DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. This application is a CON of application 14/367,165 and 16/037,179.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/17/2023 has been considered by the examiner.
Drawings
The drawings are objected to because the x-axis of Figure 4 is labeled in units of "micron meters" which is not an accepted unit of measure. Examiner recommends correction to an appropriate unit of measure potentially denoted by “micron”, “micrometer”, “micrometre", or similar language. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Figure 7 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). To be clear, Applicant’s specification identifies the figure as a "literature phase diagram” dependent upon the specific material utilized. Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Examiner notes multiple instances of the use of “micro meter”. Examiner respectfully requests correction to “micrometer”. Additionally, Examiner notes that the paragraphs are not numbered.
Appropriate correction is required.
The lengthy specification (77 pages) has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities: “PCD” should be provided in an unabbreviated form for the first instance of use in the claims. Examiner suggests correction to "polycrystalline diamond (PCD)". Examiner requests that alternative language be supplied to change “compound(s)”. Examiner suggests "...particles and at least one precursor compound for the metals of the metallic network" or similar language. Furthermore, in line 8, “and /or” appears to have an extra space and should be “and/or”.
Appropriate correction is required.
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 1-20 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 utilizes the language “such as” in line 3 of the claim (MPEP 2173.05(d) Example B) and it renders the scope of the claim indefinite.
Additionally, claim 1 recites in the first line of step d “and metallic material” which lacks sufficient antecedent basis. It is unclear if ‘metallic material’ in step d refers back to the metal particles of step c or if this serves as the introduction for a new metallic material to the homogeneous mass of diamond particles.
Claim 4 recites the limitation "the remaining portion of the diamond particles" in line 5 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 is rejected due to the language “the cations” which lacks sufficient antecedent basis. Notably, claim 14’s dependency is 11>2>1; it appears that ‘the cations’ finds sufficient antecedent basis in claim 13. As such, claim 14 has been interpreted to depend from claim 13.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Davies et al. (WO 2010/092540) in view of Naidoo et al. (U.S. 2010/0300764 A1) (Both Cited in IDS).
Regarding claim 1, Davies et al. (hereinafter “Davies") teaches a method of producing a free-standing (Page 12 lines 26-31) PCD body comprising a combination of intergrown diamond grains forming a diamond network and an interpenetrating metallic network (Page 13 lines 13-17), the method comprising the steps of (Examples 1 and 2):
a) forming a mass of combined diamond particles and precursor compound(s) for the metals of the metallic network by suspending the diamond particles in a liquid (Page 19 line 25 to Page 20 line 17), and crystallising and/or precipitating the precursor compounds in the liquid (Page 19 line 25 to Page 20 line 17);
b) removing the mass from suspension by sedimentation and/or evaporation to form a dry powder of combined diamond particles and precursor compounds (Page 20 lines 1-3 and 17-21);
c) subjecting the powder to a heat treatment (Page 20 lines 17-21) to dissociate and reduce the precursor compound(s) to form metal particles smaller in size than the diamond particles to provide a homogeneous mass;
d) consolidating the homogeneous mass of diamond particles and metallic material using isostatic compaction (Page 20 lines 23-27) to form a homogeneous cohesive green body of a pre-selected size and 3-dimensional shape; and
e) subjecting the green body to high pressure and high temperature conditions such that the metallic material wholly or in part becomes molten (Page 14 lines 12-24 and Page 20 lines 29 to Page 21 lines 1-8) and facilitates diamond particle to particle bonding via partial diamond re-crystallisation to form a free-standing PCD body (Page 16 lines 22-28, Page 16 line 31 to Page 17 line 3); wherein: the diamond network of the PCD body is formed of diamond grains having a plurality of sizes (Page 6 lines 29-33, Page 7 lines 1-17), the diamond network comprises a grain size distribution having an average grain size (Page 7 lines 1-17), and wherein the PCD material forming the free standing PCD body is homogeneous (Page 7 lines 15-17). While Davies fails to expressly recite that the PCD body is spatially constant and invariant with respect to diamond network to metallic network volume ratio, it is prima facie expected that the PCD body of Davies would embody these characteristics. To be clear, it has been held that “where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Examiner further notes that Davies produces a free-standing PCD body in a substantially identical process (see further explanation below) to that currently claimed by Applicant.
With regard to the limitation requiring isostatic compaction to form a homogeneous green body of a pre-selected size and 3-dimensional shape, Examiner notes that Davies' heat treatment processing steps is expected form a homogeneous green body with a necessarily present size and 3-dimensional shape. Furthermore, Davies' heat treatment processing steps are taken to be an isostatic compaction process.
