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 1-15 in the reply filed on 11/12/2025 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 2 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.
In claim 2, line 6, the phrase “the number of defects” lacks antecedent basis in the claims.
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) 1-10, and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2006048957.
Regarding claim 1, WO ‘957 teaches a single crystal diamond (Abstract) having an x-ray diffraction rocking curve of 20 seconds (Paragraph [0057]), having a Raman shift of 1332 cm^-1 of 2 cm^-1 or less (Claim 12). The etch pit density is 1x10^5 per square centimeter (Claim 13), which overlaps the claimed range of 10000 per square centimeter or less. The nitrogen content may be 0.01 to 5 ppm (Claim 18), which overlaps the claimed range. 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).
Regarding claim 2, the rocking curve may be may be between 10 and 80 seconds, which overlaps the range of instant claim 2. And the as indicated in the rejection of instant claim 1, the properties of Raman shift, etch density, and nitrogen content overlap the ranges of instant claim 2. 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).
Regarding claim 3-4, the phase difference is 50nm per 100m (Paragraph [0059]), which is less than 10nm/mm.
Regarding claims 5-6, WO ‘957 does not expressly state that the NV center content is 40 or 25 ppm or less. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112.
Regarding claims 7-8, WO ‘957 is silent with respect to the content of carbon 13. However, the silence may be understood that the product inherently lacks any carbon 13 or it would have been obvious to make the product excluding carbon 13.
Regarding claims 9-10, WO ‘957 is silent with respect to the content of boron. However, the silence may be understood that the product inherently lacks any boron or it would have been obvious to make the product excluding boron.
Regarding claims 12-13, the diameter of the single crystal diamond may be 5 mm or more (Paragraph [0023]).
Regarding claims 14-15, WO ‘957 does not state the single sector content as recited in claims 14 and 15. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112.
Claim(s) 1-10, and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2014515000.
Regarding claim 1, JP ‘000 teaches a single crystal diamond (Abstract) having an x-ray diffraction rocking curve of 10 seconds or less (Claim 3). JP’000 teaches the topographical defects may be 400 per cm^2 or less (Claim 9), which would include etch pitting because the single crystal diamond is etched (Example). The nitrogen content may be 10 ppm or more (Description), which overlaps the claimed range. 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).
JP ‘000 does not expressly teach a Raman shift of 1332 cm^-1 to 1333 cm^-1 of 2 cm^-1 or less. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of JP ‘000 is substantially similar to the claimed product in composition and structure.
Regarding claim 2, JP ‘000 teaches a single crystal diamond (Abstract) having an x-ray diffraction rocking curve of 10 seconds or less (Claim 3). JP’000 teaches the topographical defects may be 400 per cm^2 or less (Claim 9), which would include etch pitting because the single crystal diamond is etched (Example).
JP ‘000 does not expressly teach a Raman shift of 1332 cm^-1 to 1333 cm^-1 of 1.9 cm^-1 or less. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of JP ‘000 is substantially similar to the claimed product in composition and structure.
Regarding claim 3-4, JP ‘000 does not expressly state the phase difference per unit thickness as recited in claims 3 and 4. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of JP ‘000 is substantially similar to the claimed product in composition and structure.
Regarding claims 5-6, JP ‘000 teaches that the NV defect concentration may be 0.1 ppm or higher (Description), which overlaps the ranges recited in instant claims 5 and 6. 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).
Regarding claims 7-8, JP ‘000 teaches the carbon 13 content may be 0.1% or less (Description).
Regarding claims 9-10, JP ‘000 is silent with respect to the content of boron. However, the silence may be understood that the product inherently lacks any boron or it would have been obvious to make the product excluding boron.
Regarding claims 12-15, WO ‘957 does not state the diameter as recited in claims 12 and 13 nor the single sector content as recited in claims 14 and 15. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of JP ‘000 is substantially similar to the claimed product in composition and structure.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2006048957 as applied to claim 1 and 9 above, and further in view of JP H07148426.
Regarding claim 11, WO ‘957 does not expressly that that the boron content is more than 10% of the nitrogen content.
JP ‘426 teaches a synthetic diamond having a nitrogen content of 10 ppm or less and a boron content of 1 ppm or less (Claim 1), this range overlaps the range of boron being more than 10% of the nitrogen content. 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). The concentrations of nitrogen and boron taught in JP ‘426 decreases the amount of impurities, crystal defects, and strain (Paragraph [0006]-[0007]).
At the time of invention, it would have been obvious to make the single crystal diamond of WO ‘957 having a boron content of more than 10% of the nitrogen content in view of JP ‘426. The suggestion or motivation for doing so would have been to decrease the amount of impurities, crystal defects, and strain (JP ‘426, Paragraph [0006]-[0007]).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2014515000 as applied to claim 1 and 9 above, and further in view of JP H07148426.
Regarding claim 11, JP’000 does not expressly that that the boron content is more than 10% of the nitrogen content.
JP ‘426 teaches a synthetic diamond having a nitrogen content of 10 ppm or less and a boron content of 1 ppm or less (Claim 1), this range overlaps the range of boron being more than 10% of the nitrogen content. 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). The concentrations of nitrogen and boron taught in JP ‘426 decreases the amount of impurities, crystal defects, and strain (Paragraph [0006]-[0007]).
At the time of invention, it would have been obvious to make the single crystal diamond of JP ‘000 having a boron content of more than 10% of the nitrogen content in view of JP ‘426. The suggestion or motivation for doing so would have been to decrease the amount of impurities, crystal defects, and strain (JP ‘426, Paragraph [0006]-[0007]).
Conclusion
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731