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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8-6-2025 has been entered.
Claims 1 and 14 were amended. Claims 4, 15, and 17 were cancelled. Claims 1-3, 5-14, 16, and 18-20 are pending with Claims 5-12, and 16 withdrawn. Claims 1-3, 13-14, and 18-20 are examined in this action.
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 1-3, 13, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,465,603 to Anthony in view of US 4,462,242 to Morgenthaler.
In re Claim 1, Anthony teaches a tool (see Figs. 1-3) with a through hole (see Figs. 1-3, illustrating a die with a hole) comprising:
a diamond component (see Figs. 1-3, #11);
when an entire length of the diamond component as a whole along a center line of the through hole is denoted as L1 (see Figs. 1-12, teaching #11 having a length – see also Col. 2, ll. 52 – Col. 3, ll. 26 teaching a thickness of .3-10 millimeters), and the maximum value of a diameter of a circle is denoted as M1 (see Fig. 1-2, in view of Col. 3, ll. 12-26, the diameter measurement as in the case of a rounded shape, is preferably about 1-20 millimeters), wherein the circle has the same area as a region surrounded by an outer edge of the diamond component in a cross section having the center line as a normal line, the ratio L1/M1 between L1 and M1 being in a range from 0.886 to 1.329 (see Figs 1-2, the outer surfaces of #11 surround the circular aperture), the ratio of L1/M1 between L1 and M1 being in a range from 0.886 to 1.329 (see Col. 3, ll. 12-26, teaching a range of thickness of between 0.3 mm to 10 mm and a diameter of 1-20 mm – if the structure has a diameter of any one of whole numbers 1.0-10 mm with a corresponding thickness of 1.0 to 10mm, the ratio would be 1:1); and
wherein the base is a sintered alloy or stainless steel, or wherein the diamond component contains impurity atoms at a concentration of 2.1 ppm or more and 2250 ppm or less (see Col. 3, ll. 65 – Col. 4, ll. 12 teaching: The preferred process in accordance with the principles of the present invention maintains the amount of impurities at a very low level. Preferably, the diamond film utilized for the wire die of the present invention consist entirely of diamond. Hydrogen, oxygen, and nitrogen are not considered impurities or intentional additives and are desirable present in amounts greater than the 1 part per million level. Additional ingredients in the form of impurities and intentional additives are preferably present in amounts less than 4000 parts per million by weight, and more preferably less than 100 parts per million. Hence, it is preferable to nucleate the diamond crystals during the deposition process by a technique which does not add deleterious materials to the substrate) (Emphasis added). (See also and Col. 5, ll. 36 – Col. 6, ll. 45).
MPEP 2131.03, I, states “A specific example in the prior art which is within a clamed range anticipates the range.” One of ordinary skill understands “less than 100 parts per million,” is a specific example that is withing the claimed range of 2.1ppm to 2250 ppm. As such, Anthony anticipates the claimed range.
Alternatively, MPEP 2131.03, II, states: When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
In ClearValue, the claim at issue was directed to a process of clarifying water with alkalinity below 50 ppm, whereas the prior art taught that the same process works for systems with alkalinity of 150 ppm or less. In holding the claim anticipated, the court observed that "there is no allegation of criticality or any evidence demonstrating any difference across the range." Id. at 1345, 101 USPQ2d at 1777.
This case is similar to ClearValue. Applicant claims a range of the diamond component containing impurity atoms at a concentration of 2.1 ppm or more and 2250 ppm or less. Anthony teaches a range of impurities of between less than 100 ppm and less than 4000 ppm. In other words, the prior art teaches a larger range that largely overlaps with Applicant’s claimed range.
Applicant’s claims a range of 2,247.9 units (2250-2.1) and the prior art overlaps 2,150 of those units (2250-100), or 95.6 percent of the range in the claim. According to Anthony, “the improved wire die of the present invention produced from a CVD substrate having improved optical properties, results in a wire die having low impurities with enhanced thermal conductivity, low fracture resistance, and improved toughness and resistance to diamond grain pullout.” (See Anthony, Col. 2, ll. 8-12). Additionally, Anthony states “Lower levels of impurities tend to favor desirable wire die properties of toughness and wear resistance.” (See Anthony, Col. 6, ll. 38-40).
MPEP 2144.05 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. Here, if it is argued that the range of Anthony does not anticipate Applicant’s claimed range, Anthony renders obvious the range of Claim 1.
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) (see MPEP 2144.05, I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.") See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0);.
Here, the range of 2.1ppm-2250 ppm overlaps with the prior art range of less than 100 ppm and less than 4000ppm. According to Anthony, “the improved wire die of the present invention produced from a CVD substrate having improved optical properties, results in a wire die having low impurities with enhanced thermal conductivity, low fracture resistance, and improved toughness and resistance to diamond grain pullout.” (See Anthony, Col. 2, ll. 8-12). Additionally, Anthony states “Lower levels of impurities tend to favor desirable wire die properties of toughness and wear resistance.” (See Anthony, Col. 6, ll. 38-40).
