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 .
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.
Claim(s) 1-4, 7-12, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumiya et al (US 6,030,595) in view of Sumiya et al (US 5,908,503) Ikeda et al (US 2014/0219907).
Sumiya et al (‘595) teaches a single-crystal diamond having an X-ray diffraction rocking curve with a half- width of 20 seconds or less, wherein the half-width of the X-ray diffraction rocking curve is measured with CuKa radiation in a (004) plane parallel arrangement using a diamond crystal as a first crystal in X-ray diffraction by a double-crystal method (col 4, ln 1-67 and example 5 teaches a single crystal diamond and the FWHM of the X-ray diffraction rocking curve is at most 10 arcseconds, preferably at most 6 arcseconds, with explicit examples of 5.6 arcsecond, in the case of measuring by CuKa ray with an arrangement in parallel to (004) plane). It is noted that Sumiya et al teaches arcseconds and the claim is for seconds, however it is conventionally known in the art at the time of filing that in the X-ray diffraction that seconds is equivalent to arcseconds, as evidenced by US 2022/0028981 in paragraph [0068]. Sumiya et al (‘595) teaches a peak at a Raman shift in the range of 1332 cm-1 to 1333 cm-1 in a Raman spectrum has a half-width of 2.0 cm-1 or less (col 8, ln 1-67 and col 15, ln 1-60 teaches 2.0 cm-1 or less, and an explicit example of 1.8 cm-1). Sumiya et al (‘595) teaches the single-crystal diamond has a nitrogen content of less than 0.1 ppm based on the number of atoms (Table 1-2, which clearly suggests a nitrogen content in the range of 0.0001 ppm to 0.1 ppm. Overlapping ranges are prima facie obvious (MPEP 2144.05).
Sumiya et al (‘595) does not explicitly teach the single-crystal diamond has an etch-pit density of 10,000 /cm2 or less, the etch-pit density is measured in an etching test.
In a method of making single crystal diamond, Sumiya et al (‘503) teaches producing a diamond single crystal by the temperature gradient method, and an etching test is ordinarily carried out by etching a diamond crystal in a crucible of platinum, etc. using a fused salt of KNO3 in which the etch pits due to needle-shaped defects are at most 3x105 pieces/cm2 and explicit examples with an etch pit density of 2x102 pieces/cm2 (Abstract; col 8, ln 1-67; col 10, ln 1-67), which clearly suggests an etch-pit density of 10,000 /cm2 or less, the etch-pit density is measured in an etching test. Overlapping ranges are prima facie obvious (MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Sumiya et al (‘595) to make a single crystal diamond to have an etch pit density of 10,000 /cm2 or less, as taught by Sumiya et al (‘503), because etch pits are caused by defects and producing a defect free diamond is desirable and the etch pit density is within the known range of one ordinary skill in the art at the time of filing, as evidenced by Sumiya et al (‘503).
The combination of Sumiya et al (‘595) and Sumiya et al (‘503) does not explicitly teach the single-crystal diamond has a 13C content of less than 0.01 % based on the number of atoms. The combination of Sumiya et al (‘595) and Sumiya et al (‘503) also does not explicitly teach the number of defects by an X-ray topographic image is 88/cm2 or less.
