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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 apparatus 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 the interpretation of the temperature scale to be used in calculating thermal variance for claims 16 and 30, pages 7-9 of the reply filed 10 November 2025, have been fully considered but they are not persuasive.
Applicant first argues that a thermal variance as a percent of Celsius temperature is meaningful in the context of the claims. This is not persuasive.
Whether or not the relevant temperatures are near zero or not does not change the fact that “a thermal variance” inherently implies a variance in the thermal energy. A calculation that takes a percent of temperature that is not on an absolute scale will not be a calculation of thermal variance, because it will not be a calculation of the variation in thermal energy compared to the total thermal energy.
Furthermore, thermal variance should be a physical property of the system and cannot depend on the choice of units in which the calculation is performed, especially when such a calculation method is not expressly laid out in the claim or defined in the specification.
Applicant further argues, page 8, that the specification supports an interpretation in Celsius. The cited paragraph [0009] does not in fact show that the percentages were calculated based on a maximum temperature is °C. As noted previously and also recognized by applicant, a variance of 100 °C is identical to a variance of 100 K. A thermal variance reported as less than 100 °C may therefore also be a percentage of an absolute temperature in Kelvin, and is in fact 5% of 2000 K or 1726 °C, which falls within the claimed thermal range of 1350 °C to 2200 °C.
Regarding the Phillips standard, it is noted that the Examiner is applying the Phillips framework (see MPEP 211.01) but reaches a different conclusion by recognizing that a POSITA would find a percentage of a relative temperature without physical meaning, as noted above, and therefore the ordinary and customary meaning of a “3% thermal variance of a maximum temperature” must apply to an absolute temperature. Furthermore, the specification providing examples of variances in °C does not demonstrate an express intent that such a variance is to be calculated based upon the temperature expressed in °C: a variance calculated based upon an absolute temperature or upon a relative temperature may both be expressed in units of °C, especially given that K and °C are equivalent units when used to express differences in temperatures.
Lastly, Applicant argues that Examiner’s rejection of claim 30 used a percentage of the Celsius temperature, however, this is not the case. The temperature of the Muka’s wafer cited in the rejection is 900 °C, which is equivalent to 1173 K; 50 °C is equivalent to 50 K, and the variance is therefore 50/1173, or 4.26% of this maximum temperature, consistent with the ~4% given by the Examiner. If Examiner had instead used the maximum temperature in °C the variance would have been 50/900, or 5.6%.
For at least these reasons the interpretation of thermal variance previously used is maintained.
Applicant argues on page for an interpretation of height and width that requires the depth to be comparable to the width based upon a description of one such hot zone in the specification. It is noted however, that 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).
The specification describes only that the hot zone “may have a width or diameter of between about 3 inches and about 5 inches.” There is no indication here whether the phrase “a width or diameter” is used to say that width and diameter mean the same thing, or rather describe two alternate embodiments. In any case, there is no reason to assume that all embodiments must have such a circular cross-section.
Applicant’s amendments to the claims for clarity are appreciated. However, it is noted that claims 20 and 31 do not depend upon one another, and so the specification of the size of the third dimension in claim 31 does not affect the interpretation of claim 20, or vice versa. Claim 16 provides no limitations on the dimension of the hot zone, claim 31 provides a limitation on one dimension of the hot zone and claim 20 provides a limitation on two dimensions of the hot zone.
Applicant's arguments with respect to the rejections of claims 1, 2, 5-8, and 11-12 under 35 USC § 103 have been fully considered. These arguments are either moot or not persuasive.
First, it is noted that the Russo of “Muka and Russo” identified by Applicant as a mistake on page 10, ¶ 1, is in fact Muka’s co-inventor on the US 4,433,246 patent. To avoid further confusion, only first-listed inventors and authors are cited in this Action.
Applicant’s argument that Muka’s radiative heating is ineffective and incompatible with diamond, p. 10-11, is not persuasive. In particular, Applicant asserts on page 11 that “Muka’s central teaching, that a planar radiative flux can uniformly heat a wafer, is physically inapplicable to optically transparent crystalline materials like diamond.” Applicant further argues that the differences are not engineering details that can be optimized through routine experimentation.
The central teaching of Muka that the rejection of claim 1 relies upon does not require an IR absorption profile like that of silicon, only that a blackbody heater providing a planar energy flux, when heated to the temperature taught by Hemley (~2000 K), will be able to heat the diamonds. The reference provided by Applicant at the bottom of page 11 shows that diamond absorbs strongly below 225 nm, and moderately in the range 2.6 to 6.2 μm. Colored diamonds, like those in need of decolorizing annealing treatments will also absorb in the visible range. It is further noted that at the temperatures taught by Hemley, ~1000 K higher than those used by Muka, the radiation profile of a blackbody heater will have much higher intensity, and extend to shorter wavelengths, than Muka’s heater at 900 °C.
