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 .
EXAMINER’S COMMENT
Although a request for restriction had been presented to Applicant’s representative, attorney Jihun Kim (Reg. no. 80,730) via a phone call on 12/19/2025, in response to which attorney Kim requested a written restriction, upon further analysis of the claims and search of the prior art, it was concluded the claims 1-14 can be examined together.
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.
Claim(s) 1-3, 5-6 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. App. Pub. 2009/0325471 to Chou et al. (hereinafter Chou) in view of U.S. Pat. App. Pub. No. 2006/0112648 to Hanyu et al. (hereinafter Hanyu).
With respect to claim 1, Chou teaches a diamond polishing disk comprising a hardened base, shown by reference no. 600 (i.e. claimed “shank base”) having diamond particles, shown by reference no. 500 (i.e. claimed “plurality” of “diamonds”), assembled thereon using a curing glue, shown by reference no. 700 (i.e. claimed “a bonding layer”) (Chou, Abstract, [0025]-[0027], and Figure 4B). The acute polishing ends of the diamond particles are exposed from the surface of the base (Chou, [0026]). Chou, additionally, teaches the diamond particles are radially distributed on the base and the acute polishing ends are increasingly inclined in concentric circles to an outer periphery sequentially by taking an axial center of the base as a reference; although the inclined angles may be increasingly increased from the concentric circles to the axial center sequentially, Chou is not limited to only this embodiment (Chou, [0027]). It is important to note that according to the teachings of Chou, having different arrangement angles is only one embodiment of the reference (Chou, [0027] and Figure 3); Chou specifically discloses “it should be noted that the diamond polishing disk according to the present invention may be formed into the diamond polishing disk having the diamond particles of different arrangement angels as shown in FIGS. 4A and 4B by changing shapes, angles, or sizes of the grooves 201 of the guiding mold 200, for example, changing the structures of the grooves 201 to the pyramid having different side lengths” (Chou, [0027]). Thus, the reference is open to having all diamond particles being arranged in one inclined angle as well. Considering the fact that Chou renders the arrangement of the diamond grains in such a way that they all would be arranged in one angle, the reference is seen to render obvious “at least” some of the plurality of diamonds being disposed “in the bonding layer in a posture in which an uppermost surface thereof meeting a long axis” of the boron-doped “diamond is inclined downward from an upper end of the major axis”. Nevertheless, the claim does not require all the diamond particles having the same inclined angle; thus, even if considering other embodiments of Chou, the reference still renders this limitation obvious. It is important to note that the diamond grains of Chou are disposed in the curing glue, shown by reference no. 700, i.e. claimed bonding layer; thus, Chou renders the limitation of the last three lines of claim 1 obvious.
Chou, however, does not expressly and/or literally disclose the use of “boron-doped” diamonds.
Hanyu is directed to cutting tools having a boron-doped diamond coating to improve the wear resistance, oxidation resistance, and lubricity of the cutting tool (Hanyu, abstract, [0020]). Hanyu teaches that a diamond coating, without any boron dopant on the diamond, does not show sufficient durability by oxidation nor any significant wear resistance (Hanyu, [0006]); however, boron-doped diamond coating provides improvement in durability in oxidation resistance and lubricity (Hanyu, [0007]). In particular, Hanyu teaches in boron-doped diamond coating, a layer of boron oxide such as B2O3 is formed on the surface when the surface is oxidized, and therefore progression of oxidation is blocked by the layer of boron oxide; this provides high oxidation resistance and lubricative coating with a lower coefficient of friction (Hanyu, [0018]).
It is important to note although the disclosure of Hanyu may not be referring to doping “particles” of diamond with boron, the teachings are directed to the effects and benefits of boron as the dopant on diamond; such benefits on diamond, even in the form of coating, would inevitably be seen in diamond in the form of particles as well.
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Chou with the teachings of Hanyu, in order to incorporate boron doping onto the diamond particles of Chou with the aim of increasing improving the durability of the diamond disk by increasing the wear resistance of its diamond particle as that taught by Hanyu.
With respect to claim 2, the combination of Chou in view of Hanyu is seen render claim 2 obvious; this is because Chou is open to having diamond grains assembled onto the base in angles, and some of the particles arranged in angles, as shown in Figures, are clearly arranged in an angle of greater than 50˚ and less than 90˚. It is, again, noted that the reference is not directed to having diamond grains arranged in a plurality of angles on a base, but that this is only one embodiment ([0026]-[0027]). Thus, although none of the Figures show all diamond grains arranged in the same inclined angle, this is something well within the teachings of the reference.
With respect to claim 3, Chou in view of Hanyu is seen to render the claim obvious; this is, in particular, because Chou is keen in keeping the surface of the diamond disk flat on the periphery of the diamond particles (Chou, [0025]), it is expected of the “wetting angle at which a surface of the bonding layer and a surface of each of the boron-doped diamonds meet” is about 0˚.
With respect to claim 5, Chou in view of Hanyu is seen to render the claim obvious; this is, in particular because Hanyu teaches an amount of 0.05-2.0 atomic % of boron doping (Hanyu, [0025]). This is take to render the claimed range of 1-2000 ppm obvious because 1 atomic% is approximately 10,000ppm; thus, 0.05-2 atomic% results in approximately 500-20,000 ppm.
