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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-8 in the reply filed on Mar. 23, 2026 is acknowledged.
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.
Claim 5 is 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 5 recites the limitation “the diamond particles” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4, 6-8, 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 2015/0218694 A1) (“Xu”), in view of Jarmon (US 9897398 B2).
With respect to claim 1, Xu discloses a bonded diamond composite (abstr., 0064), comprising a ceramic composite layer – element 6, a diamond film layer – element 4, and a silicon carbide layer bonding the diamond film layer to the ceramic composite layer (0063, 0064). The recitation “wherein a portion of the diamond layer is converted into the silicon carbide bonding layer” relates to a process of forming the composite. Xu discloses that a silicon carbide bonding layer is formed during the process of making the ceramic composite layer wherein diamond particles react with silicon forming an interface layer comprising silicon carbide (0064); the interface layer of silicon carbide has been interpreted as an element corresponding to the silicon carbide bonding layer, thus, Xu discloses the element of the silicon carbide bonding layer.
Xu is silent with respect to the ceramic composite layer comprising flow channels. Jarmon discloses a ceramic composite, comprising a heat transfer layer – element 16, comprising flow channels – elements 24 for cool fluid (abstr., col. 6, lines 5-20, Fig. 1). Since the composite of Xu can be used in thermal management (0016), it would have been obvious to one of ordinary skill in the art to provide the ceramic composite layer of Xu with flow channels for cool fluid passage.
Regarding a portion of the diamond layer being converted into the silicon carbide bonding layer, the claim defines the product by how the product is made, thus, claim 1 is a product-by-process claim. For purposes of examination product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113).
Regarding claim 2, Xu and Jarmon teach the composite of claim 1. Xu teaches the ceramic composite layer comprises a plurality of diamond particles bonded with a matrix comprising silicon carbide (0061, 0064).
As to claim 3, Xu and Jarmon teach the composite of claim 2. Jarmon teaches the matrix – comprising silicon carbide – is connected to the silicon carbide bonding layer – the interface layer (0064).
With respect to claim 4, Xu and Jarmon teach the composite of claim 2. Xu teaches the silicon carbide of the matrix is bonded to the silicon carbide bonding layer – diamond layer 4 grows on the interface layer – the silicon carbide bonding layer and silicon carbide particles of the ceramic composite layer – the matrix (0064), it is implied that the silicon carbide of the matrix is bonded to the silicon carbide bonding layer (0064)
Regarding claim 6, Xu and Jarmon teach the composite of claim 2. Xu discloses the ceramic composite layer comprises 50% or more by volume of the diamond particles (0065). The range of the percentage overlaps the range recited in claim 6; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
As to claim 7, Xu and Jarmon teach the composite of claim 1. Xu does not specify explicitly the average thickness of the silicon carbide bonding layer as recited in the claim, however, Xu discloses a thickness of the diamond film layer (0072), a thickness of the ceramic composite layer (0073), and the thickness of the composite (0074), the dimensions specified indicating a thickness of the silicon carbide bonding layer that overlaps the range recited in claim 7; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
With respect to claim 8, Xu and Jarmon teach the composite of claim 1. Xu does not specify explicitly that the silicon carbide bonding layer comprises less than 10% by volume of residual elemental carbon, the characteristic that is related to a process of making the composite. However, Xu discloses that diamond particles react without limitation with silicon (0064), thus it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the amount of residual elemental silicon in the silicon carbide bonding layer is within the recited range.
Regarding claim 24, Xu and Jarmon teach the composite of claim 1. Since in Xu the diamond layer grows on the interface layer – the silicon carbide bonding layer and on the silicon carbide particles included in the ceramic composite layer (0064), it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the silicon carbide bonding layer forms a hermetic seal between the diamond film layer and the ceramic composite layer.
With respect to claim 25, Xu and Jarmon teach the composite of claim 1. Jarmon discloses the flow channels comprise a heat transfer fluid (col. 6, lines 5-20).
Regarding claim 26, Xu and Jarmon teach the composite of claim 1. The claim defines the product by how the product is made, thus, claim 26 is a product-by-process claim. For purposes of examination product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case the recited steps imply the structure of claim 26. The references teach the structure.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu, in view of Jarmon, and further in view of Katsikis et al. (US 2021/0179498 A1) (“Katsikis”).
With respect to claim 5, Xu and Jarmon teach the composite of claim 1, but are silent regarding the diamond particles of the ceramic composite layer having a median particle diameter as recited in the claim. Xu teaches the diamond particles have a diameter ranging from a few nanometers to a few hundred microns (0068).
Katsikis discloses a composite comprising diamond particles embedded in a silicon carbide matrix (abstr.), wherein the diamond particles have a diameter of 4 to 100 µm (0022). The range of the diameter overlaps the range recited in claim 5; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the ceramic composite of the composite of Xu and Jarmon comprising diamond particles as suggested in Katsikis as diamond particles having such a diameter are known in the art of composites comprising silicon carbide matrix and diamond particles.
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783
Prosecution Insights