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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 November 2025 has been entered.
Claim Interpretation
As set forth in the prior Office action, the limitation in claim 16 (line 15) and claim 30 of “having a thermal variance less than 3% of a maximum temperature” is interpreted as having that variance apply to the temperature as measured on an absolute temperature scale (e.g., Kelvin) because non-absolute scales would have variances that depend on choice of unit and not the physical properties of the system.
It is noted that a thermal variance of 100 K is identical to a thermal variance of 100 °C, and this interpretation is therefore consistent with the specification [009]. However, taking a percentage of a temperature on a non-absolute scale lacks physical meaning, and so the claim must be interpreted as referring to a percentage of the absolute temperature. See Response to Arguments for more analysis.
As set forth in the prior Office action, dependent claim 20 limits the dimension of the hot zone volume defined in claim 16, but specifies only a range of a first dimension and a second dimension. The third dimension is therefore interpreted as encompassing all sizes. Claim 31 specifies a third dimension, but not a first dimension or a second dimension; these other two dimensions are interpreted as encompassing all sizes.
Claim Amendments
Applicant’s amendments to claim 20 and new claim 31 are acknowledged.
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.
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, 2, 6-8, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hemley et al. (US PGPub 2009/0110626, hereinafter “Hemley”) in view of Muka et al. (US Pat. No. 4,433,246, hereinafter “Muka”), and Shenderova et al. (US 2021/0371741 A1; hereinafter “Shenderova”).
Regarding claim 1, Hemley teaches a method of annealing one or more diamonds (paragraph 16), the method comprising providing a furnace having a chamber (paragraph 30, the heating sources used to raise the temperature of the diamond in the low pressure, high temperature annealing methods include… furnace or oven heating sources) and positioning the diamond within the chamber.
While Hemley does not explicitly recite positioning a diamond in the chamber of the furnace, it is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter which there is reason to believe includes functions that are newly cited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter shown to be in the prior art does not possess the characteristic relied on” (205 USPQ 594, second column, first full paragraph). In the instant case, it is believed that the furnace used by Hemley has a chamber in which the diamond must have been positioned in order to be heated as described.
Hemley further teaches the methods comprising:
modulating levels of a gas within the furnace to achieve a prescribed pressure (paragraph 33, diamonds were maintained in a reducing atmosphere of about 1 torr to about 5 atmospheres…Hydrogen was used to maintain the reducing atmosphere; the levels of hydrogen gas must be modulated to achieve the prescribed pressures);
and heating the diamond to a prescribed temperature;
the prescribed temperature being greater than 1,350 °C and less than 2,200 °C (paragraph 33, diamonds were annealed at temperature from about 1400 °C to about 2200 °C; paragraph 44, annealed at high temperature from 1400 ºC [to] over 2200 ºC);
and the prescribed pressure being greater than 1x10-9 Torr and less than 550 Torr (paragraph 44, 200 torr).
Hemley does not teach the method comprising: heating the diamond to a prescribed temperature using a given heating ramp rate; the given ramp rate being greater than 60 °C per minute and less than 800 ºC per minute.
However, Shenderova also teaches a process for annealing diamonds where fast ramp rates prevent graphitization (the time to reach the target temperature is short enough to prevent significant graphitization…specifically, the time to reach the target temperature is less than about 10 minutes; [0044]). Given that Shenderova’s target temperature is in the range of 1400 °C to 2200 °C ([0044]), like that of Hemley, this corresponds to a ramp rate from room temperature of greater than about 140 °C per minute, which overlaps with the instantly claimed range of between 60 °C per minute and 800 °C per minute.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where 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.
Therefore, the claimed ranges or ramp rate merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Hemley teaches a variety of heating sources to raise the temperature of the diamond in the low pressure, high temperature annealing method including, microwave, hot filament, furnace or oven heating sources (paragraph 30), but does not specifically mention providing a furnace having a heating element configured to radiatively heat a diamond.
However, Muka teaches the use of a radiative heating source for annealing (abstract and column 1, lines 15-16, an apparatus and process employing a blackbody radiation source for annealing crystal structure) and this source uses a hot filament (a filament wire of refractory metal; col. 7, lines 65-66), as suggested by Hemley.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply a radiative heat source similar to Muka to the furnace annealing method of Hemley. One of ordinary skill in the art would have been motivated to do so because of the uniform heating that such a source could provide over traditional convection heating (Muka, column 5, lines 50-55) and because Hemley suggests hot filament heating like that of Muka.
