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 .
Claims 1, 4-5, 7-10, 12-14, 16-17, 19-22 and 27-28 are pending.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1, 4-5, 7-10, 12-14, 16-17 and 28, drawn to a bonded diamond assembly.
Group II, claim(s) 19-22, drawn to a method of making a bonded diamond assembly.
Group III, claim(s) 27, drawn to an electrochemical cell for treating a fluid.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a bonded diamond assembly comprising a polycrystalline diamond wafer having a largest linear dimension of between 25 mm and 200 mm, a substrate, and a bonding layer located between the diamond and the substrate and bonding them together, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Francis (U.S. 2019/0214260).
Francis discloses a bonded diamond assembly (see e.g. Paragraph 0001) comprising a polycrystalline diamond wafer having a largest linear dimension of at least 50 mm (see e.g. Fig. 2, polycrystalline diamond wafer 6 with diameter of at least 50 mm; Paragraph 0035, lines 6-8, Paragraph 0039, line 5, and Paragraph 0041, last 4 lines), a substrate (see e.g. Fig. 2, carrier substrate 2; Paragraph 0039, line 6), and a bonding layer located between the diamond and the substrate and bonding them together (see e.g. Fig. 2, electrically conductive layer 8 bonding diamond wafer 6 to carrier substrate 2; Paragraph 0039).
During a telephone conversation with Clark Weight on 01/13/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1, 4-5, 7-10, 12-14, 16-17 and 28. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-22 and 27 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1, 4-5, 7-10, 12-14, 16-17 and 28 are under consideration in this Office action.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claims 1 and 28 are objected to because of the following informalities:
In claim 1, lines 4, “substrate;” should read “substrate; and”.
In claim 28, lines 4, “substrate;” should read “substrate; and”.
In claim 28, line 6, “and wherein” should read “. 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 9-10 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 9 recites the limitation "the electrically conductive adhesive layer" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Though the limitation of “the bonding layer [being] electrically conductive” is introduced in line 5 of claim 7, there is no previous explicit mention of an “electrically conductive adhesive layer” in the claims. For examination purposes, this limitation has been interpreted to refer to electrically conductive bonding layer.
Any claims dependent on the above claim(s) are rejected for their dependence.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 7-10, 12, 14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Bray (EP 2709959 B1) in view of Forray (U.S. 2002/0062923).
Regarding claim 1, Bray teaches a bonded diamond assembly (see e.g. Paragraph 0018, diamond electrode assembly) comprising:
a polycrystalline diamond wafer having a largest linear dimension of 10 to 100 mm (see e.g. Paragraph 0032, lines 1-3, and Paragraph 0039, lines 1-2 and 6-7, sheet of polycrystalline diamond), overlapping the claimed range of the present invention,
a substrate (see e.g. Paragraph 0023, line 1); and
a bonding layer located between the diamond and the substrate and bonding them together (see e.g. Paragraph 0033, lines 1-3, diamond mounted on surface of substrate by an adhesive).
MPEP § 2144.05 I states “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
Bray does not explicitly teach the bonding layer, when inspected using ultrasound using a resolution of 50 µm, a focal length selected to inspect the bonding layer, and frequencies of 100 MHz and 30 MHz, comprising any of the following: no area of 10 mm by 10 mm comprising more than 100 voids extending across the thickness of the bonding layer with a largest linear dimension of less than 100 µm, no area of 10 mm by 10 mm comprising more than 5 voids extending across the thickness of the bonding layer with a largest linear dimension of between 100 µm and 1 mm, no area of 10 mm by 10 mm comprising more than 1 void extending across the thickness of the bonding layer with a largest linear dimension of greater than 5 mm, no area of 10 mm by 10 mm comprising more than 200 voids with a largest linear dimension of less than 100 µm, wherein said voids do not extend across the thickness of the bonding layer, no area of 10 mm by 10 mm comprising more than 10 voids with a largest linear dimension of between 100 µm and 2 mm, wherein said voids do not extend across the thickness of the bonding layer, and no area of 10 mm by 10 mm comprising more than 2 voids with a largest linear dimension of greater than 2 mm, wherein said voids do not extend across the thickness of the bonding layer. Bray does however teach the bonding layer comprising an electrically conductive adhesive such as an epoxy adhesive (see e.g. Paragraph 0023, lines 1-4, and Paragraph 0033, lines 3-4).
