DETAILED ACTION
1. Applicant's submission filed on 05/29/2026 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 Claims 7-16 remain withdrawn from consideration.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 Rejections - 35 USC § 112
4. 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.
5. Claims 1-6 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, lines 3-4 recite “bowl-like structure”. This phrase renders the claim indefinite because the claim includes elements not actually disclosed (i.e. those encompassed by "or the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d). For examination purposes, examiner is interpreting “bowl-like structure” as any structure. To correct this problem, amend claim 1 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, line 7 recites the limitation “the whole growth surface”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the whole growth surface” as “the growth surface” recited in line 3. To correct this problem, amend line 7 to recite “the growth surface”.
Claims 2-6 are rejected at least based on their dependency from 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) has a surface that is a growth surface 45 and is a structure that is concave (see fig 2B) toward the bottom portion (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's arguments filed 05/29/2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
(a) Claim 1 is amended to recite that the growth surface is "a bowl-like structure." In addition, claim 1 recites, "electric field lines in an electric field for diamond deposition that is generated by the electric field device are substantially perpendicular to and face the whole growth surface" to clarify that the electric field lines are substantially perpendicular to the whole growth surface. The core technical feature claimed in the present application resides in configuring that "electric field lines used for diamond deposition are substantially perpendicular to the whole growth surface over the entire bowl-shaped growth curved surface," thereby improving the problem in conventional planar substrates in which graphitization tends to occur at edge regions and further enhancing overall deposition uniformity.
The Applicant respectfully considers that the Yamazaki has different structures from the present application such that the technical means disclosed in Yamazaki's structure is not capable of performing the above-mentioned features (a) and (b) and does not teach all the features recited in claim 1 of the present application.
In contrast to claim 1, Yamazaki discloses the following electrode shape and the substrate material:
(i) Electrode shape disclosed in Yamazaki: The electrodes 13-1, 13'-1, 13-2,
13'-2 ... 13-n, and 13'-n disclosed in Fig. 1 of Yamazaki are all planar
electrodes having straight, unbent configurations. Further, throughout the
entire specification of Yamazaki, there is no description regarding any
particular shape of the plates. In particular, there is no disclosure that the
electrodes would be modified into curved shapes in response to the
substrate having a curved surface. Accordingly, the electrodes disclosed in
Yamazaki are considered as straight and unbent planar electrodes.
(ii) In the Yamazaki, the disclosed substrate material is explicitly identified as a
non-conductive insulating material. The embodiments described therein disclose that the carbonaceous thin film is coated on a curved glass or plastic pane (pane 1) of an automobile windshield. Since both glass and plastic are inherently electrically insulating materials and do not possess electrical conductivity, it is evident that such substrates are non-conductive materials.
Furthermore, in Prior Arts description of Yamazaki, it clearly states that the advantages of the prior art technique are diminished when the substrates are made of insulating materials, and the technique of Yamazaki is for improving the disadvantage of the prior art. Therefore, it can further prove that the substrates in Yamazaki are insulating substrates. Accordingly, it can be understood that the substrates disclosed in Yamazaki are non-conductivematerials.
Yamazaki's structures described in (i) and (ii) above differ from that of the present application, and the Yamazaki is not capable of satisfying the above-mentioned features (a) and (b). Thus, Yamazaki fails to disclose all the limitations of claim 1.
Accordingly, applicant respectfully considers the examiner's opinion that "the present application does not differentiate the claimed apparatus from a prior art apparatus" is not true.
Also, the applicant respectfully considers the examiner's opinion that "the Yamazaki is capable of performing the present application" is not true. In other words, in Yamazaki, where (i) the electrodes are straight, unbent planar electrodes, and (ii) the substrate material is non-conductive, regardless of how the electrode positions are changed or how voltages are adjusted and applied to the substrate, the Yamazaki cannot achieve, in terms of electric field formation principles and ion movement behavior, an electric field line distribution that is substantially perpendicular to the bowl-shaped growth curved surface as required in the present application. Accordingly, Yamazaki is fundamentally different from the present application.
First, from the standpoint of electrical principles, when the substrate is non- conductive, the only way to make the electric field lines substantially perpendicular to the surface of the entire bowl-shaped growth curved surface is to modify the electrode shape into a bowl-shaped curved surface.
In Yamazaki, due to the substrate is non-conductive, while the substrate has a curved surface, under such circumstances, in order to make the electric field lines substantially perpendicular to the entire curved surface of the substrate, the only possible approach is to modify the electrode shape into a curved surface. The principle thereof is explained below.
