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 September 29, 2025 has been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, “judging whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film according to the ellipsometric spectrum data and the absorption spectrum data comprises:
determining that the diamond film is the single-crystal diamond film when there is no absorption and an extinction coefficient k is 0, and
determining that the diamond film is the polycrystalline diamond film when there is absorption and the extinction coefficient k is a curve” is not described in the original disclosure.
For instance, the original specification discloses that 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” is not described in the original disclosure (specification, page 6, lines 5-11).
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 1-6 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), “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), “judging whether the diamond film is the single-crystal diamond film or the 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), “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.
Claim 6 is a conventional element directed to a conventional activity.
Accordingly, claim 1 and its dependent claims 2-6 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 1-6 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 whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film according to the ellipsometric
spectrum data and the absorption spectrum data comprises:
determining that the diamond film is the single-crystal diamond film when there is no absorption and an extinction coefficient k is 0, and
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 (interpretation in light of the specification, see page 6, lines 5-11).
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, since it is interpreted that the limitation is an alternative limitation (alternatively to when the diamond film is a single-crystal diamond film).
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 an alternative limitation (see discussion regarding claim 1).
Regarding claim 4, it is noted that step 5 is part of an alternative limitation (see discussion regarding claim 1).
Regarding claim 5, it is noted that step 6 is part of an alternative limitation (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.
Response to Arguments
Applicant's arguments filed on September 29, 2025 have been fully considered.
Applicant’s arguments and amendment with respect to the claim objection have been fully considered and are persuasive. The claim objection has been withdrawn.
With respect to the rejections under 35 USC 101, Applicants argue “[c]laims 1-6 are rejected under 35 U.S.C. § 101 as allegedly failing to comply with the written requirement.”
Examiner’s position is that the claims are rejected under 35 USC 101 because the claims are directed to non-statutory subject matter.
Applicants further argue that “the method comprises a specific step for judging whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film. When there is no absorption, k is 0, and the diamond film is the single-crystal diamond film. When there is absorption, k is a curve, and the diamond film is the polycrystalline diamond film. Further, in instant claim 1, the absorption spectrum data of the diamond film is used to judge whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film. Even further, steps for detecting refractive indexes n and extinction coefficients k of the single- crystal diamond film and the polycrystalline diamond film comprise implied detecting steps and are also physical processes rather than mental processes. Withdrawal of this rejection is therefore respectfully requested.”
Examiner’s position is discussed above. The rejections under 35 USC 101 are maintained because the claims are directed to an abstract idea that is not integrated into a practical application and the claims have no additional elements that are significantly more.
With respect to the rejections under 35 USC 103, Applicants argue “Liu in view of Wang, Tsukhara, and Koga are silent with respect to the ellipsometric spectrum data and the absorption spectrum data, and a specific judgement according to no absorption or absorption.”
Examiner’s position is that regarding the amendment of “judgement according to no absorption or absorption” to made the claims, new grounds of rejection are made in view of Sun et al. and JP ‘726, as discussed above.
Applicants further argue “there is no step of judging whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film in Liu, and Wang, Tsukhara, and Koga fail to make up for this deficiency of Liu. Further, Liu does not disclose the absorption spectrum data in the instant claim 1, which is essential for the judgement whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film.”
Examiner’s position is that, as discussed above, judging whether the diamond film is the single-crystal diamond film is made obvious in view of Tsukhara et al., Koga, Sun et al., and JP ‘726, while it is noted that judging whether the diamond film is the polycrystalline diamond film is an alternative limitation.
Applicants further argue “the instant claim 1 comprises a judgement step. As is known to those of ordinary skill in the art, whether the processed diamond film is the single-crystal diamond film or the polycrystalline diamond film cannot be judged by naked eyes.”
Examiner’s position is that claim 1 does not recite whether the processed diamond film is the single-crystal diamond film or the polycrystalline diamond film cannot be judged by naked eyes. Instead, claim 1 recites judging whether the diamond film is the single-crystal diamond film or the polycrystalline diamond film by performing data analysis. As discussed above, judging whether the diamond film is the single-crystal diamond film is made obvious in view of Tsukhara et al., Koga, Sun et al., and JP ‘726, while it is noted that judging whether the diamond film is the polycrystalline diamond film is an alternative limitation.
Applicants further argue “Liu in view of Wang, Tsukhara, and Koga are silent with respect to a simple and accurate way for detecting the refractive indexes and the extinction coefficients of the single-crystal diamond film by judging the characteristics of the diamond film in advance.”
Examiner’s position is that, as discussed above, Liu discloses 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).
Applicants further argue “Liu in view of Wang, Tsukhara, and Koga are silent with respect to a difference in detecting refractive indexes in and extinction coefficients k of the single-crystal diamond film and the polycrystalline diamond film.”
Examiner’s position is that claim 1 does not recite a difference in detecting refractive indexes in and extinction coefficients k of the single-crystal diamond film and the polycrystalline diamond film. Instead, claim 1 recites executing step 41: obtaining optical constants and a thickness of the 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. Liu discloses the limitation as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 December 7, 2025