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 with traverse of Group I, claims 1-28, Species A1, and Species B1 in the reply filed on October 21, 2025, is acknowledged. The traversal is on the ground(s) that the different inventions and species are so closely related that there is no undue search burden. This is not found persuasive because, at the very least, each of the different groups of inventions and different groups of species have a different classification and would require a different field of search. As an example with respect to the species of Group A, the pressure vessel of Species A1 utilizes a cylinder located within a container whereas Species A2 utilizes spherical inserts within opposing hemispherical shells. Consequently, the Examiner has properly shown that an undue search burden exists.
Claims 10-15, 18, 20-21, and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 21, 2025.
The requirement is still deemed proper and is therefore made FINAL.
Priority
The instant application was filed on April 10, 2023, and is a continuation-in-part of appl. No. 16/998,309 which was filed on August 20, 2020, which is a continuation of International Patent Appl. No. PCT/GB2020/051321 which was filed on June 1, 2020, and which claims foreign priority to UK 1907655.3 which was filed on May 30, 2019. However, since claims 1-29 recite newly added subject matter which relates to, inter alia, the use of a boron nitride source, they are only entitled to the April 10, 2023, priority date of the instant application.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The disclosure is objected to because of the following informalities:
In ¶[0003] of the published application reference is made to the chart in Fig. 15. However, it is assumed applicants intended to refer to the chart in Fig. 18 as there is no such chart in Fig. 15. Similarly, ¶[0012] of the published application refers to the BARS apparatus in Fig. 14 and indicates that it relies on the expansion of an oil jacket to exert pressure. However, there is no oil jacket in Fig. 14. It is assumed applicants intended to refer to Fig. 17.
In ¶[0121] of the published application reference is made to a “body of iron 7” in Fig. 1. However, there is no such body of iron in Fig. 1. It is assumed applicants intended to refer to Fig. 2.
Appropriate correction is required.
Drawings
Figures 18a-b should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-9, 16-17, 19, and 22-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-8, 15-16, 19, and 22-29 of U.S. Patent No. 11,623,194 (hereinafter “the ‘194 patent”) in view of U.S. Patent Appl. Publ. No. 2006/0032431 to Chien-Min Sung (“Sung”). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of the ‘194 patent recites all of the limitations recited in claim 1 of the instant application, but does not recite that the apparatus is for the manufacture of cubic boron nitride or that the source material is comprised of boron nitride. However, in Fig. 1, the Abstract, ¶[0004], and ¶¶[0067]-[0084] as well as elsewhere throughout the entire reference Sung teaches an analogous embodiment of a high pressure vessel for the fabrication of diamond or cubic boron nitride single crystals. In ¶[0004] and ¶[0052] Sung specifically teaches that the pressure vessel may be utilized for the fabrication of cubic boron nitride (cBN) single crystals using hexagonal boron nitride (hBN) as the source of raw material. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would recognize that the pressure vessel recited in claim 1 of the ‘194 patent may be utilized for the production of single crystal cBN by utilizing a hBN source with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 2, claim 2 of the ‘194 patent recites all of the limitations recited in claim 2 of the instant application, but does not recite that the source is boron nitride. However, as noted supra with respect to the rejection of claim 1, in ¶[0004] and ¶[0052] Sung specifically teaches that the pressure vessel may be utilized for the fabrication of cubic boron nitride (cBN) single crystals using hexagonal boron nitride (hBN) as the source of raw material. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would recognize that the pressure vessel recited in claim 1 of the ‘194 patent may be utilized for the production of single crystal cBN by utilizing a hBN source with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 3, claim 3 of the ‘194 patent recites all of the limitations recited in claim 3 of the instant application.
Regarding claim 4, claim 4 of the ‘194 patent recites all of the limitations recited in claim 4 of the instant application.
Regarding claim 5, claim 5 of the ‘194 patent recites all of the limitations recited in claim 5 of the instant application.
Regarding claim 6, claim 6 of the ‘194 patent recites all of the limitations recited in claim 6 of the instant application.
