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 amendment filed on April 10, 2026 has been considered.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 10, 2026 has been entered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Pursuant to the 2019 Revised Patent Subject Matter Eligibility Guidance (MPEP 2106.05(a)), the following analysis is made:
Under step 1 of the Guidance, claim 1 falls within a statutory category.
Under step 2A, prong 1, claim 1 recites an abstract idea of “judging whether the diamond film is a single-crystal diamond film or a polycrystalline diamond film according to the ellipsometric spectrum data and the absorption spectrum data” (judgment/evaluation, mental process), “determining that the diamond film is the single-crystal diamond film when there is no absorption and an extinction coefficient k is 0” (evaluation, mental process), “determining that the diamond film is the polycrystalline diamond film when there is absorption and the extinction coefficient k is a curve” (evaluation, mental process), “executing step 41 when the diamond film is the single-crystal diamond film” (mathematical concept, evaluation, mental process), and “executing steps 42, 5, and 6 when the diamond film is the polycrystalline diamond film” (mathematical concept, evaluation, mental process), “obtaining optical constants and a thickness of the single-crystal diamond film through calculation using Cauchy model in a full spectral region, wherein the optical constants of the single-crystal diamond film at least comprise a refractive index n and an extinction coefficient k” (mathematical concept), “selecting a spectral region defining a transparent section for the polycrystalline diamond film from the polycrystalline diamond film” (mental process), “obtaining optical constants and a thickness d of the polycrystalline diamond film through calculation using the Cauchy model in the spectral region” (mathematical concept), “adding an oscillator model for dielectric constants to the absorption spectrum data of the polycrystalline diamond film, and at least adjusting an amplitude and a width of the oscillator model of the polycrystalline diamond film according to the ellipsometric spectrum data” (evaluation, mental process, mathematical concept), “evaluating a difference between an experimental value and a fitted value by an evaluation function mean square error (MSE) to determine the optical constants and the thickness d of the polycrystalline diamond film, wherein the optical constants of the polycrystalline diamond film at least comprise a refractive index n and an extinction coefficient k” (evaluation, mental process, mathematical concept).
Under step 2A, prong 2, the abstract idea is not integrated into a particular solution of the abstract idea (MPEP 2106.04(d)(I)).
Measuring ellipsometric spectrum data and absorption spectrum data of the diamond film are directed to insignificant extra-solution activities of data gathering (see MPEP 2106.05(g)).
Under step 2B, claim 1 does not include additional elements that are sufficient to amount to significantly more than the abstract idea (MPEP 2106.05(A)). Depositing a diamond film on a substrate is a well-understood, routine and conventional activity is known in the industry, has been found not to be enough to qualify as “significantly more” than the claimed judicial exception (see MPEP 2106.05(d)).
The remaining dependent claims 2-6 do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea.
Claims 2-5 are directed to an abstract idea.
Claims 6-9 are conventional elements directed to a conventional activity.
Accordingly, claim 1 and its dependent claims 2-9 are patent ineligible under 35 USC 101.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 106706521) in view of Wang et al. (CN 110823098), Tsukhara et al. (WO 2019049252), Koga (JP 2017226573), Sun et al. (CN 106337174), and JP 5383726.
Regarding claim 1, Liu et al. discloses a method for measuring a thickness and optical constants of a film (S3, page 2; Abstract, lines 1-2), comprising:
step 1: depositing a film on a substrate (S1, page 2);
step 2: measuring ellipsometric spectrum data (S2, page 2) and absorption spectrum data of the film (S4, page 2);
executing step 41: obtaining optical constants and a thickness of the film through calculation using Cauchy model (S3, page 2) in a full spectral region, wherein the optical constants of the single-crystal diamond film at least comprise a refractive index n and an extinction coefficient k (S6, page 3).
Liu et al. does not disclose an optical measurement of a diamond film.
Wang et al. discloses an optical thickness measurement of a diamond film (Abstract).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Liu et al. with an optical measurement as disclosed by Wang et al. for the purpose of measuring thickness of a diamond film.