Here, Anthony teaches that that low level of impurities improve wire dies by improving toughness. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) see MPEP 2144.05, II, A.
Here Antony teaches the range of less than 4000ppm and less than 100ppm and that lower levels of impurities provide improved toughness. "[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) (see MPEP 2144.05, II, A. Here the general conditions of the claim are disclosed in the prior art and Applicants discovery of the optimum or workable ranges through routine experimentation are obvious.
Anthony does not teach a base holding a diamond component.
Morgenthaler teaches in the die art to provide a base for holding a diamond component (see Morgenthaler, Fig. 1, #14), the base made of stainless steel (see Morgenthaler, Col. 2, ll. 60-66), or tungsten carbide which is a sintered alloy. In the same field of invention, dies, it would have been obvious to one of ordinary skill in the art to hold the diamond die of Anthony in a base, as taught by Morgenthaler Fig. 1, #14. Doing so secures the die in a proper location / position in order to use the die.
In re Claim 2, modified Anthony, in re Claim 1, teaches the through hole according to claim 1, wherein L1 is in a range from 0.5mm to 50 mm (see Anthony, Col. 3, ll. 24-36, teaching a range of thickness of between 0.4 mm to 10 mm); and M1 is in a range from 0.5mm to 56mm (see Anthony, Col. 3, ll. 24-36, teaching a range of diameter between 0.030 mm to 5mm).
In re Claim 3, modified Anthony, in re Claim 1, teaches wherein the minimum diameter of the through hole is 0.001 mm or more and 15 mm or less (see Anthony, Col. 3, ll. 24-26, teaching a diameter of .030 mm to 5.0 mm).
In re Claim 13, modified Anthony, in re Claim 1, teaches wherein the tool with the through hole is a die, a water jet nozzle, or a wire guide (see Anthony abstract, teaching a diamond wire-drawing die).
In re Claim 18, modified Anthony, in re Claim 1, teaches wherein the diamond component includes a first region (see Anthony, Fig. 1, #17 is a first region) located in a vertically center position within the diamond component (see Anthony, Fig. 1 showing #17 in a centered position, vertically), wherein at the first region the through hole has a minimum diameter (see Anthony, Col. 3, ll. 24-36, teaching #12/17 having a diameter. The Examiner notes that #17 in Anthony has a one diameter, and that a single diameter is the minimum diameter of the region).
In re Claim 19, modified Anthony, in re Claim 1, teaches wherein the diamond component contains impurity atoms at a concentration of 2.1 ppm or more and 28.4 ppm or less.
According to Applicant’s Table 1, sample 3, 2.1ppm of impurity atoms, has a wear rate of 0.011 µm/mm. Sample 5, 28.4 ppm of impurity atoms, has a wear rate of 0.013 µm/mm. However, Sample 10, 1989 ppm, which is squarely within the prior art range of less than 100 ppm and less than 4000ppm, has a wear rate of 0.012 µm/mm, right between the wear rate of Sample 3 and Sample 5.
Here, the range of 2.1ppm – 28.4 ppm does not overlap with the prior art but is close to the range of less than 100ppm and less than 4000ppm. The ranges are so close that prima facie one skilled in the art would have expected them to have the same properties. In fact, Applicant’s disclosure indicates that samples 3 and 5 as compared to sample 10, which is dramatically outside the claimed range, have essentially the same wear rate - all within a range of 0.011-0.013 ppm. As such, the ranges are so close that prima facie one skilled in the art would have expected them to have the same properties.
Claims 14 and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 5,363,687 to Anthony.
In re Claim 14, Anthony teaches a diamond component comprising a through hole (see Figs. 1-2, #11),
wherein diamond component has a length along a center line of the through hole, (see Figs. 1-12, teaching #11 having a length – see also Col. 2, ll. 52 – Col. 3, ll. 26 teaching a thickness of .3-10 millimeters), and when the entire length of the diamond component as a whole along the center line of the through hole is denoted as L1 (see Figs. 1-2, #11 the thickness is “L1”) and the maximum value of a diameter of a circle is denoted as M1 (see Fig. 1-2, Col. 2, ll. 52 -illustrating a diameter of the circular and Col. 3, ll. 12-26, the diameter measurement as in the case of a rounded shape, is preferably about 1-20 millimeters), wherein the circle has the same area as a region surrounded by an outer edge of the diamond component in a cross section having the center line as a normal line (see Figs 1-2, the outer surfaces of #11 surround the circular aperture), the ratio of L1/M1 between L1 and M1 being in a range from 0.886 to 1.329 (see Col. 3, ll. 12-26, teaching a range of thickness of between 0.3 mm to 10 mm and a diameter of 1-20 mm – if the structure has a diameter of 1.0-10 mm with a corresponding thickness of 1.0 to 10mm, the ratio would be 1:1),
wherein the diamond component contains impurity atoms at a concentration of 2.1 ppm or more and 2250 ppm or less (see Col. 3, ll. 65 – Col. 4, ll. 12 teaching: The preferred process in accordance with the principles of the present invention maintains the amount of impurities at a very low level. Preferably, the diamond film utilized for the wire die of the present invention consist entirely of diamond. Hydrogen, oxygen, and nitrogen are not considered impurities or intentional additives and are desirable present in amounts greater than the 1 part per million level. Additional ingredients in the form of impurities and intentional additives are preferably present in amounts less than 4000 parts per million by weight, and more preferably less than 100 parts per million. Hence, it is preferable to nucleate the diamond crystals during the deposition process by a technique which does not add deleterious materials to the substrate) (Emphasis added). (See also and Col. 5, ll. 36 – Col. 6, ll. 45).