In a method of making single crystal diamond, Ikeda et al a single-crystal diamond is grown from the seed crystal at a high temperature and a high pressure to produce a single-crystal diamond in which a concentration of the carbon isotope 12C was 99.99 mass % or 99.999%; and preventing the introduction of a carbon isotope 13C to produce a diamond with a carbon isotope 12C of 99.999% or more ([0069]-[0087], [0113], [0121]-[0137], [0183]-[0194], [0202]-[0219], [0227]-[0237], which clearly suggests the single-crystal diamond has a 13C content of less than 0.01 % based on the number of atoms because overlapping ranges are prima facie obvious (MPEP 2144.05). Ikeda et al teaches by increasing a concentration of a carbon isotope 12C (purity of a carbon isotope) in diamond and setting a content of an inevitable impurity to an unprecedented low level as above, non-uniformity in a diamond crystal can be extremely low and bond between crystal lattices can be stronger, thus increasing hardness ([0144]). Ikeda et al also teaches the single-crystal diamond in the present embodiment has defect density not higher than 10/cm2, and a portion free from a shaded portion indicating a defective site can be extracted from an image taken in X-ray topography; and a defect density was 0/cm2 in a measurement area of 5-mm square ([0172], [0196]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595) and Sumiya et al (‘503) does not explicitly teach the single-crystal diamond has a 13C content of less than 0.01 % based on the number of atoms, as taught by Ikeda et al, to increase hardness. Furthermore, It would have been obvious to one of ordinary skill in the art at the time of filing to modify combination of Sumiya et al (‘595) and Sumiya et al (‘503) by minimizing defects to be less than 88/cm2, which is within the ordinary skill in the art at the time of filing, as evidenced by Ikeda et al which teaches a single crystal diamond with 0/cm2 defects.
Referring to claim 2, the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches a the half-width of the X-ray diffraction rocking curve is 10 seconds or less (Sumiya ‘595 col 4, ln 1-67 and example 5 teaches a single crystal diamond and the FWHM of the X-ray diffraction rocking curve is at most 10 arcseconds, preferably at most 6 arcseconds, with explicit examples of 5.6 arcsecond, in the case of measuring by CuKa ray with an arrangement in parallel to (004) plane), a peak at a Raman shift in the range of 1332 cm-1 to 1333 cm-1 in the Raman spectrum has a half-width of 1.9 cm-1 or less (Sumiya ‘595 teaches in example 13 a half-width of 1.6 cm-1), the etch-pit density is 1000 / cm2 or less (Sumiya ‘503 col; 10, ln 1-67 teaches 2x102 pieces/cm2). In regards to “the number of defects identified in an X-ray topographic image is 88 /cm2 or less,” the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches examining the state of defects of the diamond using X-ray topography or etching test to cut out a defect free seed, and a diamond crystal having no crystal defects by X-ray topography and a mean etch pit density of 1x102 pieces/cm2 and a defect density was 0/cm2 in a measurement area of 5-mm square using X-ray topography (Sumiya ‘503 col 8, ln 1-67; col 11, ln 1-50; Ikeda ([0172], [0196]); therefore, the number of defects identified in an X-ray topographic image would be expected to be 88 /cm2 or less.
Referring to claim 3-4, the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al does not explicitly teach the phase difference. The combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches producing a substantially similar product (all of the feature of claim 1), as applicant, and the diamond taught by the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al is substantially defect free, and a phase difference is cause by a distribution caused by crystal defects (see applicant’s published application [0111]), and reducing defects and distortion limits the phase difference to a lower limit of 0 nm/mm (see applicant’s published application [0115]). Therefore, the claimed phase difference would be expected because the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches a substantially similar product as applicant regarding defects, thus a defect free diamond would be expected to have the claimed phase difference.
Referring to claims 7 and 9, the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches the nitrogen content is at most 0.1 ppm, and the boron content is at most 0.1 ppm (Sumiya ‘595 Abstract). Overlapping ranges are prima facie obvious (MPEP 2144.05). Changes in concentration are prima facie obvious (MPEP 2144.05); therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al by optimizing the concentration of nitrogen and boron by conducting routine experimentation within the taught ranges of less than 0.1 ppm for nitrogen and boron to obtain the claimed nitrogen and boron concentration to obtain desired properties.
Referring to claim 8 and 10, the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches the nitrogen content is at most 0.1 ppm, and the boron content is at most 0.1 ppm (Sumiya ‘595 Abstract). Overlapping ranges are prima facie obvious (MPEP 2144.05). It is noted that a concentration of nitrogen of 0.1 ppm and a boron concentration is 0.01 ppm would meet the claimed limitation and would overlap the ranges taught by the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al. Changes in concentration are prima facie obvious (MPEP 2144.05); therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al by optimizing the concentration of nitrogen and boron by conducting routine experimentation within the taught ranges of less than 0.1 ppm for nitrogen and boron to obtain the claimed nitrogen and boron concentration to obtain desired properties.