Forray teaches adhesive formulations for bonded assemblies (see e.g. Abstract) which may be electrically conducting epoxy-based adhesives (see e.g. Paragraphs 00014 and 0025), wherein the adhesive in the bonded assembly may be formed completely void-free, i.e. with zero voids of any size (see e.g. Paragraphs 0005-0006 and 0055), such void-free bonding providing a more reliable resulting article without disruption of the adhesive interface (see e.g. Paragraphs 0004 and 0055).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the bonding layer of Bray to be formed of a void-free adhesive formulation, i.e. with zero voids of any size, as taught by Forray to provide a more reliable bonded assembly without disruption of the adhesive interface. Though Forray does not explicitly relate to diamond assemblies, it is analogous art because it is directed toward the similar problem of providing an assembly with a secure adhesive bond (see e.g. Forray Paragraph 0004), as similarly described in Page 2, lines 8-24, of the instant specification. MPEP § 2141.01(a) states “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).”.
It should be noted that the limitations regarding the specific inspection method, e.g. “ultrasound using a resolution of 50 µm, a focal length selected to inspect the bonding layer, and frequencies of 100 MHz and 30 MHz” are not positively recited limitations of the claimed assembly and only relate to a method of evaluating the claimed assembly. The bonded assembly of Bray as modified by Forray teaches all the structural limitations of the claimed assembly, as stated above, regardless of the specific inspection method.
Regarding claim 7, Bray as modified by Forray teaches the polycrystalline wafer being electrically conducting (see e.g. Bray Paragraph 0032, line 1); the substrate being electrically conducting (see e.g. Bray Paragraph 0023, lines 1-2); and the bonding layer being electrically conductive (see e.g. Bray Paragraph 0023, lines 1-4; see e.g. Forray Paragraphs 0014 and 0025).
Regarding claim 8, modified Bray teaches the polycrystalline diamond wafer comprising boron doped diamond (see e.g. Bray Paragraph 0032, lines 7-8).
Regarding claim 9, Bray as modified by Forray teaches the electrically conductive adhesive layer being an electrically conductive epoxy resin (see e.g. Bray Paragraph 0023, lines 1-4, and Paragraph 0033, lines 3-4; see e.g. Forray Paragraphs 0014 and 0025).
Regarding claim 10, Bray as modified by Forray teaches the electrically conductive epoxy resin being formed from a two-part epoxy resin (see e.g. Forray Paragraphs 0011-0014, epoxy-based adhesive formulation with curing catalyst).
Regarding claim 12, modified Bray teaches the polycrystalline diamond wafer having an average thickness of 200 µm to 1 mm (see e.g. Bray Paragraph 0038, lines 7-8, 200 to 1000 microns).
Regarding claim 14, modified Bray teaches the polycrystalline diamond wafer having a largest linear dimension of 10 to 100 mm (see e.g. Bray Paragraph 0039, lines 1-2 and 6-7), overlapping the claimed ranges of the present invention (see MPEP § 2144.05 I as cited above).
Regarding claim 16, modified Bray teaches the substrate comprising a metal (see e.g. Bray Paragraph 0023, line 4).
Regarding claim 17, modified Bray teaches the metal being selected from any of titanium, tungsten and molybdenum (see e.g. Bray Paragraph 0023, lines 4-5).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Bray in view of Forray, as applied to claim 1 above, and further in view of McGuire et al. (U.S. 2012/0087072).
Regarding claim 4, modified Bray teaches all the elements of the assembly of claim 1 as stated above. Modified Bray does not explicitly teach the bonding layer, when inspected using ultrasound using a resolution of 50 µm, a focal length selected to inspect the bonding layer, and frequencies of 100 MHz and 30 MHz, comprising any of the following:
McGuire teaches a device comprising a film applied to a surface via an adhesive (see e.g. Paragraph 0009, lines 1-11), wherein the adhesive may be manufactured or filtered so that is free of contaminants, specifically with fewer than 30 contaminant particles larger than 5 µm per cubic meter (see e.g. Paragraph 0077), as the presence of such contaminants may reduce adhesion (see e.g. Paragraph 0005).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the bonding layer of modified Bray to be manufactured or filtered to be free of contaminants, specifically with fewer than 30 contaminant particles larger than 5 µm per cubic meter, as taught by McGuire to prevent such contaminants from reducing the adhesion in the bonded assembly. Though McGuire does not explicitly relate to diamond assemblies, it is analogous art because it is directed toward the similar problem of providing an assembly with a secure adhesive bond (see e.g. McGuire Paragraph 0005), as similarly described in Page 2, lines 8-24, of the instant specification. MPEP § 2141.01(a) states “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).”.