In a plasma environment, a very thin plasma sheath layer is formed on the curved surface of the substrate (as shown in the figure below), and the electric field lines (EFL) originating from the straight, unbent planar electrodes travel horizontally toward the substrate before reaching the plasma sheath. In contrast to a conductive substrate, when the substrate is non-conductive and has a curved surface, the electric field lines, upon reaching the plasma sheath, bend slightly from the horizontal incident direction and curve toward the curved surface of the plasma sheath, which is at an equipotential.
More specifically, when the electric field lines nearly reach the substrate surface in a very short distance, which is the thickness of the very thin plasma sheath, they tend to slightly bend toward the curved surface only at the instant they enter the sheath layer. However, because the sheath thickness is extremely thin, the electric field lines entering the sheath cannot become substantially perpendicular to the curved surface. Instead, as shown in the figure below, the electric field lines merely bend slightly and then passthrough and leave the substrate.
That is, in the typical parallel-electrode configuration disclosed in Yamazaki, the distribution of the electric field lines is primarily determined by the boundary conditions of the electrodes rather than the curve shape of the substrate. Accordingly, before reaching the plasma sheath, the overall electric field in space exhibits a parallel and unidirectional distribution. Although the electric field lines may slightly change direction after entering the plasma sheath, they still cannot impinge upon the curved surface in a substantially perpendicular direction.
The reason Yamazaki contains no disclosure regarding modification of the electrode shape in response to the curved surface of the substrate is that the purpose of Yamazaki is ion bombardment but not diamond growth. As described in the Yamazaki specification, the prior art technique applies a bias voltage to the substrate to generate ion bombardment, thereby selectively removing softer portions of the deposited carbon material to improve film hardness. However, such a mechanism requires the establishment of a stable and uniform electric field at the substrate surface so that ions may be effectively accelerated and directionally bombarded. When the substrate is conductive, the applied bias voltage can be uniformly distributed over the surface, allowing the electric field to be stably formed and the ions to be consistently accelerated toward the substrate surface, thereby achieving the intended processing effect. In contrast, in prior art described by Yamazaki, when the substrate is insulating material, because the substrate cannot effectively conduct electricity, charges tend to accumulate locally on the surface, resulting in non-uniform electric field distribution and even interference with or cancellation of the externally applied electric field. Consequently, the acceleration direction and energy distribution of the ions become unstable, thereby reducing the ion bombardment effect. Therefore, as stated in the Yamazaki specification, the advantages of the prior-art technique are significantly diminished when applied to insulating substrates. To overcome this problem, Yamazaki further proposes surrounding the substrate with parallel electrodes and changing the current direction so that electric field lines act upon the substrate from different directions, thereby improving deposition and processing effectiveness on insulating substrates. This further demonstrates that the substrate disclosed in Yamazaki is an insulating material.
As described above and with reference to the figure above, in a plasma environment, the geometric shape of the substrate still cannot determine the electric field distribution, and the electric field distribution remains primarily governed by the shape of the electrodes, i.e., the boundary conditions thereof.
In a plasma environment, a plasma sheath region is formed near the substrate surface (as indicated by the thin surface region labeled "Sheath" in the figure). Under the parallel-electrode configuration of Yamazaki, the electric field generated from the parallel electrodes propagates horizontally before reaching the plasma sheath and causes local electric field deflection only at positions extremely close to the curved surface structure, since the plasma sheath is an extremely thin region. Such bending of the electric field within this extremely thin surface region cannot make the electric field substantially perpendicular to the surface thereof.
In the Yamazaki configuration, whose substrate has a curved structure, the electric field cannot become substantially perpendicular to the substrate surface. Let along the present application, however, the substrate is not merely curved, but rather has a bowl- shaped curved structure. The bowl-shaped curved structure of the substrate in the present application makes it even less possible for the electric field emitted from parallel electrodes to become substantially perpendicular to the surface thereof.
