Continued Examination Under 37 CFR 1.114
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/12/2026 has been entered. Claims 1-16 in the application remain pending. Claim 1 was amended. Claims 7-16 remain withdrawn from consideration.
2. The text of those sections of Title 35, U.S.C. code not included in this action can be found in a prior Office Action.
Notice of Pre-AIA or AIA Status
3. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
4. As regards to claim 1, (12/02/2025) claim 1, line 3 recited “whose surface is” and line 7 recited “and face toward” which are not new recitations and should not be underlined.
Applicant is reminded of proper amendment procedures. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. See MPEP 714.
Claim Rejections
5. The claim rejections under AIA 35 U.S.C. 112(a), of claims 1-6 are withdrawn per amendments of claim 1.
Claim Rejections - 35 USC § 102
6. Claim 1 is rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Yamazaki et al. (EP 0359567 A2) hereinafter Yamazaki.
Regarding claim 1, the recitation “for diamond deposition”, this recitation is an intended use which does not patentably distinguish over Yamazaki since Yamazaki meets all the structural elements of the claim and is capable of being used for diamond deposition, if so desired, and does not add structure to the claim. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Therefore, Examiner is disregarding any structural limitations to the apparatus based on the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Yamazaki discloses a diamond manufacturing apparatus (abs; col 1, ln 14-57; fig 1-5B), comprising:
a growth base 1 including a top portion (see fig 1, 2B - right side) and a bottom portion (see fig 1, 2B - left side) opposite to each other, wherein the top portion (see fig 1, 2B - right side) whose surface is a growth surface 45 that is concave (see fig 2B) toward the bottom portion whose surface is capable of not being a surface to grow diamond (see fig 1, 2B) (col 3, ln 39-col 5, ln 11; fig 1-5B; clm 1 & 11); and
an electric field device 50 (13n+13’n), wherein a plurality of electric field lines in an electric field capable of being used for diamond deposition that is generated by the electric field device 50 (13n+13’n) are substantially perpendicular (see fig 1, go from left to right and vice versa) to and face toward (see fig 1) the growth surface 45 (see fig 1, planar up and down) (col 3, ln 39-col 5, ln 11; fig 1-5B; clm 1-6 & 11).
Claim Rejections - 35 USC § 103
7. Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki as applied to claim 1 above.
As regards to claim 2, Yamazaki discloses a diamond manufacturing apparatus (abs; col 1, ln 14-57; fig 1-5B), wherein the growth surface 45 has a circular contour (see fig 2B), and a diameter of the growth surface 45 can be measured in mm (col 3, ln 39-col 5, ln 11; fig 1-5B; clm 1-6 & 11), however Yamazaki does not disclose is between 75 mm and 120 mm.
Although Yamazaki does not explicitly disclose the claimed diameter, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Yamazaki to have the diameter recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the diameter (relative dimensions) is considered engineering aspects of an apparatus, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the relative dimensions of the diameter of the growth surface.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
As regards to claim 3, Yamazaki discloses a diamond manufacturing apparatus (abs; col 1, ln 14-57; fig 1-5B), wherein a middle part of the growth surface 45 is a curved surface (see fig 2B), a surrounding part of the growth surface 45 is a curved surface (see fig 2B), the middle part of the growth surface 45 has a circular contour (see fig 2B), and a diameter of the middle part can be measured in mm (col 3, ln 39-col 5, ln 11; fig 1-5B; clm 1-6 & 11), however Yamazaki does not disclose is between 45 mm and 55 mm or a flat surface
Although Yamazaki does not explicitly disclose the claimed diameter, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Yamazaki to have the diameter recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the diameter (relative dimensions) is considered engineering aspects of an apparatus, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the relative dimensions of the diameter of the growth surface.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Although Yamazaki does not explicitly disclose the claimed shape & configuration, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of Yamazaki to have the shape & configuration recited in the claim is not expected to alter the operation of the device in a patentably distinct way as the shape & configuration is considered engineering aspects of a device, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the shape & configuration of the middle part of the growth surface.
Where the configuration of the claimed subject matter is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed subject matter was significant is not patent eligible subject matter. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
As regards to claim 4, Yamazaki discloses a diamond manufacturing apparatus (abs; col 1, ln 14-57; fig 1-5B), wherein the diamond manufacturing apparatus further comprises a chamber body 9 with a flat inner wall, the growth base 1 is disposed in the chamber body 9, and a diameter of the chamber body 9 can be measured in mm (col 3, ln 39-col 5, ln 11; fig 1-5B; clm 1-6 & 11), however Yamazaki does not disclose is between 150 mm and 250 mm or a circular inner wall.
Although Yamazaki does not explicitly disclose the claimed diameter, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Yamazaki to have the diameter recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the diameter (relative dimensions) is considered engineering aspects of an apparatus, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the relative dimensions of the diameter of the growth surface.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Although Yamazaki does not explicitly disclose the claimed shape & configuration, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of Yamazaki to have the shape & configuration recited in the claim is not expected to alter the operation of the device in a patentably distinct way as the shape & configuration is considered engineering aspects of a device, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the shape & configuration of the inner wall.