Liu et al. does not disclose step 3: judging whether the diamond film is a single-crystal diamond film or a polycrystalline diamond film according to the ellipsometric spectrum data and the absorption spectrum data.
Tsukhara et al. discloses judging whether the diamond film is a single-crystal diamond film (page 6, paragraph 2) according to the absorption spectrum data (spectrum data from the diamond film, page 6, paragraph 2), while Koga discloses that a single-crystal diamond is in accordance to ellipsometric spectrum data (page 7, paragraph 3).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Liu et al. with absorption spectrum data and ellipsometric spectrum data as disclosed by Tsukhara et al. and Koga, respectively, for the purpose of judging whether the diamond film is a single-crystal diamond film.
It is noted that judging whether the diamond film is a polycrystalline diamond film according to the ellipsometric spectrum data and the absorption spectrum data is an alternative limitation since it is recited in the alternative form.
Liu et al. does not disclose wherein the judging comprises determining that the diamond film is the single-crystal diamond film when there is no absorption and an
extinction coefficient k is 0, or determining that the diamond film is the polycrystalline
diamond film when there is absorption and the extinction coefficient k is a curve.
Sun et al. discloses judging whether the diamond film comprises:
determining that the diamond film has no absorption and an extinction
coefficient k is 0 (page 2, paragraph 3).
JP ‘726 discloses that diamond film is the single-crystal diamond film (page 24, paragraph 3) when there is no absorption and an extinction coefficient k is 0 (page 24, paragraph 3).
In view of JP ‘726, the diamond film of Sun et al. is single-crystal diamond film.
Thus, Sun et al. in view of JP ‘726 discloses determining that the diamond film is the single-crystal diamond film when there is no absorption and an extinction coefficient k is 0.
It is noted that the judging whether the diamond film is the polycrystalline diamond film
according to the ellipsometric spectrum data and the absorption spectrum data comprises determining that the diamond film is the polycrystalline diamond film when
there is absorption and the extinction coefficient k is a curve is an alternative limitation because it is recited in the alternative form.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Liu et al. with a diamond film having no absorption and an extinction coefficient k is 0 as suggested by Sun et al. and JP ‘726 for the purpose of determining that the diamond film is the single-crystal diamond film.
It is noted that “executing steps 42, 5, and 6 when the diamond film is the polycrystalline diamond film” is a contingent limitation (see MPEP 2111.04).
Regarding claim 1 (method claims), the claim does not require “determining that the diamond film is the polycrystalline diamond film” (since “determining that the diamond film is the polycrystalline diamond film when there is absorption and the extinction coefficient k is a curve” is referred to in the alternative form). Thus, “executing steps 42, 5, and 6 when the diamond film is the polycrystalline diamond film” is not required.
Regarding claim 2, Liu et al. does not disclose judging whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film comprises judging whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film according to an absorption difference of the absorption spectrum data.
Tsukhara et al. discloses judging whether the diamond film is a single-crystal diamond film (page 6, paragraph 2) is according to an absorption difference of the absorption spectrum data (difference in the half width of the spectrum, page 6, paragraph 2).
It is noted that judging whether the diamond film is a polycrystalline diamond film is an alternative limitation since it is recited in the alternative form.
Regarding claim 3, it is noted that step 42 is part of a contingent limitation that is not required (see discussion regarding claim 1).
Regarding claim 4, it is noted that step 5 is part of is part of a contingent limitation that is not required (see discussion regarding claim 1).
Regarding claim 5, it is noted that step 6 is part of is part of a contingent limitation that is not required (see discussion regarding claim 1).
Regarding claim 6, Liu et al. discloses the substrate in the step 1 is a Si substrate (S1, page 2).
It is noted that the substrate in the step 1 is an Al2O3 substrate, or a diamond substrate
is an alternative limitation since it is recited in the alternative form.
Regarding claim 7, Liu et al. discloses the substrate in the step 1 is a Si substrate (S1, page 2).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. in view of Wang et al., Tsukhara et al., Koga, Sun et al., and JP 5383726 as applied to claim 1 above, and further in view of Aida et al. (US 2018/0312993).