Regarding claim 7, claims 1 and 5-6 of the ‘194 patent do not recite that the catalyst comprises an alkali boro-nitride salt or an alkali earth boro-nitride salt. However, in ¶[0004] and ¶[0072] Sung teaches the use of, inter alia, alkali and alkali earth boro-nitride salts as a catalyst for the production of cBN. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to use an alkali or alkali earth boro-nitride salt as a catalyst to facilitate the growth of high quality cBN crystals since doing so would involve nothing more than the use of a known material according to its intended use.
Regarding claim 8, claim 7 of the ‘194 patent recites that the carbon source is part of the body, but does not recite the use of a boron nitride source instead of a carbon source. However, as noted supra with respect to the rejection of claims 1-2, in ¶[0004] and ¶[0052] Sung specifically teaches that the pressure vessel may be utilized for the fabrication of cubic boron nitride (cBN) single crystals using hexagonal boron nitride (hBN) as the source of raw material. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would be motivated to incorporate a boron nitride source as part of the body in the apparatus recited in claim 1 of the ‘194 patent with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 9, claim 1 of the ‘194 patent does not recite that the Boron Nitride source is hexagonal Boron Nitride. However, in ¶[0004] and ¶[0052] Sung specifically teaches the use of hexagonal boron nitride (hBN) as the source of raw material for the growth of cBN. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would be motivated to utilize hBN as the raw material source with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 16, claim 14 of the ‘194 patent recites all of the limitations recited in claim 16 of the instant application.
Regarding claim 17, claim 15 of the ‘194 patent recites all of the limitations recited in claim 17 of the instant application.
Regarding claim 19, claim 17 of the ‘194 patent recites all of the limitations recited in claim 19 of the instant application.
Regarding claim 22, claim 20 of the ‘194 patent recites all of the limitations recited in claim 22 of the instant application.
Regarding claim 23, claim 21 of the ‘194 patent recites at least one seed in the chamber, but does not recite that the seed is cubic boron nitride. However, in at least ¶[0052] teaches the use of cubic boron nitride as the starting material for growing larger crystals of cBN with the motivation for doing so being to avoid the random nucleation and growth of spurious crystals.
Regarding claim 24, claim 22 of the ‘194 patent recites that the at least one seed is comprised in the body, but does not recite that the seed is cubic boron nitride. However, as noted supra with respect to the rejection of claim 23, in at least ¶[0052] teaches the use of cubic boron nitride as the starting material for growing larger crystals of cBN with the motivation for doing so being to avoid the random nucleation and growth of spurious crystals.
Regarding claim 25, claim 23 of the ‘194 patent recites all of the limitations recited in claim 25 of the instant application.
Regarding claim 26, claim 24 of the ‘194 patent recites all of the limitations recited in claim 26 of the instant application.
Regarding claim 27, claim 25 of the ‘194 patent recites all of the limitations recited in claim 27 of the instant application, but does not recite the use of a boron nitride source. However, as noted supra with respect to the rejection of claims 1 and 9, in ¶[0004] and ¶[0052] Sung specifically teaches the use of hexagonal boron nitride (hBN) as the source of raw material for the growth of cBN. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would be motivated to utilize hBN as the raw material source with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 28, claim 26 of the ‘194 patent recites all of the limitations recited in claim 28 of the instant application.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-9, 16-17, 19, and 22-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Appl. Publ. No. 2020/0376454 to Gary Gibson (hereinafter “Gibson”) in view of U.S. Patent Appl. Publ. No. 2006/0032431 to Chien-Min Sung (“Sung”).
