.e. Coulomb force) and that, in the case where functionalized particles are used to form the layers, forces such as hydrogen bonding and dipole-dipole interactions also effect bonding (par. 21). 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, Welch’s adjacent diamond particle layers are in contact with each other via Coulomb and van der Waal’s forces.
Regarding claims 10 and 12, although Welch does not discuss the color or luster of his coating, as noted above, he does teach that the coating may comprise multiple layers of diamond nanoparticles stacked in the height direction. 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, Welch’s coating film, which comprises stacked diamond nanoparticle layers, has a “metal color” with a color tone that is based on the number of diamond particle layers. To the extent that the instantly disclosed/claimed coating made up of stacked layers of diamond nanoparticles demonstrates a “metallic luster”, Welch’s stacked diamond nanoparticle coating does too.
The rejections made under 35 U.S.C. 102(a)(1) in the previous Office Action are withdrawn in view of Applicant’s amendment, filed June 9, 2026.
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 1, 2, 5-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Welch. Claims 6-9 are also rejected under 35 U.S.C. 103 as being unpatentable over Welch, as applied to claim 1 above. Evidence for claim 5 is provided by Luo.
Regarding claims 1, 2, 5, 10, and 12, as discussed above, Welch teaches multilayer nanoparticle coatings, including a coating that explicitly may include multiple, stacked layers of nanodiamond particles (par. 53), that are considered herein to anticipate the requirements of claims 1, 2, 5, 10, and 12.
To the extent that Welch might be considered to differ from the current invention in that he does not explicitly exemplify a coating with one of the stacked structures of Figures 2C-E that is explicitly made up of alternating positively- and negatively-charged diamond particle layers, it is noted that it would have been obvious to one of ordinary skill in the art to make such a coating because Welch explicitly teaches that his coatings are made up of alternating positively- and negatively-charged particle layers, which may all include the same type of particles and which may be nanodiamonds (Fig. 2C; par. 23, 23, 28, 53). Welch’s all-diamond coating films meet the requirements of claims 2, 5, 10, and 12 for the reasons discussed above.
Regarding claims 6-9, although Welch does not discuss the roughness of his coating, which might be considered a difference from the current invention, Welch does teach that the coating may have a thickness of 0.01 to 500 µm (i.e. 10 to 500000 nm). The instantly claimed thickness range is overlapped and rendered obvious by Welch. See MPEP 2144.05. Coatings having a thickness in the lower part of Welsh’s range, e.g. coatings with a thickness of 10 or 20 nm, necessarily have a root mean square roughness of less than 50 nm. Additionally, it would have been obvious to one of ordinary skill in the art to configure Welsh’s entire coating to have a thickness in the lower part of the taught range, including, for example, configuring the entire coating to have a thickness of 10 or 20 or 30 nm, and, therefore configuring the coating such that it includes no regions that have thicknesses of greater than 10 or 20 or 30 nm (i.e. and, therefore, configuring the coating to have no regions that would contribute to a root mean square roughness of greater than 50 nm) because Welch explicitly teaches such thickness values to be appropriate for his product.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Welch, as applied above, and further in view of Jansen (US Pat. No. 5,204,210).
Regarding claim 13, the teachings of Welch differ from the current invention in that his diamond nanoparticle coating is not disclosed to be deposited on a silicon substrate. However, Welch does disclose that the coating is protective, may be applied to non-metallic bodies, and may be used in numerous application fields (par. 27, 34, 42). 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 Welch’s diamond particle coating to a silicon substrate because Welch 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.
The rejections made under 35 U.S.C. 103 in the previous Office Action are withdrawn in view of Applicant’s amendment, filed June 9, 2026.
Response to Arguments
Applicant’s arguments filed June 9, 2026 have been fully considered but are moot because they do not apply to the current rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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