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Spectral distribution of the intensity of the radiation of a blackbody (Planck spectrum). From <URL: https://www.tec-science.com/thermodynamics/temperature/black-body-radiation/>
For at least these reasons, one of ordinary skill in the art would therefore not immediately discount radiative heating of diamond, especially in view of Hemley’s suggestion to use hot filament heating (paragraph 30), which is the very same heat source used by Muka. It is also noted the hot filament used by Muka was made of tantalum, which melts at ~3,000 °C and therefore could be expected to be effective at heating to the temperatures used by Hemley.
Applicant has not pointed to any feature that distinguishes Muka’s central teaching of using a radiative heat source for uniform heating from the instantly claimed invention, where it appears in Fig. 2 that a radiative planar energy flux from the heating elements (16) is used to radiatively heat the plurality of diamonds (14). Accordingly, either the teachings of Muka are applicable to diamonds, or the presently claimed inventions rely upon features which are neither claimed nor disclosed in the specification, nor which one of ordinary skill could arrive at through routine experimentation. If applicant is relying on a wholly different kind of radiative heating element, then such an element must be disclosed in the specification in order to enable one of ordinary skill in the art to make use of the claimed invention. Therefore, even if Applicant’s arguments were held to be persuasive, then the instant claims must be rejected for lack of enablement under 35 USC § 112(a).
Applicant further argues, page 12, that a person of skill in the art would not modify silicon wafer annealing to arrive at the claimed process temperatures. This argument is not persuasive.
The rejection of claim 1 does not rely on modifying the temperature of Muka’s annealing process and does not ask that “a person of ordinary skill in the art look to anneal silicon at such a high temperature” (p.12, ¶ 4 of the reply). The rejection instead relies upon replacing the heating method in the method of Hemley, which already operates at the claimed temperatures, to one in which heating is provided radiatively like that of Muka. It is again noted that Hemley themself teaches using alternate heating methods including a hot filament (paragraph 30), which is the same heat source used of Muka. Based on Hemley’s suggestion, one of ordinary skill would therefore turn to a hot filament heater, like that of Muka, with a reasonable expectation of success. It is also noted the hot filament used by Muka was made of tantalum, which melts at ~3,000 °C and therefore could be expected to be effective at heating to the temperatures used by Hemley.
Applicant arguments, pages 13-14, that MEO does not suggest the specific ramp rate control in claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The prior rejection has been modified and no longer relies upon MEO to teach the ramp rate, instead using Shenderova, who teaches ramp rates of at least 140 °C per minute, which overlaps more closely with the instantly claimed range.
Applicant argues on pages 14-15 that the annealing times taught by Hemley do not teach a sub-2-second dwell time at the prescribed temperature required by claim 5. This argument is not persuasive because even though Hemley does not explicitly teach the prescribed temperature being maintained for less than 2 seconds, a total annealing time of 5 seconds must include ramping up time and ramping down time. Even at the fastest rates taught by MEO (100 °C/second), a 5 second total anneal time would require times at the prescribed temperature of less than 2 seconds. Hemley’s annealing times therefore include the instantly claimed dwell times.
Nevertheless, a new grounds of rejection is presented above that does not rely upon Hemley alone to teach the dwell time at the prescribed temperature. Instead, Anthony is used to teach short times at elevated temperature in the annealing process, which render the instantly claimed dwell times obvious.
Applicant's arguments, page 15, with respect to the thermal uniformity have also been fully considered but they are not persuasive. In particular, Applicant argues that the thermal uniformity of ≤3% of a maximum temperature required by claim 30 for a hot zone that contains multiple discrete 3D diamond crystals at 1,350-2200 °C is not the same as a ≤50°C uniformity through a 200-700 μm silicon wafer at 900 °C.
However, none of claim 16, claim 30, or claim 1 upon which claim 30 depends limits the size of the hot zone to anything larger than the zone taught by Muka. While claim 20 limits two dimensions of the hot zone, and claim 30 limits one dimension, none of these claims require a hot zone with any depth greater than that taught by Muka. (It is noted that the limitations of claims 20 and 31 are not constructed such that they ever apply together.)
Furthermore, while Applicant highlights the differences between Muka’s 900 °C annealing and a temperature of 2000 °C covered by the instant claims, the full breadth of claims 1, 16 and 30 covers temperatures as low as 1350 °C, which is much closer to those disclosed by Muka. The use of percentages of the operating temperatures rather than absolute temperature variability also accounts for these difference.
Additionally, Applicant provides no evidence that the claimed <3% thermal variance leads to any unexpected differences between their invention and the motivation to optimize for thermal uniformity and the <4% thermal variance taught by the cited prior art.
It is again noted that one of ordinary skill in the art would be motivated to combine teachings of Hemly and Muka to arrive at a configuration very similar to the configuration of Fig. 2, which could be modified by routine experimentation to provide the claimed thermal variance.
Conclusion
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735