Therefore, the limitations of claim 1 are all obvious over Hemley in view of Muka, and Shenderova.
Regarding claim 2, modified Hemley teaches the method of claim 1, where Hemley further teaches graphitization of the diamond being prevented (paragraph 33).
Regarding claim 6, modified Hemley teaches the method of claim 1, where Hemley teaches annealing for a period from about 5 seconds to about 3 hours (paragraph 33). Hemley therefore teaches the limitation of claim 6, wherein the prescribed temperature is maintained for less than 30 seconds.
Regarding claim 7, modified Hemley teaches the method of claim 1, where Shenderova teaches ramp rates of at least 140 °C per minute, as analyzed above, which encompasses the claimed range. It is again noted that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where 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. Therefore, the claimed range merely represents an obvious variant and/or routine optimization of the values of the cited prior art
Regarding claim 8, modified Hemley teaches the method of claim 1, where Hemley teaches the prescribed temperature being between about 1400 °C and about 2200 ºC (paragraph 33), which encompasses the instantly claimed range. It is again noted that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where 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. Therefore, the claimed range merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claim 11, modified Hemley teaches the method of claim 1, where Hemley teaches the prescribed gas environment including hydrogen (paragraph 33).
Regarding claim 12, modified Hemley teaches the method of claim 1, where Shenderova teaches the gas environment can be nitrogen (annealed in at least one of an inert gas environment ([0044]), such as nitrogen [0080]).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hemley et al. (US 2009/0110626 A1) in view of Muka et al. (US 4,433,246) and Shenderova et al. (US 2021/0371741 A1), as applied to claim 1 above, and further in view of Collins et al. (J. Appl. Phys. 2005, 97, 083517, hereinafter “Collins”).
Regarding claims 3 and 4, modified Hemley teaches the method of claim 1, but neither Muka, Shenderova, nor Hemley teach the ramp rate accelerating as it approaches the prescribed temperature nor that the maximum temperature is sustained for a time that is more than an order of magnitude less than the ramp rate.
However, Collins has taught that the end results of diamond annealing depend critically on the time and temperature profile of the anneal (p. 9, column 1, paragraph 4. The time and temperature profile is therefore a recognized result-effective variable (see MPEP 2144.05(II.B)), and it would have been obvious to one of ordinary skill in the art to optimize the profile of the furnace, including ramp rate and time held at the maximum temperature, by routine experimentation in order to improve the performance of the method as well as the diamonds formed by the method.
Claims 5 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Hemley et al. (US 2009/0110626 A1) in view of Muka et al. (US 4,433,246) and Shenderova et al. (US 2021/0371741 A1), as applied to claim 1 above, and further in view of Anthony et al. (US Pat. No. 5,451,430, hereinafter “Anthony”).
Regarding claim 5, modified Hemley teaches the method of claim 1, where Hemley teaches annealing for a period from about 5 seconds to about 3 hours (paragraph 33). Hemley does not explicitly teach the prescribed temperature being maintained for less than 2 seconds.
However, Anthony teaches that at an annealing temperature of 2,200 °C, which lies in the range taught by Hemley and covered by the instant claims, times longer than 0.0174 seconds (0.29 x 10-3 minutes; col. 4, line 42) will result in graphitization (col. 4, lines 27-29).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to maintain the prescribed temperature in the method of modified Hemley for less than 2 seconds, as taught by Anthony. One of ordinary skill in the art would have been motivated to do so in order to reduce the graphitization that will occur with longer times at these high temperatures.
Regarding claim 29, modified Hemley teaches the method of claim 1, where Hemley further teaches that maintaining a reducing atmosphere of hydrogen of about 1 torr to 5 atmosphere prevents significant graphitization (paragraph 33). However, neither Hemley, Muka, nor Shenderova specifically teach that the annealing process results in less than 1% loss of diamond by weight due to graphitization. However, Anthony teaches a mathematical relationship (column 4, equation 1) that estimates the time of annealing as a function of temperature that will prevent graphitization. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply short reaction times at high temperatures to avoid graphitization. One of ordinary skill in the art would have been able to optimize the process through routine experimentation (varying temperature and time) to achieve less than 1% loss of diamond by weight due to graphitization. They would have been motivated to do so because graphitization damage is deleterious (Anthony, column 2, line 9).
