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 .
Response to Arguments
Applicant's arguments filed 1/28/26 have been fully considered but they are not persuasive.
Regarding claims 1-5, 8 and 11-15, applicant has argued that Williams and/or Dodson do not teach a diamond lens configured for use in a multispectral imaging system. However Williams describes these characteristics at least individually in [0209] diamond lens [0251] thickness greater than 400 micron largest dimension of at least 10 mm [0109] and a birefringence of greater than 1x10^-4 measured over a specific area of at least 4mmx 4mm [0174]. While Williams describes the inequality as less than 1x10.0^3 this number is still greater than 1.0x10^4 (the number claimed). Furthermore since both the claimed range is unbounded it is considered sufficiently broad that less than 1.0 x 10^3 would encompass some values that fall in the prescribed range. MPEP 2144.05 already provides a basis for the teaching of birefringe overlapping the claimed range.
The limitation of a multispectral imaging system is considered also not persuasive as Williams provides for at least diamond lenses, diamond windows (visible) light [0209], infrared transmission windows (infrared light) and etalons [0210]. Therefore since at least four separate optical applications at multiple spectrums are considered. Therefore any assertion of teaching away is not considered persuasive. Furthermore the limitation of multispectral imaging systems is broad and does not preclude a diamond lens handling one spectrum of a multispectral imaging system. As the diamond lens could be one subsystem in a multi spectral imaging system.
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.
Claim(s) 1-5, 8, 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams US 2010/0015438.
Regarding claim 1, Williams teaches multispectral imaging system comprising a diamond lens [0209] configured for use in a multispectral imaging system, the diamond lens having a largest linear dimension of at least 10 mm [0109] and formed from diamond material having a birefringence Δn of greater than 1×10.sup.−4, measured over a specified area of at least 4 mm by 4 mm[0174] through a maximum thickness of at least 400 μm [0251].
MPEP 2144.05 states: n the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
Regarding claim 2, Williams teaches the diamond lens consists of single crystal diamond material [0251].
Regarding claim 3-4 and 15, Williams teaches does not explicitly state the diamond lens according to claim 2, wherein the diamond material has a FWHM X-ray rocking curve width for the (004) reflection of greater than 20 arc seconds however Williams does teach single crystal diamond material is obtained by one of a tiling growth method and a heteroepitaxial growth method [0063]. The specification admits: For a single crystal grown by tiling or heteroepitaxial growth methods, the FWHM for the {400} plane is typically over 25 arc seconds.” (page 10 1st paragraph of specification). Therefore this limitation would appear to be met.
Regarding claim 5, Williams teaches the diamond lens comprises polycrystalline diamond material [0062].
Regarding claims 8 and 11-12, Williams does not explicitly teach any of a surface coating and a surface structure to deliver improved optical properties or the diamond lens is substantially partially spherical or partially ellipsoidal in shape. The limitation of a lens having a flat or curved surface or any other shape is considered routine optimization as lens of various shapes for a multitude of purposes such zoom, correcting chromatic aberration, focusing and adapting viewing angle all require changes in shape such as a ellipsoid or spherical as routine. Fresnel lens are also known for weight/size reduction when used in optics.
Claim(s) 6-7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Dodson “Single Crystal and polycrystalline CVD diamond form demanding optical applications” IDS Reference.
Regarding claim 6-7, Williams teaches all the limitations of claim 6 except the diamond lens has at least one curved surface, the curved surface having a surface roughness Ra selected from any of no more than 3 nm, no more than 5 nm, no more than 10 nm, and no more than 20 nm or the diamond lens has at least one substantially flat surface, the flat surface having a surface roughness Ra selected from any of no more than 3 nm, no more than 5 nm, no more than 10 nm, and no more than 20 nm.
Williams already discloses lens construction (see claim 1 rejection). Dodson discloses typical surface roughness around 5nm (page 6 paragraph 5) as typical for polycrystalline diamond for optical application such as lenses. The limitation of a lens having a flat or curved surface or an other shape is considered routine optimization as lens of various shapes for a multitude of purposes such zoom, correcting chromatic aberration, focusing and adapting viewing angle all require changes in shape such as a curved or flat surfaces as routine. Therefore it would have been obvious to have a surface roughness of no more than 5nm as this is typical in polycrystalline diamond for optical application such as lenses as disclosed by Dodson.
Regarding claims 9-10, Williams teaches all the limitations of claim 9 except a forward scatter of the diamond lens at a wavelength of 1.064 μm, integrated over a solid angle from 2.5° to 30° from a transmitted beam, is between 0.5% and 3% and the absorption coefficient of the diamond material at a wavelength of 1.064 μm is greater than 0.01 cm-1. Dodson teaches a forward scatter of the diamond lens at a wavelength of 1.064 μm, integrated over a solid angle from 2.5° to 30° from a transmitted beam, is between 0.5% and 3% (page 5 paragraph 3-5) and the absorption coefficient of the diamond material at a wavelength of 1.064 μm is greater than 0.01 cm-1 (page 4 paragraph 4 – page 6 paragraph 2) as properties of optical grade polycrystalline diamond in the art which Williams discloses. Therefore it would have been obvious to one ordinary skill in the art to have a forward scatter of the diamond lens at a wavelength of 1.064 μm, integrated over a solid angle from 2.5° to 30° from a transmitted beam, is between 0.5% and 3% and the absorption coefficient of the diamond material at a wavelength of 1.064 μm is greater than 0.01 cm-1 as they appear to be properties of optical grade polycrystalline diamond known in the prior art.
Conclusion
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/PHU VU/Primary Examiner, Art Unit 2871