Regarding claim 8, Liu et al. as modified by Wang et al., Tsukhara et al., Koga, Sun et al., and JP 5383726 discloses the claimed subject matter as discussed above with respect to claim 1 except the substrate is an Al2O3 substrate.
Aida et al. discloses a substrate is an Al2O3 substrate (paragraph 0050, lines 5-8).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Liu et al. as modified with a substrate is an Al2O3 substrate as suggested by Aida et al. for the purpose of growing a diamond single crystal.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. in view of Wang et al., Tsukhara et al., Koga, Sun et al., and JP 5383726 as applied to claim 1 above, and further in view of Shaw et al. (US 2018/0154609).
Regarding claim 9, Liu et al. as modified by Wang et al., Tsukhara et al., Koga, Sun et al., and JP 5383726 discloses the claimed subject matter as discussed above with respect to claim 1 except the substrate is a diamond substrate.
Shaw et al. discloses a substrate is a diamond substrate (Abstract, line 1) for bonding a thin diamond film.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Liu et al. as modified with a substrate is a diamond substrate as suggested by Shaw et al. for the purpose of bonding a thin diamond film.
Response to Arguments
Applicant's arguments filed on April 10, 2026 have been fully considered.
Applicant’s arguments and amendment with respect to the rejection under 35 USC 112(a) have been fully considered and are persuasive. The rejection under 35 USC 112(a) has been withdrawn.
With respect to the rejections under 35 USC 101, Applicants argue “[i]n Diehr, the Court held that a process for curing synthetic rubber was patent-eligible even though it employed a well-known mathematical equation (the Arrhenius equation) and a digital computer.”
Examiner’s position is that the claims in Diehr satisfy the requirements under 35 USC 101 because the abstract idea (i.e., mathematical equation) is integrated into a practical application (i.e., curing synthetic rubber).
Applicants further argue “[s]imilarly, here, the "judging" step and the underlying Cauchy or Lorentz models are not claimed in the abstract. Rather, they are used to perform the physical function of measuring the thickness and optical constants of a specific physical article, namely, a diamond film deposited on a substrate. The mathematical models are used to transform raw ellipsometric and absorption data into accurate physical measurements. As in Diehr, the use of a mathematical formula to automate and refine a physical process does not render the entire process unpatentable.”
Examiner’s position is that the judging step is an abstract mental process (evaluation), and calculation using Cauchy model is an abstract mathematical process. Obtaining parameters through calculation using Cauchy model is not a physical process such as curing synthetic rubber. Thus, executing steps 41 or 42, 5, and 6 (calculations using Cauchy model, mathematical concept) when judging diamond films (evaluation, mental process) integrates an abstract idea into another abstract idea. This is different from Diehr where an abstract idea (mathematical equation) is integrated into a practical application (curing synthetic rubber).
Applicants further argue “[i]n the present case, the claimed invention provides a specific technological improvement in the field of material characterization. Specifically, the method automates the identification of the diamond film type (single-crystal VS. polycrystalline), a distinction that cannot be made by the naked eye, to ensure the correct physical model is applied for measurement. This bifurcated approach to measurement (i.e., selecting Cauchy vs. Lorentz based on absorption data) is a specific, rules-based improvement that enhances the accuracy of the resulting physical data.”
Examiner’s position is that, pursuant to MPEP 2106.05(a), “[a]n indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.”
The prior technical problem discussed in the Background includes needing transmittance data in the wider infrared band, and “a single-crystal diamond film and a polycrystalline diamond film are not distinguished”.
The technical solution pertaining to “a single-crystal diamond film and a polycrystalline diamond film are not distinguished” is detailed in the specification and expressed in the claims: “judging whether the diamond film is a single-crystal diamond film or a polycrystalline diamond film according to the ellipsometric spectrum data and the absorption spectrum data”. However, the technical solution pertaining to “needing transmittance data in the wider infrared band” is not explained in the specification and not expressed in the claims. Further, The technical solution pertaining to “a single-crystal diamond film and a polycrystalline diamond film are not distinguished” is conventional because it has been taught by the combination of Tsukhara et al. and Koga. Tsukhara et al. discloses judging whether the diamond film is a single-crystal diamond film (page 6, paragraph 2) according to the absorption spectrum data (spectrum data from the diamond film, page 6, paragraph 2), while Koga discloses that a single-crystal diamond is in accordance to ellipsometric spectrum data (page 7, paragraph 3).