Regarding claim 1, Gibson teaches an apparatus for the manufacture of cubic Boron Nitride (see the Abstract, Figs. 1-20, and the entire reference including specifically claim 1 which teach an apparatus capable of manufacturing boron nitride) comprising:
a pressure vessel having a chamber therein (see claim 1); and
a body located in the chamber (see claim 1),
wherein the pressure vessel and the body are formed of materials having different coefficients of expansion, the coefficient of expansion of the body being greater than the coefficient of expansion of the pressure vessel (see claim 1);
wherein the chamber is configured to receive the body, and a source (see claim 1);
wherein the pressure vessel is formed from a material having a melting point in excess of 1327 °C and capable of reacting and withstanding forces generated by a pressure of at least 4.4 GPa located at the source in the apparatus, said pressure generated by differential thermal expansion of the body within the chamber when the pressure vessel is at temperatures in excess of 1327 °C (see at least claim 1, ¶[0019], ¶[0079], and ¶[0093]);
wherein the pressure vessel includes at least one housing member configured to resist said forces generated by differential thermal expansion of the body upon heating thereof (see claims 9-10, ¶¶[0029]-[0031] and ¶[0043]);
wherein the at least one housing member is formed from a material selected from the group consisting of: W; tungsten carbide; doped tungsten carbides; 3% Co doped tungsten carbide; boron carbide; carbon reinforced composites; carbon-fiber reinforced composites, carbon-fiber reinforced carbon composites, carbon reinforced graphite, carbon fiber reinforced graphite, and carbon-carbon (see ¶¶[0029]-[0031] and ¶[0043]);
wherein the apparatus further comprises a furnace and the pressure vessel is situated in the furnace, said furnace configured to heat the pressure vessel, the body, and the source to a temperature of at least 1327 °C (see claim 1, claim 27, and ¶[0050]; and
wherein the coefficients of expansion of the body and the pressure vessel are selected such that upon heating thereof by said furnace to at least 1327°C the pressure exerted on the source is at least 4.4GPa (see claim 1, ¶[0019], ¶[0079], and ¶[0093]).
Gibson does not teach that the apparatus is for the manufacture of cubic boron nitride or that the source material is comprised of boron nitride. However, in Fig. 1, the Abstract, ¶[0004], and ¶¶[0067]-[0084] as well as elsewhere throughout the entire reference Sung teaches an analogous embodiment of a high pressure vessel for the fabrication of diamond or cubic boron nitride single crystals. In ¶[0004] and ¶[0052] Sung specifically teaches that the pressure vessel may be utilized for the fabrication of cubic boron nitride (cBN) single crystals using hexagonal boron nitride (hBN) as the source of raw material. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would recognize that the pressure vessel of Gibson may be utilized for the production of single crystal cBN by utilizing a hBN source with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Regarding claim 2, Gibson teaches that the body has at least two body surfaces, expansion of at least one of the body surfaces is constrained by engagement of the at least one of the body surfaces with a surface of the chamber, another of the body surfaces is not engaged with a surface of the chamber, and the source is situated between a surface of the chamber and the another of the body surfaces that is not engaged by the surface of the chamber; or the body has at least one body surface, and the source is situated around the body between the at least one body surface and the surface of the chamber (see claim 2 which teaches the structure of the body as claimed), but does not teach that the source is boron nitride. However, as noted supra with respect to the rejection of claim 1, in ¶[0004] and ¶[0052] Sung specifically teaches that the pressure vessel may be utilized for the fabrication of cubic boron nitride (cBN) single crystals using hexagonal boron nitride (hBN) as the source of raw material. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would recognize that the pressure vessel of Gibson may be utilized for the production of single crystal cBN by utilizing a hBN source with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 3, Gibson teaches that the body includes a piston (see claim 3).
Regarding claim 4, Gibson teaches that the chamber is in the form of a cylinder and the piston is arranged in the cylinder (see claim 4).
Regarding claim 5, Gibson teaches a catalyst located in the chamber (see claim 6).
Regarding claim 6, Gibson teaches that the catalyst is comprised in the body (see claim 7).
Regarding claim 7, Gibson does not teach that the catalyst comprises an alkali boro-nitride salt or an alkali earth boro-nitride salt. However, in ¶[0004] and ¶[0072] Sung teaches the use of, inter alia, alkali and alkali earth boro-nitride salts as a catalyst for the production of cBN. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to use an alkali or alkali earth boro-nitride salt as a catalyst to facilitate the growth of high quality cBN crystals since doing so would involve nothing more than the use of a known material according to its intended use.