Claims 9, 10, 15, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Hemley et al. (US 2009/0110626) in view of Muka et al. (US 4,433,246) and Shenderova et al. (US 2021/0371741 A1), as applied to claim 1 above, and further in view of Burns et al. (WO 01/72405 A1).
Regarding claim 9, modified Hemley teaches the method of claim 1, where Hemley (paragraph 33, to ensure a uniform temperature distribution) and Muka (abstract, to uniformly heat the material) each teach maintaining a uniform temperature distribution in an annealing process.
Neither Hemley nor Muka disclose the simultaneous annealing of a plurality of diamonds.
However, Shenderova teaches annealing diamond powders comprised of many small diamond particles below 100 μm in size ([0044]). Furthermore, Burns teaches positioning a plurality of discrete diamonds within an annealing chamber and the simultaneous heating of a plurality of discrete diamonds (page 4, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to simultaneously heat a plurality of diamonds, as taught by Burns and Shenderova, using the method of modified Hemley and the given ramp rate to achieve substantial thermal uniformity for each of the diamonds at the prescribed temperature. One would have been motivated to do so for increased throughput, as demonstrated by Burns and Shenderova.
Regarding claim 10, modified Hemley teaches the method of claim 9, and while Burns teaches simultaneous annealing of a plurality of diamonds, none of Hemley, Muka, or Burns specifically teach the annealing of at least 50 diamonds. Shenderova does teach annealing of diamond powders, which will contain at least 50 diamonds ([0044]). Furthermore, the leap from several diamonds to more than fifty would also have been obvious to one of ordinary skill in the art as it requires only smaller diamonds or a larger apparatus. It is noted that the courts have held that mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) 531 F.2d at 1053, 189 USPQ at 148. MPEP 2144.04(IV).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to simultaneously anneal at least 50 diamonds using the method of modified. One would have been motivated to do so for increased throughput.
Regarding claim 15, modified Hemley teaches the method of claim 1, where Burns teaches positioning a plurality of diamonds within an annealing chamber and maintaining the plurality of diamonds at substantially the same temperature (page 4, paragraph 3; and Example 1, pages 5-6).
Regarding claim 30, modified Hemley teaches the method of claim 1, where Muka further teaches a thermal variance of less than 50 °C (column 6, line 18-20, when the surface temperature of the wafer is 900 ºC (1170 K), the gradient through the wafer is less than 50 ºC; column 9, line 14-15, the whole thickness of the wafer heats uniformly). This thermal variance corresponds to less than 4% of the operating temperature of Muka, and less than 2.5% of 2000 K (1,727 °C), a temperature in the range taught by Hemley. Alternatively, using Applicant’s preferred interpretation, 50 °C of thermal variance is 2.5% of 2000 °C, a temperature also taught by Hemley. It is further noted that both Hemley (to ensure a uniform temperature distribution; [0033]) and Muka (the advantages are … uniform treatment; column 4, lines 14-19) teach that a uniform temperature environment is preferred.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where 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.
Therefore, the claimed range of less than 3% thermal variation merely represents an obvious variant and/or routine optimization of the less than 50 °C, or less than 4% thermal variation in the cited prior art.
Modified Hemley does not teach the positioning of a plurality of diamonds within the hot zone of the furnace. However, Burns teaches positioning a plurality of diamonds within an annealing chamber and the simultaneous heating of a plurality of diamonds (page 4, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to position a plurality of diamonds within a hot zone of the furnace where the hot zone has a thermal variance of less than 3% of a maximum temperature within the hot zone. One would have been motivated to do so for increased throughput and because thermal uniformity is sought after in annealing processes, as taught by Hemley (to ensure a uniform temperature distribution; [0033]) and Muka (the advantages are … uniform treatment; column 4, lines 14-19).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hemley et al. (US 2009/0110626) in view of Muka et al. (US Pat. No. 4,433,246) and Shenderova et al. (US 2021/0371741 A1), as applied to claim 1 above, and further in view of Kazuchits et al. (Diamond & Related Mat., 2019, 91, 156-164, hereinafter “Kazuchits ‘19”), Yang et al. (E3S Web of Conferences, 2019, 118, 03042, hereinafter “Yang”) and Kazuchits et al. (Diamond & Related Mat., 2016, 64, 202-207, hereinafter “Kazuchits ’16”).