Referring to claim 11-12, the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches producing diamond crystals having a diameter of 5 mm (Sumiya ‘503 col 10, ln 1-67). Furthermore, changes in size and shape are prima facie obvious (MPEP 2144.04); therefore, producing larger diameter diamond crystals would have been obvious to one of ordinary skill in the art at the time of filing.
Referring to claim 17, see remarks above. Also, the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches the nitrogen content is at most 0.1 ppm, and the boron content is at most 0.1 ppm (Sumiya ‘595 Abstract). Overlapping ranges are prima facie obvious (MPEP 2144.05). Changes in concentration are prima facie obvious (MPEP 2144.05); therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al by optimizing the concentration of nitrogen and boron by conducting routine experimentation within the taught ranges of less than 0.1 ppm for nitrogen and boron to obtain the claimed nitrogen and boron concentration to obtain desired properties. Furthermore, boron is an impurity; therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al to minimizing boron impurities to be 0 ppm; therefore, would overlap the claimed boron content of 0.7692% of nitrogen. It is noted that a boron concentration of less than 0.1 ppm would include 0 ppm, thus would be less than 0.7692% the concentration of nitrogen. It is noted that Twitchen et al (US 2009/0127506) teaches diamond having a boron concentration of less than 0.1 ppb ([0041]).
Claim(s) 5-6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumiya et al (US 6,030,595) in view of Sumiya et al (US 5,908,503) Ikeda et al (US 2014/0219907), as applied to claim 1-4, and 7-12 above, and further in view of Twitchen et al (US 2010/0329962).
The combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches all of the limitations of claim 5-6, as discussed above, except the NV center content ranges from 0.1 ppm or less , or 0.00001 ppm to 0.1 ppm. The combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al does not explicitly teach the nv center content is 0.1 ppm or less. The combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches the nitrogen content is at most 0.1 ppm, and the boron content is at most 0.1 ppm; and the number of nitrogen and boron atoms contained in diamond crystal are substantially the same (Sumiya ‘595 Abstract; col 6, ln 1-67, col 7, ln 60 to col 8, ln 21). Applicant teaches the NV center 100 is a complex defect composed of a substitutional nitrogen atom (N) and a vacancy (V) (See [0119] of the published application). Therefore, having a nitrogen content of less 0.1 ppm would be expected to produce an NV content of less than 0.1 ppm.
In a method of making a diamond material, Twitchen et al teaches introducing NV centres in single crystal diamond material, and one step of the method comprises irradiating diamond material that contains single substitutional nitrogen to introduce isolated vacancies into the diamond material in a concentration of at least 0.05 ppm and annealing the irradiated diamond material to form NV centers from at least some of the single substitutional nitrogen) (abstract; [0018]). Twitchen et al teaches NV centers are responsible for the desirable color, and/or spin properties in the treated diamond and the NV concentration formed was greater than 0.03 ppm and examples with NV totals of 0.011, 0.030, 0.032 (Twitchen [0057], [0199], Table 12). Overlapping ranges are prima facie obvious (MPEP 2144.05).
Referring to claims 5-6, It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al by irradiating and annealing the diamond to form NV centers in the range of 0.00001 ppm to 0.1 ppm, as taught by Twitchen et al, to form useful NV centers ([0004]).
Referring to claim 16, see remarks above. Also, the combination of Sumiya et al (‘595), Sumiya et al (‘503), Ikeda et al and Twitchen et al teaches the NV concentration formed was greater than 0.03 ppm and examples with NV totals of 0.011, 0.030, 0.032 (Twitchen [0057], [0199], Table 12). Overlapping ranges are prima facie obvious (MPEP 2144.05).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumiya et al (US 6,030,595) in view of Sumiya et al (US 5,908,503) Ikeda et al (US 2014/0219907), as applied to claim 1-4, and 7-12 above, and further in view of Twitchen et al (US 2009/0127506).
The combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches all of the limitations of claim 13, as discussed above, except the single crystal diamond has a single sector content of 70 by volumes or more.
In a method of making diamond, Twitchen et al teaches selecting a seed with a major face of the required orientation, loading the seed (or seeds) with the major face oriented substantially parallel to the surface of a suitable support in such a way that the major face is substantially normal to the direction of the greatest flux of carbon nutrient species and will give rise to a preferred growth sector, carrying out growth in an HPHT environment for a sufficient time to ensure that a crystal of suitable size and height is grown ([0085]-[0100]). Twitchen et al also teaches the seed crystal may be sawn from a larger crystal of high crystalline perfection and further it should be sawn from a single growth sector of such a crystal ([0105]-[0106]). Twitchen et al teaches the NV concentration formed was greater than 0.03 ppm and examples with NV totals of 0.011, 0.030, 0.032 (Twitchen [0199], Table 12).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al by growing the diamond to have a single growth sector, as taught by Twitchen et al, and It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al by cutting out a single growth sector to encompass greater than 90% of the volume to be used as a seed crystal.
Referring to claim 14, the combination of Sumiya et al (‘595), Sumiya et al (‘503), Ikeda et al and Twitchen et al teaches a cutting out a single growth sector to be used as a seed which clearly suggests greater than 90% of volume is a single growth sector.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumiya et al (US 6,030,595) in view of Sumiya et al (US 5,908,503), Ikeda et al (US 2014/0219907) and Twitchen et al (US 2009/0127506), as applied to claim 1-4, and 7-14 above, and further in view of Satoh et al (US 4,836,881) and Sumiya et al (EP 0603995).
The combination of Sumiya et al (‘595), Sumiya et al (‘503), Ikeda et al and Twitchen et al teaches all of the limitations of claim 15, as discussed above, except the combination of Sumiya et al (‘595), Sumiya et al (‘503), Ikeda et al and Twitchen et al does not explicitly teach a seed substrate having an inscribed circle diameter of more than 1.0 mm. The combination of Sumiya et al (‘595), Sumiya et al (‘503), Ikeda et al and Twitchen et al does not explicitly teach introducing a nitrogen gettering consisting on Ti and has a Ti content of 3.0% or more.
In a method of diamond growth, Satoh et al teaches a synthesizing a large single crystal diamond having a diameter of 8 mm or more by the temperature gradient method, wherein a (111) or (100) surface of a seed crystal having a diameter of 3 mm or more is used as a growing surface, wherein the pressure and temperature employ is 5.8 GPa and 1410°C (abstract; col 3, ln 1-65; col 11, ln 1-67), which clearly suggests a seed with an inscribed diameter of more than 1.0 mm using a high temperature and high pressure synthesis method.
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503), Ikeda et al and Twitchen et al by using a seed having a diameter greater than 1.0 mm, as taught by , Satoh et al, to grow a larger single crystal diamond.
In a method of diamond growth, Sumiya et al (‘995) teaches a process for the synthesis of diamond single crystal by a temperature gradient method, which comprises adding at least one element selected from Ti, Zr, Hf, V, Nb or Ta as a nitrogen getter and the amount of the element selected from Ti, Zr, Hf, V, Nb or Ta to be added as a nitrogen getter is preferably in the range of from 0.1 to 5 % by weight based on the solvent (abstract; col 4, ln 1-55).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503), Ikeda et al, Twitchen et al and Satoh et al by using a nitrogen gettering consisting of Ti having a concentration greater than 3.0%, as taught by Sumiya et al (‘995) because overlapping ranges are prima facie obvious (MPEP 2144.05) and the selection of a known material based on its suitability for its intended purpose is prima facie obvious (MPEP 2144.07).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/283,788 (‘788) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘788 claims all of the limitations of applicant’s claim 1, except ‘788 claims the single-crystal diamond has a 13C content in the range of 0.01% to 1.0% based on the number of atoms. The instantly claimed invention claims a 13C content of less than 0.01%. A prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to produce products having the same properties. Titanium metal Corp. Am v Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Referring to claims 2-15, see claims 2-15 of ‘788.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 11-14 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 7-15 of copending Application No. 18/283,803 (‘803) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘803 claims all of the limitations of applicant’s claim 1, except ‘803 does not claim a 13C content of less than 0.01%. ‘803 claim 7, claims a 13C content of less than 1.0 %. Therefore, It would have been obvious to one of ordinary skill in the art at the time of filing to modify ‘803 by having a 13C content of less than 0.01% because overlapping ranges are prima facie obvious (MPEP 2144.05). ‘803 claims a number of defects identified in an X-ray topographic image is 100 cm2 or less (‘803 claim 2) overlaps the claimed range of 88/cm2 or less. Overlapping ranges are prima facie obvious (MPEP 2144.05).