With regard to the limitation requiring the PCD body not being attached to a substrate formed of a different material such as a metal, cermet, or ceramic, Examiner acknowledges that some of Davies embodiments incorporate a substrate during the HPHT process, however, Davies also discloses figures and embodiments that are not attached to a substrate (Fig. 1, Page 12 lines 26-31 as well as Page 16 lines 22-28). Most compellingly, Davies discloses that metallic sintering catalyst is introduced by admixing it in powder from into the pre-form in comparison to attaching a substrate (Page 16 line 31 to Page 17 line 3). As such, an ordinarily skilled artisan would recognize and appreciate that the PCD body of Davies could be successfully manufactured without attachment to a substrate based on both common knowledge in the art as well as the express disclosures and examples of Davies.
Despite the numerous teachings of Davies, Davies is silent to the limitations requiring "the largest component of the diamond grain size distribution is no greater than three times the average diamond grain size. However, Davies does disclose that “if the area of contact between the sintering aid and the diamond grains is too small, the sintering aid will not be able to function effectively to promote the formation of direct bonds between the diamond grains. On the other hand, the larger this area, the more the sintering aid may react with the diamond grains when the PCD is subjected to high temperatures in use, which may deleteriously affect properties of the element” (Page 18 lines 19-24). As such, an ordinarily skilled artisan would recognize and appreciate this disclosure as a caution to control the particle size distribution of the diamond grains and metallic material because the “areas of contact" are directly tied to the particle distribution. While an ordinarily skilled artisan could optimize and control the particle size distributions based on the disclosures of improved homogeneity and areas of contact considerations of Davies, Examiner submits Naidoo to further demonstrate that particle size distribution control is recognized and appreciated by ordinarily skilled artisans.
Naidoo et al. (hereinafter “Naidoo”) teaches a free-standing polycrystalline diamond body (Paragraphs 0097, 0103, Example 5, and Table 7) where the largest component of the diamond grain size in microns is less than three times the average diamond grain size in microns (Table 7). Importantly, Paragraph 0064 of Naidoo discloses that the homogeneity or uniformity of the PCD structure may be quantified by a statistical evaluation of micrographs, the smaller the standard deviation of the measurement the more homogeneous the structure, and a large standard deviation implies that the binder thickness varies widely over the microstructure which is less homogeneous. As such, an ordinarily skilled artisan would recognize and appreciate that controlling the standard deviation of the particle distribution in part by keeping the largest component of the diamond grain distribution within three times the average grain size will improve the homogeneity of the PCD and result in less variability in the performance of the PCD during use (Paragraphs 0064 and 0103). Therefore, it would be obvious to a person having ordinary skill in the art at the time the invention was made to combine the teachings of Davies and Naidoo so as to develop an effective method to produce a free-standing PCD body with improved homogeneity, thermal stability, oxidative resistance (Davies Page 7 lines 28-32 and Page 18 lines 24-26), and less variability in the performance of the PCD over time (Naidoo Paragraph 0103).
Regarding claim 2, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 1 above and Davies further teaches wherein the mass of combined diamond particles and precursor compound(s) for the metals of the metallic network is formed by simultaneously or sequentially adding to the suspension a solution of a metal containing compound and a solution of a reactive compound such that an insoluble precursor compound(s) for the metal(s) of the metallic network nucleates and grows on the surfaces of the diamond particles forming the precursor compound(s) as particles attached to and decorating the diamond particle surfaces (Page 17 lines 5-13 and Page 23 line 5 to Page 24 line 20). Examiner notes that Applicant has identified examples in the specification that are substantially similar to the examples of the Davies reference (See page 36 of the specification).
Regarding claim 3, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 1 above and Davies further teaches wherein the mass of combined diamond particles and precursor compound(s) for the metals of the metallic network is formed by crystallizing from solution in the suspended liquid a soluble precursor compound(s) for the metals of the metallic network (Examples 1-3, Page 19 line 25 to Page 21 line 8, Page 23 line 5 to Page 24 line 20).
Regarding claim 4, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 2 above and Davies further teaches wherein the precursor compound(s) for the metal of the metallic network is (are) crystallized and/or precipitated in a suspension of pre-selected portion of the diamond particles (Examples 1-3 as detailed above); the method further comprising after completion of the crystallization and/or precipitation of the precursor compound(s) adding the remaining portion of the diamond particles to the stirred suspension prior to removal of the suspension liquid (Page 20 line 5 to line 15 and Page 23 lines 20-33); and subsequently applying heat treatment to dissociate and/or reduce the precursor compound(s) to metallic particles (Page 20 lines 17-27 and Page 24 lines 1-8).
Regarding claim 5, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 4 above but both Davies and Naidoo fail to expressly recite that the portion of diamond particles for initial combination with the precursor compound(s) is pre-selected on the basis of diamond particle size and/or diamond mass proportion. However, it would only be matter of choice to an ordinarily skilled artisan to arrive at the order of selection for the diamond particle materials and sizes. Nevertheless, it has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Therefore, it would be obvious to a person having ordinary skill in the art to pre-select the portion of diamond particles for initial combination with the precursor compounds on the basis of diamond particle size and/or diamond mass proportion.