Regarding claims 13 and 14, modified Hemley teaches the method of claim 1, and while Hemley and Shenderova teach annealing in inert and/or hydrogen atmospheres, neither Hemley, Muka, nor Shenderova specifically teach limiting the gas environment to less than 1 ppm oxygen (claim 13) or the partial pressure of oxygen to less than 10 millitorr (claim 14).
However, Kazuchits ’19 teaches low-pressure, high temperature diamond annealing in an ultrapure hydrogen atmosphere (Kazuchits ‘19, page 157, column 1, paragraph 2, by reference to Kazuchits ‘16, page 202, column 2, paragraph 3). The phrase “ultrapure hydrogen” is understood in the art to encompass compositions with less than 1 ppm oxygen (see Yang, Table 4-1, entry 6 for “Ultrapure hydrogen”). Dalton’s Law or Partial Pressures also tells us that these concentrations of oxygen would correspond to partial pressures of oxygen of less than 10 millitorr at operating pressures of 10,000 torr or less, which are all the pressures encompassed by the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use gas environments with oxygen concentrations less than 1 ppm (claim 13) and wherein the partial pressure of oxygen was less than 10 millitorr (claim 14). One of ordinary skill in the art would have been motivated to do because the presence of oxygen in the environment can catalyze graphitization of diamond (Kazuchits ‘19, page 156, column 1, paragraph 2).
It is again noted that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where 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. Therefore, the claimed range merely represents an obvious variant and/or routine optimization of the values of the cited prior art. Applicant is reminded to not merely rely upon counsel’s arguments in place of evidence in the record.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hemley et al. (US 2009/0110626) in view of Muka et al. (US 4,433,246), Shenderova et al. (US 2021/0371741 A1), and Burns et al. (WO 01/72405 A1).
Regarding claim 16, Hemley teaches:
providing a furnace having a chamber (paragraph 30, the heating sources used to raise the temperature of the diamond in the low pressure, high temperature annealing methods include… furnace or oven heating sources);
modulating the levels of gas within the chamber to achieve a prescribed pressure (paragraph 33, diamonds were maintained in a reducing atmosphere of about 1 torr to about 5 atmospheres…Hydrogen was used to maintain the reducing atmosphere; the levels of hydrogen gas must be modulated to achieve the prescribed pressures);
the prescribed temperature being between 1350 ºC and 2200 ºC (paragraph 33, diamonds were annealed at temperature from about 1400 °C to about 2200 °C; paragraph 44, annealed at high temperature from 1400 ºC [to] over 2200 ºC);
the prescribed pressure being between 1x10-9 torr and 550 torr (paragraph 44, 200 torr).
Hemley does not teach: positioning a plurality of diamonds within the chamber, the furnace having a radiative heating element configured to radiatively heat a diamond, producing a hot zone within the chamber using the radiative heating element, or the given ramp rate being between 60 ºC per minute and 800 ºC per minute.
However, Burns teaches positioning a plurality of diamonds within an annealing chamber (page 4, paragraph 3, the method of the invention may be used to treat a single diamond or a plurality of discrete diamonds).
Muka teaches the use of a radiative heating source for annealing (abstract and column 1, lines 15-16, an apparatus and process employing a blackbody radiation source for annealing crystal structure) and this source uses a hot filament (a filament wire of refractory metal; col. 7, lines 65-66), as suggested by Hemley (paragraph 30).
Muka further teaches a thermal variance of less than 50 °C (column 6, line 18-20, when the surface temperature of the wafer is 900 ºC (or 1170 K), the gradient through the wafer is less than 50 ºC; column 9, line 14-15, the whole thickness of the wafer heats uniformly). This thermal variance corresponds to less than 4% of the operating temperature of Muka, and less than 2.5% of 2000 K (1,727 °C), a temperature in the range taught by Hemley. Alternatively, using Applicant’s preferred interpretation, 50 °C of thermal variance is 2.5% of 2000 °C, a temperature also taught by Hemley.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where 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.
Therefore, the claimed range of less than 3% thermal variation merely represents an obvious variant and/or routine optimization of the less than 50 °C, or less than 4% thermal variation in the cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply a radiative heat source similar to Muka to the furnace annealing apparatus of Hemley. One of have been motivated to do so because of the uniform heating that such a source could provide over traditional convection heating (Muka, column 5, lines 50-55).