Referring to claim 2-6, and 11-14, see claims 2-4, and 7-15.
Referring to claim 17, ‘803 claims boron is 10% or less than nitrogen (‘803 claim 10), which overlaps the claimed range less than 0.7692%. Overlapping ranges are prima facie obvious (MPEP 2144.05).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 and 11-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding claim 1 are noted but not found persuasive. Applicant alleges that the prior art does not teach the number of defects identified by an X-ray topographic image is 88/cm2 or less. Sumiya et al (‘503) teaches a mean etch pit density of 1x102 pieces/cm2 which is greater than the 88/cm2, however etch pit density and defect density by X-ray topography are different. Sumiya et al (‘503) also teaches a diamond crystal having no crystal defects by X-ray topography, and Ikeda teaches a a defect density was 0/cm2 in a measurement area of 5-mm square using X-ray topography (Sumiya ‘503 col 8, ln 1-67; col 11, ln 1-50; Ikeda ([0172], [0196]).
Applicant’s argument regarding claims 16 is noted but not found persuasive. Applicant alleges the prior art does not teach an NV center content of 0.04 ppm or less. Twitchen et al teaches NV centers are responsible for the desirable color, and/or spin properties in the treated diamond and the NV concentration formed was greater than 0.03 ppm and examples with NV totals of 0.011, 0.030, 0.032 (Twitchen [0057], [0199], Table 12). Overlapping ranges are prima facie obvious (MPEP 2144.05).
Applicant’s arguments regarding claim 17 is noted but not found persuasive. Applicant alleges that the prior art does not teaches boron content is less than 0.7692% of the nitrogen content is noted but not found persuasive. Applicant teaches the lower limit of the boron content of the single-crystal diamond is preferably as low as possible and is therefore preferably 0 ppm or more ([0103] of the published application). Likewise, the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al teaches the nitrogen content is at most 0.1 ppm, and the boron content is at most 0.1 ppm (Sumiya ‘595 Abstract). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Sumiya et al (‘595), Sumiya et al (‘503) and Ikeda et al to minimizing boron impurities to be 0 ppm; therefore, would overlap the claimed boron content of 0.7692% of nitrogen. It is noted that a boron concentration of less than 0.1 ppm would include 0 ppm, thus would be less than 0.7692% the concentration of nitrogen. It is noted that Twitchen et al (US 2009/0127506) teaches diamond having a boron concentration of less than 0.1 ppb ([0041]). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Here, the prior art clearly suggests a boron concentration of 0 ppm; therefore any benefit of having the boron concentration being less than 0.7692% the concentration of nitrogen would merely be another advantage which would flow naturally from following the suggestion of the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2022/0028981 teaches X-ray rocking curve analysis where the unit “second” herein is also called “arcsecond ([0068]).
US 2022/0307997 teaches depending on the nitrogen and hydrogen content of the diamond blanks prior to irradiation, a diamond with a NV center density of more than 0.1 ppm and/or of more than 0.01 ppm ([0106]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J SONG whose telephone number is (571)272-1468. The examiner can normally be reached Monday-Friday 10AM-6PM.
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MATTHEW J. SONG
Examiner
Art Unit 1714
/MATTHEW J SONG/ Primary Examiner, Art Unit 1714
Prosecution Insights