As stated above, the limitations regarding the specific inspection method, e.g. “ultrasound using a resolution of 50 µm, a focal length selected to inspect the bonding layer, and frequencies of 100 MHz and 30 MHz” are not positively recited limitations of the claimed assembly and only relate to a method of evaluating the claimed assembly.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bray in view of Forray, as applied to claim 1 above, and further in view of Francis (U.S. 2019/0214260).
Regarding claim 5, modified Bray teaches all the elements of the assembly of claim 1 as stated above. Modified Bray does not explicitly teach a surface of the polycrystalline diamond wafer having an average flatness selected from any of no more than 40 µm, no more than 30 µm, no more than 20 µm and no more than 10 µm. Bray does however teach that the polycrystalline diamond wafer may be a wafer known in the art (see e.g. Bray Paragraph 0032, lines 1-3).
Francis teaches a bonded diamond assembly (see e.g. Paragraph 0001) comprising a polycrystalline diamond wafer bonded to a substrate via a bonding layer (see e.g. Fig. 2 and Paragraphs 0035 and 0039), wherein the diamond wafer may have a thickness variation, i.e. flatness of a surface, of no more than 40 µm (see e.g. Paragraph 0041, lines 17-27 and 29-30), as may be required for various applications using diamond wafers such as semiconductor, photolithographic and optical applications (see e.g. Paragraphs 0002-0003).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the diamond wafer of modified Bray to be the polycrystalline diamond wafer with a thickness variation, i.e. flatness, of no more than 40 µm taught by Francis as a particular suitable polycrystalline diamond wafer known in the art for forming a bonded diamond assembly, such flatness also enabling use of the bonded diamond assembly in various applications such as semiconductor, photolithographic and optical applications. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Bray in view of Forray, as applied to claim 1 above, and further in view of Morita et al. (US 20190181113).
Regarding claim 13, modified Bray teaches all the elements of the assembly of claim 1 as stated above. Modified Bray does not explicitly teach the bonding layer having an average thickness selected from any of 10 µm to 250 µm, 15 µm to 150 µm, and 20 µm to 100 µm. Bray does however teach the bonding layer comprising an epoxy-based adhesive (see e.g. Bray Paragraph 0033, lines 3-4)
Morita teaches an assembly comprising a semiconductor wafer attached to a substrate via an epoxy-based adhesive bonding layer (see e.g. Paragraphs 0008-0009 and 0013), wherein the adhesive bonding layer preferably has a thickness of 1 to 100 µm to (see e.g. Paragraph 0012), overlapping the claimed ranges of the present invention (see MPEP § 2144.05 I as cited above), in order to provide sufficient adhesiveness and reduce production difficulties (see e.g. Paragraph 0063).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the bonding layer of modified Bray to have a thickness of 1 to 100 µm as taught by Morita as a suitable thickness for an epoxy-based adhesive bonding layer for attachment of a wafer to a substrate that may provide sufficient adhesiveness and reduce production difficulties. MPEP § 2143(I)(A) states that “combining prior art elements according to known methods to yield predictable results” may be obvious. The claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Francis.
Regarding claim 28, Francis teaches a bonded diamond assembly (see e.g. Paragraph 0001) comprising:
a polycrystalline diamond wafer having a largest linear dimension of greater than 50 mm (see e.g. Fig. 2, polycrystalline diamond wafer 6 with diameter of at least 50 mm; Paragraph 0035, lines 6-8, Paragraph 0039, line 5, and Paragraph 0041, last 4 lines), overlapping the claimed range of the present invention (see MPEP § 2144.05 I as cited above),
a substrate (see e.g. Fig. 2, carrier substrate 2; Paragraph 0039, line 6); and
a bonding layer located between the diamond and the substrate and bonding them together (see e.g. Fig. 2, electrically conductive layer 8 bonding diamond wafer 6 to carrier substrate 2; Paragraph 003),
wherein a first surface of the polycrystalline diamond wager opposite a second surface in contact with the bonding layer has an average flatness of no more than 40 µm (see e.g. Paragraph 0041, lines 17-27 and 29-30, diamond wafer with thickness variation, i.e. flatness of outer non-bonded surface, no more than 40 µm).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOFOLUWASO S JEBUTU whose telephone number is (571)272-1919. The examiner can normally be reached M-F 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.S.J./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795