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 .
The amendment of November 14, 2025 has been received and entered. With the entry of the amendment, claims 15 and 18 are canceled, and claims 1-14, 16-17, 19-20 and new claims 21-22 are pending for examination.
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, “suspending the diamond grains in water including a glass surface” is vague and indefinite as to what is intended. Is this “glass surface” supposed to be the substrate on which the suspension is adhered (note claim 9)? Is it to be the material holding the suspension? Something else? For the purpose of examination, providing a glass surface in contact with the suspension (including containing a glass substrate) is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
Claim Objections
Claim 22 is objected to because of the following informalities: claim 22, second from last line, “from the substrate separating the removed” should be “from the substrate and separating the removed” as in claim 1 for proper grammar. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-6, 8-10, 12-14, 16-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al (US 2008/0118966) in view of WO 2020/150341 (hereinafter ‘341).
Claim 1: Chang teaches a method of making luminescent diamond (note the abstract). The process includes providing a volume of diamond grains/particles, and forming a suspension by suspending the diamond grains in a liquid (note 0010, 0027, 0028, 0030, for example, the diamonds can be type Ib, for example). The suspension is adhered to a substrate, with a controlling thickness of the suspension of the substrate (note 0010, 0027, 0028, 0030, note the controlled coating thicknesses). The suspension on the substrate is then irradiated with an ion beam to help obtain a high density of color centers in the particles (note 0010, 0022, where irradiation is not prevented by the claims as worded). Thereafter the irradiation treated diamond material is further annealed (heat treated) at a temperature of 600-1000 degrees C, overlapping the claimed range (note 0013, which can be provided in another chamber of the ion beam device, where the heat treating causes vacancies left behind from annealing to migrate to nitrogen atoms found naturally in the diamond, note 0022), and the resulting diamonds can be luminescent, including photoluminescent (note 0015). Additionally, there can be a further heat treating process at 300-600 degrees C, a temperature in the claimed range, to oxidize the diamond particles (note 0009). It is understood that for use the diamond particles would have to be removed from the substrate after the processing (note 0023-0024, 0031, 0032), and as well, in an example, the diamond is applied to a silicon substrate from suspension, irradiated, and heat treated, and then Chang indicates separation with centrifugation and rinsing (note 0027).
(A) As to providing the diamond grains used for forming the suspension being provided by subjecting a volume of precursor diamond grains to high pressure/high temperature conditions in a pressure cell, thereby forming diamond grains with luminescent centers, where the high pressure/high temperature conditions are from about 1300 degrees C to about 2500 degrees C and from about 3.0 GPa to about 10 GPa,
‘341 teaches how luminescent nanodiamonds are known, which emit light when excited by a light source within a desired wavelength (note 0002), where it describes how such diamonds can be formed by subjecting a volume of precursor diamond grains to high pressure/high temperature conditions in a pressure cell, thereby forming diamond grains with luminescent centers (note 0018-0019, 0023, 0032, claims 1, 4, 5), where the high pressure/high temperature conditions are from about 1300 degrees C to 2200 degrees C and from about 5.0 GPa to about 10 GPa, in the claimed ranges (note 0019). It is noted that the diamonds used can be consistent with that found in diamonds designated type Ib (note 0019).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chang to use diamond grains formed by subjecting a volume of precursor diamond grains to high pressure/high temperature conditions in a pressure cell, where the high pressure/high temperature conditions are from about 1300 degrees C to 2200 degrees C and from about 5.0 GPa to about 10 GPa, thereby forming diamond grains with luminescent centers as suggested by ‘341 with an expectation of forming a desirable luminescent diamond particles, since Chang desires to from luminescent diamond particles, and teaches to use diamond grains that can be of sizes of 1 nm to 1 mm (note 0020), including Ib diamonds (note 0027), and ‘341 teaches how to make nanodiamonds for use in the form of luminescent nanodiamonds which allow light emission when excited by a desired wavelength, thus providing desirable diamond particles for use that already have a degree of luminescence, and can include type Ib diamonds.