Regarding claim 8, Gibson teaches that the source is a part of the body (see claim 8), but does not teach the use of a boron nitride source. However, as noted supra with respect to the rejection of claims 1-2, in ¶[0004] and ¶[0052] Sung specifically teaches that the pressure vessel may be utilized for the fabrication of cubic boron nitride (cBN) single crystals using hexagonal boron nitride (hBN) as the source of raw material. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would be motivated to incorporate a boron nitride source as part of the body in the apparatus recited in claim 1 of the ‘194 patent with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 9, Gibson does not teach that the Boron Nitride source is hexagonal Boron Nitride. However, in ¶[0004] and ¶[0052] Sung specifically teaches the use of hexagonal boron nitride (hBN) as the source of raw material for the growth of cBN. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would be motivated to utilize hBN as the raw material source with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 16, Gibson teaches that the material from which the body is formed includes at least one material selected from the group consisting of: W, Nb, Mo, Ta, V, Ru, MoSi2, Rh, and TZM (see claim 15).
Regarding claim 17, Gibson teaches that the material from which the chamber is formed includes at least one material selected from the group consisting of: W, Nb, Mo, Ta, Ru, MoSi2, Rh, a cermet, 3% Co doped tungsten carbide, Boron Nitride and diamond (see claim 16).
Regarding claim 19, Gibson teaches at least one gasket, each of the at least one gasket being situated between adjacent components of the apparatus (see claim 19).
Regarding claim 22, Gibson teaches that a material from which the at least one gasket is formed includes at least one material selected from the group consisting of: carbon, carbon reinforced composites, carbon fiber reinforced composites, carbon-carbon (including carbon reinforced carbon, carbon reinforced graphite, carbon fiber reinforced graphite, or carbon fiber reinforced carbon), soapstone, pyrophyllite, other materials capable of withstanding the temperatures experienced by the apparatus and functioning as a gasket, and any of the aforementioned in sheet form (see claim 22).
Regarding claim 23, Gibson teaches at least one seed in the chamber (see claim 23), but does not teach that the seed is cubic Boron Nitride. However, in at least ¶[0052] teaches the use of cubic boron nitride as the starting material for growing larger crystals of cBN with the motivation for doing so being to avoid the random nucleation and growth of spurious crystals.
Regarding claim 24, Gibson teaches that at least one seed is comprised in the body (see claim 24), but does not teach that the seed is cubic Boron Nitride. However, as noted supra with respect to the rejection of claim 23, in at least ¶[0052] teaches the use of cubic boron nitride as the starting material for growing larger crystals of cBN with the motivation for doing so being to avoid the random nucleation and growth of spurious crystals.
Regarding claim 25, Gibson teaches that the furnace is adapted to create a temperature gradient across the chamber rising from one side of the chamber to the other (see claim 25).
Regarding claim 26, Gibson teaches that the furnace is adapted to create a temperature gradient across the chamber rising from one side of the chamber to the other; and the temperature gradient rises from the surface of the chamber farthest from the body where the catalyst is situated to the surface of the body (see claim 26).
Regarding claim 27, Gibson teaches that the furnace is capable of heating the pressure vessel, the body and the source to a temperature in the range of 1327°C to 4000°C (see claims 27-28), but does not teach the use of a boron nitride source. However, as noted supra with respect to the rejection of claims 1 and 9, in ¶[0004] and ¶[0052] Sung specifically teaches the use of hexagonal boron nitride (hBN) as the source of raw material for the growth of cBN. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Sung and would be motivated to utilize hBN as the raw material source with the motivation for doing so being to facilitate the production of larger and higher quality cBN crystal for device applications.
Regarding claim 28, Gibson teaches an apparatus according to claim 27, wherein the furnace is provided with a temperature sensor and a controller, the temperature sensor providing a furnace temperature feedback to the controller (see claim 29).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In the Figure and associated descriptive text U.S. Patent No. 3,567,896 to Ji Young Chang teaches an embodiment of an apparatus for generating pressures via linear thermal expansion of a body. Similarly, Figs. 1-3 and associated descriptive text in U.S. Patent No. 4,251,488 to Antonio J. Estanislao teach an embodiment of a system for producing high pressures by employing the expansion characteristics of materials.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH A BRATLAND JR whose telephone number is (571)270-1604. The examiner can normally be reached Monday- Friday, 7:30 am to 4:30 pm EST.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714