Regarding claim 6, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 1 above and Davies further teaches wherein the liquid suspension medium is water or an alcohol (Page 20 lines 25-33 and Page 23 lines 5-14).
Regarding claim 7, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 2 above and Davies further teaches wherein the precursor compound(s) is (are) a carbonate, hydroxide, oxalate, or acetate (Page 19 line 25 to Page 20 line 15 and Page 23 line 6 to line 33).
Regarding claim 8, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 3 above and Davies further teaches wherein the precursor compound(s) is a nitrate (Page 19 line 25 to Page 20 line 15 and Page 23 line 6 to line 33).
Regarding claim 9, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 2 above and Davies further teaches wherein the precursor compound(s) is (are) selected from tungstates, molybdates, tantalates, titanates, niobates, vanadates, and stannates (Page 16 lines 6-12, Page 19 line 25 to Page 20 line 15, and Page 23 line 6 to line 33).
Regarding claim 10, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 2 above and Davies further teaches wherein the precursor is an amorphous semi-porous oxide (Page 19 lines 31-33 “Ta2O5” and Page 23 lines 12-14 “TiO2”).
Regarding claim 11, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 10 above and Davies further teaches wherein the oxide is selected to be any one or more of or any permutation of tungstic oxide, WO3, molybdic oxide, MoO3, tantalum pentoxide, Ta2O5, niobium pentoxide, Nb2O5, and vanadium oxide, V2O3 (Page 19 lines 31-33 “Ta2O5” and Page 23 lines 12-14 “TiO2”).
Regarding claim 12, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 11 above and Davies further teaches wherein the reactant compound to form the oxide by reaction with water is an alcoxide (alkoxide) of general formula M(ROH)-n, M being a metal and R being an organic alkane (Page 23 lines 6-14).
Regarding claim 13, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 2 above and Davies further teaches wherein the mass of diamond particles and precursor compound(s) is heated in a reducing gas environment to convert the precursor compound(s) to metallic particles smaller than the diamond particles (Page 20 line 25, Page 24 lines 5-8, and Page 17 lines 5-13). While Davies teaches that the metallic particles from the precursor compounds are smaller than the diamond grains on Page 17, Examiner notes that In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) as well as In re Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) both held that changes in size, absent persuasive evidence to the contrary, were prima facie obvious modifications. Additionally, it has been held that it is not inventive to discover the optimum or workable ranges through routine experimentation where the general conditions of a claim are disclosed in the prior art In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, it would be obvious to an ordinarily skilled artisan to optimize the result effective variable of particle size for both the diamond network and the metallic network.
Regarding claim 14, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 13 above and Davies further teaches wherein the gaseous environment contains hydrogen (Page 20 line 25 and Page 24 lines 5-8).
Regarding claim 15, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 13 above and Davies further teaches wherein the temperature and time of heat treatment is sufficient to generate amorphous non-diamond carbon where metallic particles decorate and are attached to the diamond surfaces and/or are in contact with the diamond surfaces (Page 17 lines 5-19, Page 19 line 25 to Page 21 line 5, Page 24 lines 1-20).
Regarding claim 16, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 13 above and (Page 16 lines 32 to Page 17 line 3, Page 19 line 25 to Page 21 line 5, Page 24 lines 1-20; notably the drying and heat treatment steps that are not HPHT processes).
Regarding claim 17, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 2 above and Davies further teaches wherein one or more of the precursor compound(s) yields one or more transition metal carbides at the surface of the diamond particles during heat treatment (Page 17 lines 5-13).
Regarding claim 18, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 17 above and Davies further teaches wherein the precursor compound(s) yield a metal/ metal carbide combination attached to the diamond surfaces (Page 17 lines 5-13).
Regarding claim 19, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 18 above and Davies further teaches where the metal/metal carbide combination is selected from cobalt/tungsten carbide, cobalt/tantalum carbide or nickel/titanium carbide or any combination (Page 17 lines 5-13 “Tantalum carbide/nickel”).
Regarding claim 20, Davies and Naidoo teach the method of producing a free-standing PCD body as applied to claim 1 above and Davies further teaches wherein the green body is subjected to a pressure in the range of 5 to 10 GPa and to a temperature in the range 1100 to 2500°C to form a fully dense free standing PCD body (Page 20 lines 30-33). It has been held that a prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In the instant case, Davies teaches "about 5.5 GPa and about 1400 centigrade" which lies entirely within Applicant’s claimed range. Additionally, it has been held that it is not inventive to discover the optimum or workable ranges through routine experimentation where the general conditions of a claim are disclosed in the prior art In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738