(B) As to heat treating the suspension while it is on the substrate at a temperature not exceeding 650 as claimed, (a) Chang provides applying the suspension on a substrate and then processing through irradiation treatment while on the substrate (note 0013-0014, where this process allows mass producing, note 0021), and notes that the ion device can also have a heating source in a separate chamber for heating after the irradiation (note 0013), and at some point the diamonds would be removed from the substrate for use. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chang in view of ‘341 to specifically provide that the heating occurs while the suspension in on the substrate with an expectation of predictably acceptable results, since as discussed by In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, and here one would have a heat treatment step and a removal step, and by providing the heat treatment before removal, the material is efficiently provide to the heat treatment area just as for the irradiation. (b) As to the temperature, the 600-1000 degrees C heat treatment provides a temperature range overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range, noting In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Furthermore, such a heat treatment is understood to act to change the oxygen terminations on diamond particles and increase the photoluminescence intensity of the diamond grains, as the temperature would be in the range indicated by applicant, for example, and the action described for 0022 of Chang to help give high density of color centers, and the annealing affecting vacancies. Alternatively, the further oxidizing heat treatment of 300-600 degrees C of Chang also gives a heat treatment in the claimed temperature range, that as well would also be optimized from within this range, and again is understood to act to change the oxygen terminations on diamond particles and increase the photoluminescence intensity of the diamond grains, as the temperature would be in the range indicated by applicant for providing such an effect. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
(C) As to removing the diamond particles for the substrate and separating the removed diamond particles by grain size, as discussed above, it would be understood to be suggested or taught from Chang to remove the diamond particles from the substrate after the processing for use. As to separating the removed diamond particles by grain size, Chang describes how it can be desired to use the diamond particles for biological system tracking, etc. (note 0002-0003, 0015). Additionally, ‘341 describes using luminescent diamond particles/grains for biological tracking, etc. (note 0002, 0034), where it is described that after forming luminescent diamonds, they may be sized for use in biological applicants, including reducing to a desired size range, and where sorting processes are also described to select desired particles (note 0034).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chang in view of ‘341 to therefore specifically separate the removed diamond particles by grain size so as to provide the desired particles for use in biological applications, since Chang and ‘341 indicate the desire to use the diamond particles for biological applications, and ‘341 indicates sizing formed luminescent diamond particles for biological applications would be conventional, and by sorting/separating the formed diamond particles by grain size, one would be able to provide the desired size material for the specific process. Note as well, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), suggesting to select/separate the specific size particles desired.
Claim 2: as to the luminescent centers including nitrogen vacancies, this is indicated by ‘341 (note 0032, 0026), giving suggested results when providing the nanodiamonds using the ‘341 process.
Claim 3: As to the liquid including water, Chang indicates that a suspension can be made with water as the liquid (called a solution but contains the diamond particles in water, so also a suspension) (note 0027).
Claims 4, 5: as to the liquid also including a surface tension suppressant, such as alcohol, Chang also notes that alcohols can be used for forming the suspension (note 0028, 0030), including an example of 95 % ethanol as the suspending liquid (note 0030), which would allow for other material to be present, and since both water (as discussed for claim 3) can be used as the liquid and alcohol also used, it would be suggested to one of ordinary skill in the art that a combination of water and alcohol (ethanol) can be used as a liquid medium with an expectation of similar results.
Claim 6: as to the liquid being 100% alcohol, since Chang indicates that the suspension liquid can be simply isopropyl alcohol (alcohol) (note 0028), the use of 100% ethanol would be understood to be predictably acceptable. For other amounts, when using water and alcohol as suggested for claims 4, 5 above, it would have been obvious to optimize the amount of each used for the best suspension, giving a value between 10-100 % by weight. Note MPEP 2144.05(II)(A).
Claim 8-10: As to the thickness of the suspension, when Chang indicates that controlled thickness of coating can be applied, including examples of 50 microns, about 1 micron (in the range of claims 8-10) and about 0.3 microns (in the range of claims 8-9) (note 0027, 0028, 0030), and since it would be desired to apply a controlled thickness, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the thickness used to get the best results for the specific product to be made, giving a result in the claimed range of claims 8-10. Note MPEP 2144.05(II)(A).
