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 § 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 19 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. Claim 19 recites, “the growing the thin film of diamond on top of the initial finished surface to form the second finished surface is performed to repair the second finished surface.” It is unclear how the growing the thin film of diamond can both “form the second finished surface” and also “repair the second finished surface.”
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, 6-10, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grotjohn et al (US 2012/0047950) in view of VandenBiesen et al (US 2004/0031434).
Grotjohn et al teaches a method of growing single crystal diamond, the method comprising: a) providing a seed diamond material; b) growing diamond on the seed diamond material with an initial finished surface; c) providing a process gas; and d) growing a thin film of diamond on top of the initial finished surface to form a second finished surface by using chemical vapor deposition with the process gas. ([0010]-[0020], [0025]-[0042] teaches a deposition processes generally include the homoepitaxial growth of layers of single crystal gemstone ("SCG") material of diamond, of multiple (different) colors onto a substrate/seed of diamond using a chemical vapor deposition process; and the first single crystal diamond (SCD) layer having a growth surface and remove a portion of the first SCD layer and growing a second SCD layer and polishing a portion of the second SCD layer and growing a third SCD layer on the second SCD layer).
Grotjohn et al does not explicitly teach growing diamond on the to a mass of greater than 0.1 gram. Grotjohn et al teaches the thickness of an individual layer will depend on the deposition time and can be suitably selected based on the desired shape/size parameters of the resulting gemstone 142; and the thickness may be as large as several millimeters (e.g., up to 1 mm, 2 mm, 3 mm, 4 mm, 5 mm, 7 mm, 10 mm) for larger gemstone cuts ([0042]). Gemstones would with a thickness of 10 mm would be expected to have a mass greater than 0.1 gram. Furthermore, It would have been obvious to one of ordinary skill in the art at the time of filing to modify Grotjohn et al to grow a diamond layer will a desired thickness and mass of greater than 0.1 gram to produce a desirable size. Also, changes in size and shape are prima facie obvious (MPEP 2144.04).
Grotjohn et al does not teach providing a process gas that contains at least some carbon from a deceased or living being; and d) growing a thin film of diamond on top of the initial finished surface to form a second finished surface by using chemical vapor deposition with the process gas.
In a method of growing diamond, VandenBiesen et al teaches a synthetic diamond is made from carbon collected from the remains of a human using sublimation; and the carbon from human remains is used to replace or supplement purified/graphitized carbon of other origin, and processed into synthetic diamonds ([0028]-[0037]), which clearly suggests using carbon from a deceased being and growing a diamond from a gas. VandenBiesen et al teaches a synthetic gem to be used as a permanent keepsake that preserves the remains and memories of the deceased with a synthetic diamond.
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Grotjohn et al by providing a carbon process gas for producing a diamond, as taught by VandenBiesen et al, to produce a keepsake that preserves the remains of the deceased.
Referring to claim 2, the combination of Grotjohn et al and VandenBiesen et al teaches producers of synthetic gems are currently using graphite that is mined from beneath the earth's surface (VandenBiesen [0006]), which clearly suggests diamond material from a particular geographic location. Furthermore, It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Grotjohn et al and VandenBiesen et al by selecting diamond starting material from any suitable geographic location because the selection of a known material based on its suitability for its intended purpose is prima facie obvious (MPEP 2144.07) and substituting equivalents known for the same purpose is prima facie obvious (MPEP 2144.06 II).
Referring to claim 3, the combination of Grotjohn et al and VandenBiesen et al teaches single crystal diamond by high pressure high temperature growth (Grotjohn [0029]).
Referring to claim 4, the combination of Grotjohn et al and VandenBiesen et al teaches chemical vapor deposition (Grotjohn [0003]).
Referring to claim 6, the combination of Grotjohn et al and VandenBiesen et al teaches collecting carbon from human remains or a deceased pet (Grotjohn [0028]).
Referring to claim 7, the combination of Grotjohn et al and VandenBiesen et al does not explicitly teach processing calcium carbonate. Applicant teaches “The ashes resulting from cremation often contain carbon predominately in the form of calcium carbonate. In order to use cremation ashes in a CVD diamond growth process, the carbon needs to be removed from the calcium carbonate and transformed into a gas” in paragraph [0027] of the published application. The combination of Grotjohn et al and VandenBiesen et al also teaches cremation requires the carbon must be separated from the bone ash, which can be done by the steps of collecting, filtering, purifying, and graphitized (Grotjohn [0007]). Therefore, the process of calcium carbonate would be expected since the prior art teaches cremation, like applicant, and the combination of Grotjohn et al and VandenBiesen et al teaches filtering, purifying, and graphitized to obtain carbon from the ashes, which would necessarily require processing the calcium carbonate formed during cremation.
Referring to claim 8-10, the combination of Grotjohn et al and VandenBiesen et al teaches thickness of an individual layer (e.g., length scale in the growth direction of the SCD layer) will depend on the deposition time and can be suitably selected based on the desired shape/size parameters of the resulting gemstone; and thickness of up to 10mm or 1 to 500 mm (Grotjohn [0042]). Overlapping ranges are prima facie obvious (MPEP 2144.05).
Referring to claim 15, the combination of Grotjohn et al and VandenBiesen et al teaches the carbon from human remains, which would clearly include tissue.