MPEP 2131.03, I, states “A specific example in the prior art which is within a clamed range anticipates the range.” One of ordinary skill understands “less than 100 parts per million,” is a specific example that is withing the claimed range of 2.1ppm to 2250 ppm. As such, Anthony anticipates the claimed range.
Alternatively, MPEP 2131.03, II, states: When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).
In ClearValue, the claim at issue was directed to a process of clarifying water with alkalinity below 50 ppm, whereas the prior art taught that the same process works for systems with alkalinity of 150 ppm or less. In holding the claim anticipated, the court observed that "there is no allegation of criticality or any evidence demonstrating any difference across the range." Id. at 1345, 101 USPQ2d at 1777.
This case is similar to ClearValue. Applicant claims a range of the diamond component containing impurity atoms at a concentration of 2.1 ppm or more and 2250 ppm or less. Anthony teaches a range of impurities of between less than 100 ppm and less than 4000 ppm. In other words, the prior art teaches a larger range that largely overlaps with Applicant’s claimed range.
Applicant’s claims a range of 2,247.9 units (2250-2.1) and the prior art overlaps 2,150 of those units (2250-100), or 95.6 percent of the range in the claim. According to Anthony, “the improved wire die of the present invention produced from a CVD substrate having improved optical properties, results in a wire die having low impurities with enhanced thermal conductivity, low fracture resistance, and improved toughness and resistance to diamond grain pullout.” (See Anthony, Col. 2, ll. 8-12). Additionally, Anthony states “Lower levels of impurities tend to favor desirable wire die properties of toughness and wear resistance.” (See Anthony, Col. 6, ll. 38-40).
MPEP 2144.05 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. Here, if it is argued that the range of Anthony does not anticipate Applicant’s claimed range, Anthony renders obvious the range of Claim 1.
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) (see MPEP 2144.05, I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.") See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0);.
Here, the range of 2.1ppm-2250 ppm overlaps with the prior art range of less than 100 ppm and less than 4000ppm. According to Anthony, “the improved wire die of the present invention produced from a CVD substrate having improved optical properties, results in a wire die having low impurities with enhanced thermal conductivity, low fracture resistance, and improved toughness and resistance to diamond grain pullout.” (See Anthony, Col. 2, ll. 8-12). Additionally, Anthony states “Lower levels of impurities tend to favor desirable wire die properties of toughness and wear resistance.” (See Anthony, Col. 6, ll. 38-40).
Here, Anthony teaches that that low level of impurities improve wire dies by improving toughness. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) see MPEP 2144.05, II, A.
Here Antony teaches the range of less than 4000ppm and less than 100ppm and that lower levels of impurities provide improved toughness. "[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) (see MPEP 2144.05, II, A. Here the general conditions of the claim are disclosed in the prior art and Applicants discovery of the optimum or workable ranges through routine experimentation are obvious.
In re Claim 20, modified Anthony, in re Claim 14, teaches wherein the diamond component contains impurity atoms at a concentration of 2.1 ppm or more and 28.4 ppm or less.
According to Applicant’s Table 1, sample 3, 2.1ppm of impurity atoms, has a wear rate of 0.011 µm/mm. Sample 5, 28.4 ppm of impurity atoms, has a wear rate of 0.013 µm/mm. However, Sample 10, 1989 ppm, has a wear rate of 0.012 µm/mm, right between the wear rate of Sample 3 and Sample 5.
Here, the range of 2.1ppm – 28.4 ppm does not overlap with the prior art but is close to the range of less than 100ppm to less than 4000ppm. The ranges are so close that prima facie one skilled in the art would have expected them to have the same properties. In fact, Applicant’s disclosure indicates that samples 3 and 5 as compared to sample 10, which is dramatically outside the claimed range, have essentially the same wear rate - all within a range of 0.011-0.013 ppm. As such, the ranges are so close that prima facie one skilled in the art would have expected them to have the same properties.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 13, and 18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
US 5,465,603 to Anthony teaches thicknesses and diameters ranges that fall within Applicant’s claimed range as well as a desire to provide a diamond with less than 4000 ppm in impurities and less than 100ppm in impurities– see discussion/rejection above. As discussed above, a disclosure of Anthony anticipates or renders obvious Applicant’s claimed ranges.
Conclusion
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/JONATHAN G RILEY/Primary Examiner, Art Unit 3724