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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9 drawn to a diamond composite, classified in H01L 23/3732.
II. Claim 10-16 drawn to a method of manufacturing a diamond composite, classified in C30B29/16.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: single general inventive concept under PCT Rule 13.1The anticipatory of claims 1 and 6 provided below is evidence of a lack of single general inventive concept under PCT Rule 13.1.
During a telephone conversation with Kourosh Salehi on 12/10/2025, Invention I was elected without transverse. As not pertaining to the elected Invention, claims 10-16 are withdrawn consideration.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 in lines 6-7 and claim 6 in lines 7-8 recite “with which an oxide can be formed, Si, Ge, As, Se, Sb, Te, and Bi”, which is indefinite as it is not clear to what purpose these chemicals are being recited. For Examining purposes they will interpreted as excluded alkali metals.
Claims 2-5 and 7-9 are rejected as they depend on claims 1 and 6.
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).
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 from a metal element (where alkali metals and alkaline earth metals are excluded) with which an oxide can be formed, 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 diamond constituting the second base substrate (as there would be inevitably Carbon atoms on the surface of diamond).
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 from a metal element (where alkali metals and alkaline earth metals are excluded) with which an oxide can be formed, 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).
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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARRY E ARANT whose telephone number is (571)272-1105. The examiner can normally be reached Monday-Friday 10-6 ET.
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/HARRY E ARANT/ Primary Examiner, Art Unit 3763