Referring to claim 16-20, the combination of Grotjohn et al and VandenBiesen et al grow of a plurality of layer of diamond and polishing the diamond prior to the next diamond layer, and coloring different diamond layers which would change the optical properties (Grotjohn [0036]-[0055]).
Referring to claim 17, the the combination of Grotjohn et al and VandenBiesen et al grow of a plurality of layer of diamond and polishing the diamond prior to the next diamond layer, and coloring different diamond layers which would change the optical properties (Grotjohn [0036]-[0055]), and the growth of second layer of diamond changes the color.
Referring to claim 18, the combination of Grotjohn et al and VandenBiesen et al grow of a plurality of layer of diamond and polishing the diamond prior to the next diamond layer, and coloring different diamond layers which would change the optical properties (Grotjohn [0036]-[0055]).
Referring to claim 19, the combination of Grotjohn et al and VandenBiesen et al grow of a plurality of layer of diamond and polishing the diamond prior to the next diamond layer, and coloring different diamond layers which would change the optical properties (Grotjohn [0036]-[0055]). As discussed above, the claimed is indefinite. The combination of Grotjohn et al and VandenBiesen et al teaches growing the thin film on the initial finished surface; therefore, is interpreted as forming the second surface and repairing the second surface.
Referring to claim 20, the the combination of Grotjohn et al and VandenBiesen et al grow of a plurality of layer of diamond and polishing the diamond prior to the next diamond layer, and coloring different diamond layers which would change the optical properties (Grotjohn [0036]-[0055]); therefore, the layer necessarily has a sufficient thickness suitable for polishing.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grotjohn et al (US 2012/0047950) in view of VandenBiesen et al (US 2004/0031434), as applied to claim 1-4, 6-10, and 15-20 above, and further in view of Giquel et al (US 2021/0087676).
The combination of Grotjohn et al and VandenBiesen et al teaches all of the limitation of claim 5, as discussed above, except growing diamond by a hit filament method. The combination of Grotjohn et al and VandenBiesen et al teaches CVD and HPHT growth, as discussed above in regards to claims 3-4.
In a method of growing diamond, Giquel et al teaches growing a single crystal diamond by thickening in height and/or width a seed diamond single crystal (or substrate) from a natural diamond single crystal, or produced by a high pressure-high temperature (HPHT) or CVD (chemical vapor deposition, plasma or hot filament-assisted, and the like) method ([0080]-[0085]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Grotjohn et al and VandenBiesen et al by using a hot filament method for growing diamond, as taught by Giquel et al, because hot filament is a suitable and equivalent method of growing single crystal diamond, and substituting equivalents known for the same purpose is prima facie obvious (MPEP 2144.06 II).
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grotjohn et al (US 2012/0047950) in view of VandenBiesen et al (US 2004/0031434), as applied to claim 1-4, 6-10, and 15-20 above, and further in view of Spuhler (US 2010/0074830).
The combination of Grotjohn et al and VandenBiesen et al teaches all of the limitations of claim 11, as discussed above, except the carbon is from more than one deceased or living being.
In a method of making jewerly, Spuhler teaches the production of a personalized ornamental alloy originates from a carbon-containing organic basic material from selected clearly identifiable individuals or clearly identifiable groups of individuals; and a group of persons, for example a married couple or members of a family ([0015]-[0026]). Spuhler also teaches the basic material used is keratin-containing human or animal material, such as, for example, hair, fur, fingernails or mixtures thereof ([0026]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Grotjohn et al and VandenBiesen et al by using carbon from more than one deceased or living being, i.e. a group, as taught by Spuhler, to produce a piece of jewelry with more symbolic meaning.
Referring to claim 12, the combination of Grotjohn et al and VandenBiesen et al and Spuhler teaches carbon from members of a family (Spuhler [0026]).
Referring to claim 13, the combination of Grotjohn et al and VandenBiesen et al and Spuhler teach carbon from hair by coking, i.e. not cremated (Spuhler [0026], [0046]).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grotjohn et al (US 2012/0047950) in view of VandenBiesen et al (US 2004/0031434), as applied to claim 1-4 above, and further in view of Parrondo et al (US 2008/0145299).
The combination of Grotjohn et al and VandenBiesen et al teaches all of the limitations of claim 13, as discussed above, except the carbon from hair that has not been cremated.
In a method of making diamond, Parrondo et al teaches Keratin is natural protein found, in humans, in hair, nails and skin, amongst other parts and the ease of extraction makes protein an easy and affordable source of carbon ([0009]). Parrondo et al teaches manufacture large diamond monocrystals of different colors from carbon obtained from the keratin contained in the ectoderm of many living beings being possible to extract carbon from a human being by cutting a lock of hair and carbonizing it, and then subjecting it to a high pressure high temperature process (Abstract), which clearly suggests the carbon from hair that has not been cremated because Parrondo et al does not teach cremation.
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the combination of Grotjohn et al and VandenBiesen et al by obtain the carbon from hair that has not been cremated, as taught by Parrondo et al, by using a suitable and affordable method of obtain carbon for diamond manufacturing.
Referring to claim 14, the combination of Grotjohn et al, VandenBiesen et al and Parrondo et al teaches carbon from skin without cremation (Parrondo [0009], abstract).
Conclusion
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