Thus, the claims are not directed to a technological improvement pursuant to MPEP 2106.05(a). Accordingly, they are not indicative of integration into a practical application (MPEP 2106.05(a)).
Applicants further argue “in Thales Visionics Inc. V. United States, 850 F.3d 1343 (Fed. Cir. 2017), the court held that claims utilizing mathematical equations to calculate the orientation of an object relative to a moving reference frame were eligible because the equations served to, "reduce errors in an inertial system." The present claims function similarly, the selection of the correct model based on measured spectral data reduces error in the calculated thickness and optical constants of the diamond film.”
Examiner’s position is that, as discussed above, the claims are not directed to a technological improvement under 35 USC 2106.05(a). Accordingly, they are not indicative of integration into a practical application (MPEP 2106.05(a)).
Applicants further argue “[t]he Claims Do Not Preempt the Abstract Idea. The preemption concern is "the underlying functional concern of the Alice/Mayo test." McRO, 837 F.3d at 1314. The present claims do not preempt the use of the Cauchy or Lorentz models in general. Rather, the claims are limited to a specific industrial application, measuring a diamond film deposited on a substrate. Other researchers remain free to use these mathematical models for any other purpose. Because the claims are narrowed to a specific physical context and a specific technical goal, they do not present the preemption risks associated with abstract ideas.
Examiner’s position is that the claims are not indicative of integration into a practical application. It is noted that measuring a diamond film deposited on a substrate, while not abstract, is directed to an insignificant extra solution activity of data gathering (MPEP 2106.05(g)). Accordingly, they are not further limited to a specific industrial application; therefore, they preempt all use of the abstract idea.
With respect to the rejections under 35 USC 103, Applicants argue “[t]he instant claim 1 is rejected under 35 U.S.C. § 103 as allegedly obvious over the prior art, in which executing steps 42, 5, and 6 in the instant claim 1 is improperly interpreted as a mere optional alternative limitation, and is thereby erroneously considered to be lack inventive contribution.”
Examiner’s position is that claim 1 recites “the judging comprises … determining that the diamond film is the polycrystalline diamond film when there is absorption and the extinction coefficient k is a curve” in the alternative form. Claim 1 further recites “executing steps 42, 5, and 6 when the diamond film is judged to be the polycrystalline diamond film”. Thus, executing steps 42, 5, and 6 is also performed in the alternative form.
Applicants further argue “executing step 41 and executing steps 42, 5, and 6 are part of a unified process for measuring the thickness and the optical constants of a diamond film. The executing step 41 is executed when (i.e., in response to) the diamond film is judged to be the single-crystal diamond film, whereas the executing steps 42, 5, and 6 are executed when (i.e., in response to) the diamond film is judged to be the polycrystalline diamond film (thus, the judgment is necessary to measure the thickness and optical constants). The executing steps 42, 5, and 6 are not freely selectable alternatives, but are technically triggered based on a specific material property judgment. The executing steps 42, 5, and 6 also constitute an integral part of the overall technical, rather than an optional alternative.”
Examiner’s position is that “executing steps 42, 5, and 6 when the diamond film is the polycrystalline diamond film” is a contingent limitation (see MPEP 2111.04).
Regarding claim 1 (method claims), the claim does not require “determining that the diamond film is the polycrystalline diamond film”. Clearly, “determining that the diamond film is the polycrystalline diamond film when there is absorption and the extinction coefficient k is a curve” is referred to in the alternative form in the claim. Thus, “executing steps 42, 5, and 6 when the diamond film is the polycrystalline diamond film” is not required.
Applicant’s remaining arguments have been considered but are traversed in view of the discussions and ground of rejection above.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Nghiem whose telephone number is (571) 272-2277. The examiner can normally be reached on M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Schechter can be reached at (571) 272-2302. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/MICHAEL P NGHIEM/Primary Examiner, Art Unit 2857 June 9, 2026
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