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 .
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,613,826. Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and U.S. Patent No. 11,613,826 teach synthetic single crystal diamond containing nitrogen atoms at a concentration of more than 600 ppm and 1500 ppm or less, the Raman shift λ′ (cm.sup.−1) of a peak in a primary Raman scattering spectrum of the synthetic single crystal diamond and the Raman shift λ(cm.sup.−1) of a peak in a primary Raman scattering spectrum of a synthetic type IIa single crystal diamond containing nitrogen atoms at a content of 1 ppm or less satisfying the following expression (1): λ′−λ≥−0.10. U.S. Patent No. 11,613,826 does not specify aggregates each composed of one vacancy and three substitutional nitrogen atoms present adjacent to the vacancy. It is clear the single crystal diamond taught by U.S. Patent No. 11,613,826 would necessarily produce aggregates each composed of one vacancy and three substitutional nitrogen atoms present adjacent to the vacancy because the diamond satisfies the claimed equation for Raman shift.
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.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumiya et al. (WO2019077844A1).
Regarding claim 1, Sumiya et al. teaches synthetic a single crystal diamond according to an aspect of the present disclosure is a synthetic single crystal diamond containing nitrogen atoms at a concentration of more than 600 ppm and at most 1,500 ppm which is encompassed by synthetic single crystal diamond containing nitrogen atoms at a concentration of 100 ppm or more and 1500 ppm or less based on atom numbers (lines 70-75). Sumiya et al. teaches λ′−λ ≧ −0.10 When the equation (1) (λ′−λ) satisfies the relationship of the above equation (1), the amount of isolated substitutional nitrogen atoms in the synthetic single crystal diamond is sufficiently reduced which meets the limitation of wherein a Raman shift X' cm-1 of a peak in a first-order Raman scattering spectrum of the synthetic single crystal diamond and a Raman shift X cm-1 of a peak in a first-order Raman scattering spectrum of a synthetic type Ila single crystal diamond containing nitrogen atoms at a concentration of 1 ppm or less based on atom numbers show a relationship of the following formula 1,X'-X> 0.26 Formula 1 (lines 180-215). Sumiya et al. teaches aggregation type diamonds, vacancy and substitutional atoms (lines 130-190). Sumiya et al. does not specify aggregates each composed of one vacancy and three substitutional nitrogen atoms present adjacent to the vacancy. It is clear the single crystal diamond taught by Sumiya et al. would necessarily produce aggregates each composed of one vacancy and three substitutional nitrogen atoms present adjacent to the vacancy because the diamond satisfies the claimed equation for Raman shift.
Regarding claim 2, Sumiya et al. does not teach in a fluorescent spectrum of the synthetic single crystal diamond, a luminescence peak is present in one or both of the fluorescence wavelength range of 415±2 nm and the fluorescence wavelength range of 420 nm or more and 470 nm or less. It is clear the single crystal diamond taught by Sumiya et al. would necessarily produce in a fluorescent spectrum of the synthetic single crystal diamond, a luminescence peak is present in one or both of the fluorescence wavelength range of 415±2 nm and the fluorescence wavelength range of 420 nm or more and 470 nm or less because the diamond satisfies the claimed equation for Raman shift.
Regarding claim 3, Sumiya et al. does not teach wherein, in an infrared absorption spectrum of the synthetic single crystal diamond, an absorption peak is present in the wave number range of 1370 cm-1 or more and 1385 cm-1 or less. It is clear the single crystal diamond taught by Sumiya et al. would necessarily produce an infrared absorption spectrum of the synthetic single crystal diamond, an absorption peak is present in the wave number range of 1370 cm-1 or more and 1385 cm-1 or less.
because the diamond satisfies the claimed equation for Raman shift.
Regarding claim 4, Sumiya et al teaches wherein the synthetic single crystal diamond has a Knoop hardness of 100 GPa or more in a <100> direction in a {001} plane (lines 235-250).
Regarding claim 5, Sumiya et al teaches wherein the synthetic single crystal diamond has a cracking load of 15 N or more in a breaking strength test in which a spherical diamond indenter having a tip radius of 50 m is pressed against a surface of the synthetic single crystal diamond at a loading speed of 100 N/min (lines 210-235).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUINEVER S GREGORIO whose telephone number is (571)270-5827. The examiner can normally be reached M-W 11 am - 9 pm.
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 04/18/2026
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