Where the configuration of the claimed subject matter is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed subject matter was significant is not patent eligible subject matter. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
As regards to claim 5, Yamazaki discloses a diamond manufacturing apparatus (abs; col 1, ln 14-57; fig 1-5B), wherein the growth surface 45 has a circular contour (see fig 2B), the diamond manufacturing apparatus further comprises a chamber body 9 with a flat inner wall, the growth base 1 is disposed in the chamber body 9, and a ratio of a diameter of the growth surface 45 to a diameter of the chamber body can be measured (col 3, ln 39-col 5, ln 11; fig 1-5B; clm 1-6 & 11), however Yamazaki does not disclose is greater than or equal to 50% or a circular inner wall.
Although Yamazaki does not explicitly disclose the claimed ratio of diameters, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Yamazaki to have the ratio of diameters recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the ratio of diameters (relative dimensions) is considered engineering aspects of an apparatus, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the relative dimensions of the ratio of diameters.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Although Yamazaki does not explicitly disclose the claimed shape & configuration, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of Yamazaki to have the shape & configuration recited in the claim is not expected to alter the operation of the device in a patentably distinct way as the shape & configuration is considered engineering aspects of a device, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the shape & configuration of the inner wall.
Where the configuration of the claimed subject matter is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed subject matter was significant is not patent eligible subject matter. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
8. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki as applied to claim 1 above, and further in view of Hemley (US 2007/0157875 A1) hereinafter Hemley.
As regards to claim 6, Yamazaki discloses a diamond manufacturing apparatus (abs; col 1, ln 14-57; fig 1-5B), wherein the growth base 1 is made of a material (col 1, ln 41-col 5, ln 11; fig 1-5B; clm 1-6 & 11), however Yamazaki does not disclose including molybdenum.
Hemley discloses a diamond manufacturing apparatus (abs; fig 1-5), comprising a growth base/heat sink holder/stage that is made of a material including molybdenum ([0020]; [0030]-[0037]; [0060]; [0065]-[0068]; [0082]; fig 1-5; clm 1-2, 7-8, 12-13, 17-18 & 22-23). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include wherein the growth base is made of a material including molybdenum in the apparatus of Yamazaki, because Hemley teaches the use of a growth base/heat sink holder/stage that is made of a material including molybdenum to minimize temperature gradients across the growth surface of the diamond (e.g., to less than about 20ºC) ([0030]-[0037]).
Response to Arguments
9. Applicant should have listed claims 7-16 in the claims filed and listed as withdrawn, rather than omitting claims 7-16, in the listing of claims presented with this amendment.
10. Applicant's arguments filed 03/12/2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
(a) According to claim 1, the present application has at least the technical features as follows: (a) a growth base including a top portion and a bottom portion opposite to each other, wherein the top portion whose surface is a growth surface that is concave toward the bottom portion, and a plurality of electric field lines in an electric field for diamond deposition that is generated by the electric field device are substantially perpendicular to and face toward the growth surface. The present application is distinguishable from the conventional method, which is unable to allow an edge of the planar growth base and the electric field lines at the corresponding position to be perpendicular (see paragraph [0018]). The convention method results in the formation of black graphite at the edge. Therefore, the present application defines that: (1) a top portion and a bottom portion are opposite each other to form a growth base; (2) the surface of the top portion is a growth surface and is concave toward the bottom portion; (3) a plurality of electric field lines in an electric field for diamond deposition that is generated by the electric field device are substantially perpendicular to and face toward the growth surface. In view of the purpose of the present application, the electric field lines are perpendicular to and face toward the concave portion, which is the top portion of the growth base. And the above is for deposit the diamond on a growth base. Yamazaki fails to disclose the above technical feature (a). Regarding the technical feature (a): The present application relates to a diamond manufacturing apparatus comprising an electric-field device and a growth base, wherein the electric-field lines, which is for diamond deposition, generated by the electric- field device are substantially perpendicular to and face toward the growth surface. In particular, the growth surface of the growth base is defined as a concave surface that is concave toward the bottom portion of the growth base. Because the growth surface is concave toward the bottom portion, the electric field lines that are substantially perpendicular to the growth surface must be radially diffused to follow the contour of the concave surface. That is, the plurality of electric field lines are oriented toward different directions corresponding to each area of the concave surface to achieve the goal that "the electric field lines that are substantially perpendicular to the concave growth surface". As a result, the electric field lines are not parallel to each other but radially diffuse toward the concave growth surface while remaining substantially perpendicular to the local surface orientation. In contrast, Yamazaki does not disclose the electric field lines that are perpendicular to and face toward the concave portion. In