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 .
Claim Objections
Claims 14 and 28 objected to because of the following informalities:
In claims 14 and 28, line 2, delete “layer” after “the optically transparent substrate.”
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 3, 8, 11, 17, 22 and 25 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 3 recites that “at least one of the substrate and optically transparent intermediate layer is a metal.” Based on claim 1, the substrate is described as an optically transparent substrate. Since metals are generally not transparent, this limitation appears inconsistent and requires further clarification. Similar reasoning also applies to claim 17.
Claim 8 recites that “at least one of the substrate and optically transparent intermediate layer comprises nitrides of aluminum, silicon, titanium, or boron.” Based on claim 1, the substrate is described as an optically transparent substrate. Since titanium nitride is not optically transparent, this limitation appears inconsistent and requires further clarification. Similar reasoning also applies to claim 22.
Claim 11 recites that “the substrate has a dimension of at least one centimeter.” However, it is unclear whether “dimension” refers to the diameter, thickness, or another linear measurement. Therefore, this limitation requires further clarification. For examination purposes, the dimension is considered to refer to the diameter. Similar reasoning also applies to claim 25.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1, 2, 4, 5, 7, 13, 15, 16, 18, 19, 21 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khan (US Pub. 2013/0175546).
Regarding Claim 1, Khan discloses a multilayer diamond system, comprising: an optically transparent substrate 1306 (page 6, paragraph 100); an optically transparent intermediate layer 1304 (diamond layer; page 6, paragraph 102) deposited on the optically transparent substrate 1306 (see fig. 13); and a diamond layer 1302 (page 6, paragraph 103) deposited on the optically transparent intermediate layer 1304 (see fig. 13) and formed from diamond having at least 50% of diamond grains sized between 2 nm and 500 nanometers (the diamond layer may be a polycrystalline diamond having a grain size of approximately 200-300 nm; page 2, paragraph 31).
Regarding Claim 2, Khan discloses wherein the substrate 1306 is at least one of silicon oxide, glass, quartz, and sapphire (page 6, paragraph 100).
Regarding Claim 4, Khan discloses wherein at least one of the substrate 1306 and optically transparent intermediate layer 1304 is a ceramic (the substrate material can be SiO2, which is a ceramic; page 6, paragraph 100).
Regarding Claim 5, Khan discloses wherein at least one of the substrate 1306 and optically transparent intermediate layer 1304 is a glass (the substrate material can be fused silica, which is a glass; page 6, paragraph 100).
Regarding Claim 7, Khan discloses wherein at least one of the substrate and optically transparent intermediate layer comprises indium tin oxide, aluminum oxide, titanium oxides including but not limited to titanium dioxide, magnesium oxide, silicon dioxide, and hafnium oxide (the substrate material can be SiO2; page 6, paragraph 100).
Regarding Claim 13, Khan discloses wherein the diamond layer is deposited on the substrate at a temperature below 600 degrees Celsius (the diamond layer is deposited at low growth temperatures, i.e., less than 450oC; page 6, paragraph 102).
Regarding Claim 15, Khan discloses a method for manufacturing a multilayer diamond system, comprising: providing an optically transparent substrate 1306 (page 6, paragraph 100); depositing an optically transparent intermediate layer 1304 (diamond layer; page 6, paragraph 102) on the optically transparent substrate 1306 (see fig. 13); and depositing a diamond layer 1302 (page 6, paragraph 103) on the optically transparent intermediate layer 1304 (see fig. 13), with the diamond layer formed from diamond having at least 50% of diamond grains sized between 2 nm and 500 nanometers (the diamond layer may be a polycrystalline diamond having a grain size of approximately 200-300 nm; page 2, paragraph 31).
Regarding Claim 16, Khan discloses wherein the substrate 1306 is at least one of silicon oxide, glass, quartz, and sapphire (page 6, paragraph 100).
Regarding Claim 18, Khan discloses wherein at least one of the substrate 1306 and optically transparent intermediate layer 1304 is a ceramic (the substrate material can be SiO2, which is a ceramic; page 6, paragraph 100).
Regarding Claim 19, Khan discloses wherein at least one of the substrate 1306 and optically transparent intermediate layer 1304 is a glass (the substrate material can be fused silica, which is a glass; page 6, paragraph 100).
Regarding Claim 21, Khan discloses wherein at least one of the substrate and optically transparent intermediate layer comprises indium tin oxide, aluminum oxide, titanium oxides including but not limited to titanium dioxide, magnesium oxide, silicon dioxide, and hafnium oxide (the substrate material can be SiO2; page 6, paragraph 100).
Regarding Claim 27, Khan discloses wherein the diamond layer is deposited on the substrate at a temperature below 600 degrees Celsius (the diamond layer is deposited at low growth temperatures, i.e., less than 450oC; page 6, paragraph 102).
Claim Rejections - 35 USC § 103
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.
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.
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 10, 11, 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Khan.
Regarding Claims 10 and 24, Khan fails to disclose explicitly wherein the diamond layer comprises a substantially uniform 70-150 nanometers thick diamond film having at least 50% of diamond grains sized between 10 to 100 nanometers.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range (see MPEP 2144.05; In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)).
Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form a diamond layer having a certain thickness with certain diamond grains size, in order to achieve a smooth, mechanically strong, and optically reliable layer.
Regarding Claims 11 and 25, Khan fails to disclose explicitly wherein the substrate has a diameter of at least one centimeter.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range (see MPEP 2144.05; In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)).
Furthermore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use a substrate with a certain diameter to ensure uniform and high-quality coating of a diamond layer.
Allowable Subject Matter
Claims 6, 9, 12, 14, 20, 23, 26 and 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 6 and 20 recite at least one of the substrate and optically transparent intermediate layer comprises at least one of tungsten and titanium.
Claims 9 and 23 recite at least one of the substrate and optically transparent intermediate layer comprises at least one of aluminosilicate and borosilicate glass.
Claims 12 and 26 recite the substrate further comprises a sidewall coated with the diamond layer.
Claims 14 and 28 recite transmission of light through the optically transparent substrate, the diamond layer, and the optically transparent intermediate layer at 550 nanometer wavelength is in excess of 0.80.
These features in combination with the other elements of the base claim are neither disclosed nor suggested by the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHEUNG LEE whose telephone number is (571)272-5977. The examiner can normally be reached 9 AM - 5:30 PM.
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/CHEUNG LEE/Primary Examiner, Art Unit 2812 September 24, 2025