MPEP 2144.05 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 6, Chou in view of Hanyu is seen to render the claim obvious; this is, in particular because the combination reads on having diamond doped with boron in a doping concentration that overlaps with the one claimed in dependent claim 5. As such, the characteristic of the boron-doped diamond having a “magnetic saturation susceptibility per unit volume” in a range of “20 to 800 per unit volume” is expected to follow from the disclosure of the combination of references because substantially similar materials cannot have mutually exclusive characteristics.
With respect to claim 9, the combination of Chou in view of Hanyu discloses the limitations of claim 1, and render obvious the limitations of at least claims 2-3, 5, and 6 as detailed out above. Therefore, the claimed characteristic of “a pad cut rate (PCR) test equipment when a CMP Pad conditioner made of the boron-doped diamonds is rotated at 100 rpm to 120 rpm and a polishing pad is rotated at 80 rpm to 95 rpm, it takes more than 13 hours until a PCR by the boron-doped diamond lowers to 2 to 10 µm/hr range for pad conditioning in a state in which the CMP Pad conditioner made of the boron-doped diamonds presses the polishing pad at 4 to 9 lbf” is expected to follow from the diamond disk of Chou in view of Hanyu because substantially similar materials having very similar compositions cannot have mutually exclusive characteristics.
Allowable Subject Matter
Claims 10-14 are allowed.
The following is an examiner’s statement of reasons for allowance: The prior art do not disclose or suggest the cumulative limitations of claim 10; the prior art do not disclose or suggest a diamond disc manufacturing method, comprising: a bonding material application step of applying a bonding material to a surface of a shank base; a pre-sintering step of heating the bonding material applied to the surface of the shank base to a first temperature range to form a pre-sintered bonding layer; a diamond providing step of providing a plurality of boron-doped diamonds (BDD) to the surface of the pre-sintered body; and a heat treatment step of performing heat treatment in a second temperature range so that at least some of the plurality of boron-doped diamonds are disposed in the bonding layer in a posture in which an uppermost surface meeting a long axis of the boron-doped diamond is inclined downward from an upper end of the major axis.
U.S. Pat. App. Pub. No. 2009/0325471 to Chou et al. (hereinafter Chou), which has been relied on as the primary reference to reject claims 1-3,5-6, and 9, although disclose a manufacturing method for the diamond polishing disk, does not disclose the cumulative limitations of claim 10. Chou discloses an accommodation unit is provided, and a plurality of diamond particles are adhered to the plastic material in which the diamond particles are adhered to the plastic material (Figures 2A to 2F, [0023]). Then a guiding mold is provided and pressed onto the diamond particles so they are inserted in the grooves of the guiding mold in such a way that the acute angle of the diamond particles lean against the grooves. Next, a polymer material is injected into the accommodation unit (see Fig. 2C and [0024]) and covers the diamond particles. The polymer material is hardened to form a base; then the accommodation unit and the plastic material are removed, and the diamond disk is formed. Because the flatness of the surface of the base is poor, in order to improve the flatness, a curing glue, ref. no. 700, is formed on the hardened base ([0025]).
As such, Chou does not disclose applying the diamond grains onto a pre-sintered bonding material which has already gone through a first temperature heating prior to application of the grains, followed by a second temperature heating after the application of diamond grains.
Further search did not result in any references anticipating or rendering independent claim 10 obvious.
U.S. Pat. App. Pub. No. 2012/0231711 to Keipert et al. (hereinafter Keipert) disclose a coated abrasive article wherein the abrasive particles can be assembled in the format of being tipped or leaned (abstract; [0044]). Keipert discloses applying a make coat to a first major surface of a backing, followed by applying the abrasive particles, then applying diluent particles, then applying a size coat, and finally curing ([0012]). The reference does not disclose a partial curing of the make coat after application of the make coat but prior to the application of the abrasive particles. It is noted that Keipert discloses the use of diamond as example of abrasive particles ([0029]) and a combination of Keipert in view of Hanyu would have rendered a “boron-doped” diamond obvious.
U.S. Pat. App. Pub. No. 2020/0338692 to Liu et al. (hereinafter Liu) discloses a method of producing abrasive article which comprises providing a backing, applying a make precursor over at least one major surface of the backing, embedding the abrasive particles which may be diamond, at least partially curing the make precursor layer, followed by applying an antiloading composition (abstract, [0010] and [0065]). However, in order for the reference to read on or render claim 10 obvious, it needs to disclose partial curing of the make precursor prior to application of the abrasive particles, but such a disclosure is missing in the reference. Although Liu does not disclose “boron-doped” diamond, this limitation can be rendered obvious through the use of a secondary reference.
Claims 4, 7, and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art do not disclose or suggest the cumulative limitations of claims 1 and 4 with particular attention given to “a ratio of a thickness of the bonding layer to an average diameter of the boron-doped diamonds is in a range of 30% to 65%”.
Chou discloses an average diamond grain of 250-420 microns (Chou, [0023]); although the thickness of the curing glue shown by reference no. 700, which has been taken to read on the claimed “bonding layer”, is much thinner compared to the diameter of the diamond grains, as shown and reflected in the Figures, there is no disclosure of the thickness value for the curing glue layer shown by reference no. 700. As such, no conclusion can be made as to whether a ratio of the thickness of the bonding layer to an average diameter of the diamond grains fall within the claimed range of 30-65%.
Additionally, the prior art do not disclose or suggest the cumulative limitations of claims 1 and 7 with particular attention given to a ratio of a density of the boron-doped diamonds to a density of the bonding layer being maintained in a range of 0.4 to 0.6.
Claim 8 depends from claim 7; thus, the prior art do not teach or render obvious claim 8 either.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