Yamazaki, the electric field lines from the second electrodes, i.e., 13-1, 13-2 to 13-n are only allowed to emitted in one direction, which is parallel to each other and face toward the substrate under the structure that the second electrodes are disposed the two sides of the substrates. The electric field lines from each electrode, i.e., 13'-1, 13'-2 to 13'-n has the same characteristic features as these of 13-1, 13-2 to 13-n, which is parallel to each other. Therefore, when the substrate is one whose surface is not flat but a curve surface such as shown in Fig. 2(B) in Yamazaki, the electric field lines could not be perpendicular to the curve surface. That is to say, in Yamazaki, its electric field lines could not be substantially perpendicular to the concave growth surface". The reason that Yamazaki does not require to emit the diffused electric field lines from the second electrode pair 50 is that Yamazaki is not for process of deposition but for process of bombarding. The reasons are as follows. In Yamazaki, the plasma, formed by the first electrodes 3-1 and 3-2 with high frequency voltage, flows from upper to lower direction in chamber 8 to deposit film. Then, the second electrode pair 50 with low frequency voltage are for bombarding the substrate 1 to remove the soft material as shown in Fig. 1. That is to say, the electric field lines from the second electrodes 50 are not an electric field lines for diamond deposition. This position is supported by claim 1 of Yamazaki, which recites: A plasma processing method or apparatus for the deposition of thin films upon a substrate, characterized in that supplementary electric fields are established in order to effect bombardment of the substrate with plasma ions. Yamazaki's claim 1 indicates that the supplementary electric fields, i.e., from the second electrode 50, are for bombarding the substrate, not for depositing film. A point of distinction between the present application and Yamazaki may be summarized as follows: the present application is for depositing the substrate and forming diamond, but Yamazaki is for bombarding the substrate and forming a diamond-like hard film rather than for deposition. Further, the deposition of the present application is chemical procedure, but the bombardment of Yamazaki is physical procedure. The bombardment process does not require the ion to smoothly grow on the concave surface, but require the bombard in one single direction. The structure of Yamazaki, shown in Fig. 1, where each substrate is disposed between a pair of electrodes, such as 13-1 and 13'-1, could not radially diffuse the emitted electric field. Accordingly, it proves again that Yamazaki does not have the characteristic features of the present application, which is that: a plurality of electric field lines in an electric field for diamond deposition that is generated by the electric field device are substantially perpendicular to and face toward the growth surface. In conclusion, in Yamazaki, (a) the electric field lines are not for diamond deposition but for bombarding substrate, and (b) the electric field lines are NOT substantially perpendicular to and face toward the growth surface but are emitted in one single direction.
(b) Yamazaki fails to disclose, suggest, or teach all the limitations recited in claim 1 of the present application. Claims 2-6 depend on the independent claim 1 and should be allowable for at least the same reasons that claim 1 is allowable.
11. In response to applicant’s arguments, please consider the following comments.
(a) Regarding claim 1, the recitation “for diamond deposition”, this recitation is an intended use which does not patentably distinguish over Yamazaki since Yamazaki meets all the structural elements of the claim and is capable of being used for diamond deposition, if so desired, and does not add structure to the claim. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Therefore, Examiner is disregarding any structural limitations to the apparatus based on the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Yamazaki discloses a growth base 1 including a top portion (see fig 1, 2B - right side) and a bottom portion (see fig 1, 2B - left side) opposite to each other, wherein the top portion (see fig 1, 2B - right side) whose surface is a growth surface 45 that is concave (see fig 2B) toward the bottom portion whose surface is capable of not being a surface to grow diamond (see fig 1, 2B) (col 3, ln 39-col 5, ln 11; fig 1-5B; clm 1 & 11); and an electric field device 50 (13n+13’n), wherein a plurality of electric field lines in an electric field capable of being used for diamond deposition that is generated by the electric field device 50 (13n+13’n) are substantially perpendicular (see fig 1, go from left to right and vice versa) to and face toward (see fig 1) the growth surface 45 (see fig 1, planar up and down) (col 3, ln 39-col 5, ln 11; fig 1-5B; clm 1-6 & 11).
As clearly seen in fig 1 of Yamazaki, the plurality of electric field lines in an electric field that is generated by the electric field device 50 (13n+13’n) are substantially perpendicular (see fig 1, go from left to right and vice versa) to the growth surface 45 (see fig 1, planar up and down).
As clearly seen in fig 2B of Yamazaki, the top portion (2B - right side) is concave (see fig 2B) toward the bottom portion (see fig 1, 2B - left side).
Further, Applicants arguments are not commensurate with the breadth of the currently amended claims. Claims 1-6 are drawn to diamond manufacturing apparatus, not a diamond manufacturing method or diamond product. It appears Applicant is arguing limitations pertaining to diamond manufacturing methods and diamond products. Yamazaki meets all the structural elements of the claim and is capable of being used for diamond deposition, if so desired, and does not add structure to the claim.
(b) In view of the foregoing, Examiner respectfully contends the limitations of claim 1 are indeed satisfied. Claims 2-6 are rejected at least based on their dependency from claim 1, as well as for their own rejections on the merits, respectively.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717