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 .
Status of the Claims
The status of the claims as filed in the reply dated 4/28/2026 are as follows:
Claims 1 and 6 are amended,
Claims 10-16 are withdrawn from consideration,
Claims 1-16 are currently pending.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazaki et al. “Band-alignment analysis of Diamon-Al2O3 Interface”, Extended Abstracts of the 79th Japan Society of Applied Physics Autumn Meeting, The Japan Society of Applied Physics, 21P-232-6, 2018, previously cited).
Regarding claim 1, Miyazaki discloses a diamond composite, comprising:
a first base substrate (Al2O3, see page 1 of translation) which has an oxide layer MOx of element M (Al) on the surface thereof and contains the element M in the composition; and
a second base substrate (diamond, see page 1 of translation) which is bonded to the oxide layer and is composed of diamond, wherein the M is one or more selected Al, elements from Sc with atomic number 21 to Ga with atomic number 31, elements from Y with atomic number 39 to Sn with atomic number 50, elements from La with atomic number 57 to Ir with atomic number 77, Ti, Pb, Si, Ge, As, Se, Sb, Te, and Bi, and the second base substrate is bonded to the surface of the oxide layer of the first base substrate by M-O—C bonding of at least some C atoms on the surface of the diamond constituting the second base substrate (as there would be inevitably Carbon atoms on the surface of diamond).
The limitation of “the surfaces are treated to introduce OH groups before bonding, and the surfaces containing OH groups are brought into contact with each other and dehydrated to form an M-O-C bond” is considered a product-by-process limitation. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Regarding claim 2, Miyazaki further discloses wherein the M is Al (see page 1 of translation.
Regarding claim 3, Miyazaki further discloses wherein the first base substrate (of Al2O3) is a heat sink or a heat spreader (as Miyazaki teaches attaching the substrate to a semiconductor, see pate 1 of translation).
Regarding claim 4, Miyazaki further discloses wherein the surface of the diamond constituting the second base substrate is bonded to the oxide layer of the first base substrate (of Al2O3), and an electronic element is formed on the other surface of the second base substrate, which is not bonded to first base substrate (as Miyazaki teaches providing the diamond- Al2O3 as an interface of a metal–oxide–semiconductor field-effect transistor metal–oxide–semiconductor field-effect transistor, see page 1 of translation).
Regarding claim 5, Miyazaki further discloses electronic device (as Miyazaki teaches providing the diamond- Al2O3 as an interface of a metal–oxide–semiconductor field-effect transistor metal–oxide–semiconductor field-effect transistor, see page 1 of translation) comprising the diamond composite according to claim 1, wherein the oxide layer of the first base substrate (of Al2O3) is bonded to the surface of the diamond constituting the second base substrate, and an electronic element is formed on the other surface of the first base substrate, which is not bonded to second base substrate (see page of translation).
Regarding claim 6, Miyazaki discloses a diamond composite, comprising:
a first base substrate (Al2O3, see page 1 of translation) which has an oxide layer MOx of element M (Al) on the surface thereof and contains the element M in the composition; and
a second base substrate (diamond) which is bonded to the oxide layer and is composed of polycrystalline diamond(as OH-terminated diamond is a polycrystalline diamond), wherein the M is one or more selected Al, elements from Sc with atomic number 21 to Ga with atomic number 31, elements from Y with atomic number 39 to Sn with atomic number 50, elements from La with atomic number 57 to Ir with atomic number 77, Ti, Pb, Si, Ge, As, Se, Sb, Te, and Bi, and the second base substrate is bonded to the oxide layer of the first base substrate by M-O—C bonding of at least some C atoms on the surface of the polycrystalline diamond constituting the second base substrate (as there would be inevitably Carbon atoms on the surface of diamond).
The limitation of “the surfaces are treated to introduce OH groups before bonding, and the surfaces containing OH groups are brought into contact with each other and dehydrated to form an M-O-C bond” is considered a product-by-process limitation. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Regarding claim 7, Miyazaki further discloses wherein the M is Al (see page 1 of translation).
Regarding claim 8, Miyazaki further discloses wherein the first base substrate (of Al2O3) is a heat sink or a heat spreader (as Miyazaki teaches attaching the substrate to a semiconductor, see pate 1 of translation).
Regarding claim 9, Miyazaki further discloses wherein the surface of the diamond constituting the second base substrate is bonded to the oxide layer of the first base substrate (of Al2O3), and an electronic element is formed on the other surface of the second base substrate, which is not bonded to first base substrate (as Miyazaki teaches providing the diamond- Al2O3 as an interface of a metal–oxide–semiconductor field-effect transistor metal–oxide–semiconductor field-effect transistor, see page 1 of translation).
Response to Arguments
Applicant's arguments filed 4/28/2026 have been fully considered but they are not persuasive.
Applicant argues (pages 8-11) that Miyazaki does not teach that the surfaces are treated to introduce OH groups before bonding, and the surfaces containing OH groups are brought into contact with each other and dehydrated to form an M-O-C bond. However, as laid out above in the rejection this is considered a product-by-process limitation. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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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/HARRY E ARANT/Primary Examiner, Art Unit 3763
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