This point may also be further understood from a geometric relationship perspective. Different positions on a bowl-shaped curved surface have different surface normal directions. Therefore, if the electric field lines are to remain perpendicular over the entire bowl-shaped surface, the direction of the electric field must continuously vary throughout space so as to correspond to the surface normal direction at each location on the curved surface. Such an electric field distribution can only be formed through equipotential surfaces corresponding to the geometric shape of the curved surface. In other words, in order to make the electric field lines substantially perpendicular over the entire surface of the bowl-shaped substrate, the equipotential surfaces of the electric field must correspond to the geometric shape of the curved surface. However, such a condition cannot be achieved merely by disposing a curved insulating substrate between parallel electrodes, but instead requires specially designed electrodes or conductive boundaries corresponding to the bowl-shaped surface.
As discussed above, however, Yamazaki completely fails to disclose any special electrode design corresponding to a bowl-shaped curved surface. The disclosed electrodes of Yamazaki remain flat parallel configurations, and therefore the electric field lines thereof inherently remain approximately parallel and unidirectional. Accordingly, even if a curved substrate is disposed therein, only local and minor deflection would occur, and it would still be impossible for all electric field lines to become entirely perpendicular to the bowl-shaped growth surface. Therefore, the parallel-electrode configuration disclosed in the reference cannot maintain the electric field lines perpendicular over the entire surface of the bowl-shaped substrate, nor does it disclose or suggest any electrode design capable of achieving such an effect.
As noted above, the auxiliary electric field in Yamazaki is used for ion bombardment rather than for diamond deposition. Claim 1 thereof explicitly recites that the auxiliary electric field is provided "to effect bombardment of the substrate with plasma ions," thereby indicating that the purpose thereof is to accelerate ions to collide with the substrate along a single direction, rather than to form a divergent electric field corresponding to the surface normals of a curved surface. Therefore, the orientation of the electric field in Yamazaki is inherently tied to its planar electrode configuration. In other words, because the substrates used in Yamazaki include both planar and curved substrates, this demonstrates that Yamazaki contains no disclosure or teaching that the electric field lines are perpendicular to the substrate surface, nor any motivation to modify the parallel electrodes into a special structure capable of generating electric fields normal to an entire curved surface.
In summary, in the technique disclosed in Yamazaki, the electric field distribution is inherently governed by the boundary conditions of the parallel electrodes and therefore can only form an approximately parallel and unidirectional electric field. Even if a curved substrate is present, only limited electric field deflection can occur within a local sheath region, and the electric field throughout the entire space still cannot become entirely perpendicular to the bowl-shaped growth curved surface. In order to achieve such an effect, specially designed electrodes or conductive boundaries corresponding to the geometry of the curved surface would be required. However, Yamazaki neither discloses nor suggests the shape of the electrodes. Therefore, the Yamazaki has different structure from that of the present application, and the Yamazaki is not capable of performing the above-mentioned features (a) and (b) and does not meet claim 1 of the present application. Accordingly, the present application is not only different from the Yamazaki in its intended use, but in several different points between their structures. The applicant respectfully considers the examiner's opinion that "the present application does not differentiate the claimed apparatus from a prior art apparatus" is not true.
(b) The technical features claimed in the present application are therefore clearly distinguishable from Yamazaki, and the cited reference neither discloses, teaches, nor renders obvious the invention of the present application. Accordingly, the claims of the present application should possess novelty and inventive step.Therefore, claim 1 is novel and non-obvious over Yamazaki, and claims 2-6 are allowable for at least the same reasons.
10. In response to applicant’s arguments, please consider the following comments.
(a) Initially, as regards to claim 1, lines 3-4 recite “bowl-like structure”. This phrase renders the claim indefinite because the claim includes elements not actually disclosed (i.e. those encompassed by "or the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d). For examination purposes, examiner is interpreting “bowl-like structure” as any structure. To correct this problem, amend claim 1 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, line 7 recites the limitation “the whole growth surface”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the whole growth surface” as “the growth surface” recited in line 3. To correct this problem, amend line 7 to recite “the growth surface”.
Further, 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) has a surface that is a growth surface 45 and is a structure that is concave (see fig 2B) toward the bottom portion (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.
Even further, See also Impax Labs.. Inc. v. Aventis Pharm . Inc., 468 F.3d 1366, 1383, 8 USPQ2d 1001, 1013 (Fed. Cir. 2006) ("[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.").
Lastly, a reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed."). See Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition that expressly excluded an ingredient held anticipated by reference composition that optionally included that same ingredient); see also Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed composition was anticipated by prior art reference that inherently met claim limitation of "sufficient aeration" even though reference taught away from air entrapment or purposeful aeration.) See MPEP 2131.05.
(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
11. 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 extension fee 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 date of this final action.
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
Prosecution Insights