Shenderova also teaches a process for annealing diamonds where fast ramp rates prevent graphitization (the time to reach the target temperature is short enough to prevent significant graphitization…specifically, the time to reach the target temperature is less than about 10 minutes; [0044]). Given that Shenderova’s target temperature is in the range of 1400 °C to 2200 °C ([0044]), like that of Hemley, this corresponds to a ramp rate from room temperature of greater than about 140 °C per minute, which overlaps with the instantly claimed range of between 60 °C per minute and 800 °C per minute.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where 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.
Therefore, the claimed ranges or ramp rate merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claim 17, modified Hemley teaches the method of claim 16, and the benefits of uniform annealing have been noted by both Hemley (paragraph 33, to ensure a uniform temperature distribution) and Muka (abstract, to uniformly heat the material). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to heat the plurality of diamonds in the hot zone, where thermal variance is small.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hemley et al. (US 2009/0110626) in view of Muka et al. (US 4,433,246), Shenderova et al. (US 2021/0371741 A1), and Burns et al. (WO 01/72405 A1), as applied to claim 16 above, and further in view of Roy et al. (US Pat No. 8110171 B1, hereinafter “Roy”).
Regarding claim 18, modified Hemley teaches the method of claim 16, and while modified Hemley teach the annealing of a plurality of diamonds within a hot zone, they do not teach performing the annealing in a CVD growth chamber.
Roy does teach a method for changing the color of a CVD grown diamond using CVD equipment (column 7, line 63-64). This process operates at similar temperatures (1600 ºC to 2400 ºC) and pressures (from 50 torr to over 250 torr, column 5, lines 35 and 39) to Hemley, and the decolorizing process is a type of annealing to improve optical properties (Hemley, paragraph 14). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the method of claim 16 in the same chamber wherein the plurality of diamonds is grown. One of ordinary skill in the art would have been motivated to do so in order to reduce the cost associated with purchasing multiple pieces of equipment.
Regarding claim 19, modified Hemley teaches the method of claim 19, where Roy also teaches varying the prescribed temperature during the method (column 6, lines 31-33, the temperature at which the diamond is maintained can be varied with time; and, column 8, Example 2).
Claims 20 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Hemley et al. (US 2009/0110626) in view of Muka et al. (US 4,433,246), Shenderova et al. (US 2021/0371741 A1), and Burns et al. (WO 01/72405 A1), as applied to claim 16 above, and further in view of Li et al. (CN 215856452 U; hereinafter “Li”). The previously provided English machine translation of Li is referenced in the analysis below.
Regarding claims 20 and 31, modified Hemley teaches the method of claim 16, but Hemley, Muka Shenderova, and Burns do not specify the dimensions of the zones of uniform heating in their work. However, one of ordinary skill in the art would choose dimensions that suit the number and size of diamonds they are working with. For example, Li has designed a CVD diamond stage capable of holding a plurality of diamonds in a uniform heating zone (paragraph 2) that measures 80 mm x 80 mm (3.1 in x 3.1 in) (calculated from information in paragraph 29, and Fig. 1).
Furthermore, it is noted that in Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was 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 was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a uniform hot zone where a first dimension and a second dimension are between 3 inches and 5 inches, as required by claim 31, or where a single (third) dimension is between 3 inches and 5 inches, as required by claim 20. One of ordinary skill in the art would have been motivated to do so because such dimensions would allow the simultaneous annealing of several diamonds for higher throughput, as demonstrated by Li.
Response to Arguments
Applicant's arguments with respect to Shenderova and the ramp rate, pages 7-8 of the reply filed 27 April 2026, and have been fully considered but they are not persuasive.
Applicant argues that the claimed ramp rate is not inherently disclosed by Shenderova because total ramp-up duration does not establish starting temperature, whether the ramp rate is linear, whether the ramp rate is controlled, what rate is used near the prescribed temperature or whether any portion of the heating profile falls within the claimed 60-800 °C/min range. Of these items, it is only the first one that is relevant to calculating how fast the system was heated, i.e. the ramp rate. Nothing in the claim or the interpretation requires that the ramp rate be linear, uniform, and either different or the same near the prescribed temperature.
As noted by applicant, a ramp rate is a temperature increase per unit time. The method to calculate a ramp rate is therefore to divide a change in temperature (ΔT) by how long it takes to achieve that temperature change (time):
ramp rate
=
Δ
T
t
i
m
e
Therefore, by defining a temperature change accompanied by the time over which that temperature change occurs one is implicitly defining a ramp rate. Such a calculation does not assume a linear ramp rate, though it does calculate an average ramp rate over the time period of heating. However, the broadest reasonable interpretation of the limitation “a given ramp rate” includes this ramp rate being an average over any time period of heating and does not require that the ramp rate be an instantaneous rate.