Claim 12: Chang provides that adhering the suspension can include drying the suspension (note 0027, dried in air, 0028, heat dried).
Claim 13: Chang indicates that the material can be applied by dip coating (immersion) (note 0028, immersion or dip coating as part of an electrophoretic process, for example).
Claim 14: Chang indicates that the drying can be by air drying and before heat treating (note 0027), and the air drying having no temperature specifically required, which would suggest room temperature can be used as not requiring an additional cost for heating, where the liquid can be water (note 0027), so the drying would be at least suggested to be below the boiling point of the liquid.
Claim 16-17: As to the heat treatment temperature, Chang’s heat treatment at 300-600 degrees C (as discussed for claim 1 above) would overlap this range, and it would have been obvious to optimize from this range giving a value in the claimed range. Note In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Note as worded, it is not prevented in the claims from other heat treatments being performed at other temperatures as long as there is also a heat treatment meeting the claimed temperature. Additionally, for claim 16, the 600-1000 degree C range also overlaps with what is claimed, and would be obvious to optimize from, giving a value in the claimed range.
Claims 19-20: As to the heat treatment time, Chang gives an example heat treatment of 2 hours (in the range of claim 19) (note 0022). Furthermore, as discussed for MPEP 2144.05(II)(A), “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”, and therefore, it would have been obvious to one of ordinary skill in the art to optimize the temperature, giving a result in the claimed range.
Claims 7 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Chang in view of ‘341 as applied to claims 1-6, 8-10, 12-14, 16-17 and 19-20 above, and further in view of Neogi et al (US 2010/0068503).
Claim 7: As to a glass substrate, Chang describes using a silicon wafer (note 0027, 0028) or copper (note 0030).
Neogi teaches a method of providing a diamond coating on an object to improve optical and physical characteristics (note 0002). The process includes providing nanodiamond particles/grains that can be made by various methods (note 0012-0013, 0019-0022). A suspension is formed by suspending the nanodiamond grains in a liquid (note 0037, 0054). The suspension is adhered to a substrate and a thickness is controlled of the suspension on the substrate (where the suspension is applied/adhered to the substrate and then is rinsed/dried which would remove solvent/liquid and thereby broadly control the thickness by reducing the thickness due to loss of liquid, note 0038-0042, 0055-0058, 0013, where the drying also meets the requirements of claim 12). Neogi would suggest that the substrate can be glass (note 0018).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chang in view of ‘341 to use a glass substrate as suggested by Neogi with an expectation of predictably acceptable results, since Chang indicates how a suspension of diamond can be applied to a substrate to be further treated, and Neogi indicates that a substrate diamonds can be applied to in suspension would be glass, which would be a material that would be generally expected to withstand temperatures described by Chang giving the conventional melting/softening temperatures for glass.
Claim 22:As discussed above for claims 1 and 7, etc., Chang in view of ‘341 and Neogi would suggest the features of claim 22, where ‘341 would suggest how the precursor diamond grains can initially be provided in a pressure cell and treated at the temperatures and pressures claimed (as discussed for claim 1 above), where the precursor grains can be natural (note 0019) and of an average grain size of 10-50 microns (note 0019). As to the suspension of diamond grains in water, this is provided by Chang (note 0027, for example, and discussion for claims 1, 3). As to including a glass surface, noting the 35 USC 112 rejection above, and understanding the substrate referred to, this is suggested by Neogi as discussed for claim 7 above, where as glass, would have a glass surface. As to the applying to the surface and controlling the thickness, this would be suggested as discussed for claim 1 above, where as to concentration, Chang notes 0.035 g/ml, understood to be in the claimed range (note 0030), or 0.1 g/ml of water, understood to be 10 wt%, in the claimed range (note 0027). As to the thickness, Chang indicates that controlled thickness of coating can be applied, including examples of 50 microns, about 1 micron and about 0.3 microns ( (note 0027, 0028, 0030), and since it would be desired to apply a controlled thickness, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the thickness used to get the best results for the specific product to be made, giving a result in the claimed range. Note MPEP 2144.05(II)(A). As to the heat treatment temperature and time, this would be suggested as discussed for claims 16-17 and 19-20 above, and understood to change oxygen terminations, increase photoluminescence as discussed for claim 1 above. The removing the articles from the substrate and separating the removed diamond particles by grain size would be suggested as discussed for claim 1 above.
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Chang in view of ‘341 as applied to claims 1-6, 8-10, 12-14, 16-17 and 19-20 above, and further in view of Bertelo et al (US 2016/0233825).
Claim 11 and 13 (optionally): As to methods of coating the suspension (claim 13) and controlling thickness including removing material that exceeds a threshold thickness (claim 11), Chang describes coating with the suspension to provide a desired thickness (note 0027, 0028, 0030).
Bertelo describes how a nanodiamond suspension can be formed and applied to a substrate, and then drying (note the abstract). It is described that that the suspension can be applied to form a uniform coating by various methods, including dip coating and a manual blade coating where the suspension is applied to the to surface of the substrate (solar cell) and the blade is drawn across the suspension to form the suspension to a desired thickness (note 0025), where the dry thickness can be 1-100 microns (note 0039). Bertelo also notes that concentration of particles in the suspension can also be adjusted to control thickness/coverage (note 0039).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chang in view of ‘341 to use an application method such as dip coating as suggested by Bertelo to form a uniform coating, since Chang wants to apply a diamond suspension coating to a substrate, and Bertelo teaches that such a method would be a known way to apply a dip coating, giving the features of claim 13. Furthermore, Bertelo would also suggest manual blade coating as a form of application of a diamond suspension coating, which would therefore be suggested with the process of Chang in view of ‘341 for the same reasons as dip coating as discussed above, and this would further suggest removing material over a desired applied thickness, since the blade would remove excess as drawn across the suspension.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Chang in view of ‘341 as applied to claims 1-6, 8-10, 12-14, 16-17 and 19-20 above, and further in view of Anthony et al (US 2005/0260935).
Claim 21: As to the pressure cell being configured to impose a differential or asymmetric pressure on the precursor diamond grains, ‘341 indicates that the pressure cell (container/can) would be subjected to high pressure using a HPHT consolidation press (note 0019).
Anthony describes a HPHT apparatus that can treat diamonds (note 0020, 0027), where pressure can be applied at 20-80 kilobars (2-8 GPa) and temperature of about 1500-3500 degrees C (note 0036), where it is indicated that the apparatus/cell has radial pressure transmitting medium layer and axial pressure transmitting medium layer for the cell that would hold the diamonds (note 0030).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chang in view of ‘341 to provide that the pressure cell has axial pressure transmitting medium layers and radial pressure transmitting medium layers as suggested by Anthony and for the overall pressure to optimize each of the radial pressure and axial pressure transmitting medium layer to provide a desirable amount of pressure, which when the radial pressure and axial pressure are different would give asymmetric pressure, for example, since ‘341 indicates to use HPHT consolidation press to give high pressure, and Anthony teaches a HPHT press/cell to treat diamonds with overlapping temperature and pressure to ‘341 would also take into account a axial pressure transmitting medium layer and radial pressure transmitting medium layer, so one would be suggested to control and optimize the pressure from each.
Park et al (US 2005/0196547) also notes a process with heat treatment for making colored diamonds (note the abstract).
Response to Arguments
Applicant's arguments filed November 14, 2025 have been fully considered.
New rejections have been provided due to the amendments to the claims. Note the new references to Chang and Anthony.
As to the 35 USC 103 rejections, it is argued that Neogi and the other references do not have or suggest the removal of the diamonds particles from the substrate.
The Examiner notes these arguments, and due to the amendments as to the issue of removal of diamond particles, the new primary reference to Chang has been provided. The new combinations of references provides the features now claimed. Therefore, the rejections above are maintained.
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.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718