Therefore, the only assumption necessary to arrive at the conclusion that Shenderova teaches a ramp rate of greater than 140 °C/min is to assume that when Shenderova states “the time to reach the target temperature” they are referring to “the time to reach the target temperature from about room temperature.” The alternative is to assume that Shenderova was working from a pre-heated state, but such a pre-heating process would necessarily be time spent heating toward the target temperature, and therefore would have been included in the time period defined by Shenderova. Accordingly, one of ordinary skill in the art would interpret a “time to reach the target temperature” as meaning the time to reach that temperature from ambient, room temperature conditions.
The following is what would be required to conclude that Shenderova does not teach a ramp rate of at least 60 °C/min, the minimum rate meeting the limitations of claim 1: To reach Shenderova’s minimum target temperature of 1400 °C in less than 10 min while heating at a rate slower than 60 °C/min would mean that the diamonds started at a temperature of at least 800 °C, and that none of the time that is required to bring the diamonds to at least 800 °C is considered as time spent toward reaching the target temperature of 1400°C. Such a conclusion is rejected as inconsistent with a reasonable interpretation of Shenderova.
In response to applicant's argument that the references fail to show certain features of the invention (i.e., the embodiments with non-uniform ramp rates described on p. 8, ¶ 5), it is noted that the features upon which applicant relies are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Therefore, the conclusion that Shenderova does teach a range of ramp rates that overlaps with the instantly claimed range, and that therefore the claimed ramp rates are prima facie obvious in view of the prior art, is maintained.
Applicant's arguments with respect to optimization of ramp rates, page 9 of the reply, have been fully considered but they are not persuasive.
First, it is unclear against which rejection Applicant is arguing in Section II, page 9, of the reply, so it will be assumed they are arguing against the rejection of claim 1.
Second, when a prior art references teaches an overlapping range, as Shenderova does for ramp rate, a prima facie case of obviousness exists and it is not necessary for the Office to also establish that such a variable is result-effective. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner's evidence. ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365–66, 117 USPQ2d 1951, 1553-54 (Fed. Cir. 2016). Applicant here has not presented any arguments against the prima facie case of obviousness established by Shenderova teaching ramp rates that overlap with the claimed range.
Additionally, as noted above, Shenderova does teach that “the time to reach the target temperature is selected to be short enough to prevent significant graphitization” ([0044]), which is another way of saying that the sample must be heated quickly to prevent graphitization, or that the ramp rate must be high, i.e. ramp rate effects the degree of graphitization. Therefore Shenderova does teach that ramp rate is a result-effective variable related to graphitization, which Hemley is also trying to minimize ([0033] and [0045]).
Applicant's arguments regarding the radiative furnace process, pages 9-10, have been fully considered but they are not persuasive.
Applicant argues that Muka does not cure the deficiency of Hemley because Muka teaches only a planar radiative heat source in close opposition to semiconductor wafers being heated.
However, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Muka teaches the use of a radiative heating source for annealing, that such a sources provides more uniform heating than conduction, and this source uses a hot filament, just as suggested by Hemley. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply a radiative heat source similar to Muka to the furnace annealing method of Hemley. One need not apply exactly Muka’s apparatus to Hemley’s method.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In particular, while it is true that Muka does not teach ramp rate, this teaching is provided by Shenderova.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Therefore, the prior rejections of claims 1, 2, 5-8, and 11-12 are maintained.
Applicant's arguments, page 10-11, regarding the patentability of claim 6 have been also been fully considered but they are not persuasive.
Applicant argues that Hemley does not teach maintaining at the prescribed temperature for less than 30 seconds. However, any annealing process that is fully completed in less than 30 seconds will necessarily have any specific temperature achieved in the process, including the prescribed temperature, maintained for less than 30 seconds. Therefore, because Hemley teaches a range of annealing times that includes total annealing times of less than 30 seconds, they also teach a process where the prescribed temperature is maintained for less than 30 seconds.
It is further noted that it is not unexpected that shorter times at higher temperatures reduces graphitization, as taught Anthony.
The prior rejection of claim 6 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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