DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16th, 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.
Claims 1-19 are 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.
Regarding claims 1 and 15, the terms “nanocrystalline diamond” and “ultrananocrytalline diamond” are not explicitly defined anywhere in the specification and definitions in the prior art vary from more specific (e.g. ultrananocrystalline comprising equiaxed nanocrystals having a diameter less than 10 nm) to relatively broad (e.g. ultrananocrystalline comprising any grain size under 40 nm). Therefore, both “nanocrystalline” and “ultrananocrytalline” will be considered met by any structures comprising grain sizes substantially within the nanometer range (< 1 µm), wherein the later structure will be considered met if the RMS surface roughness is also anticipated and/or made obvious.
Claims 2-14 and 16-19 are rejected for being dependent on indefinite claims, except that claims 3 & 5 each assist in resolving the aforementioned issue with neither entirely solving it on their own.
Claim Objections
Claim 14 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 5. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-4, 6, 11, 13-18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by Huang et al. (UV-to-IR highly transparent ultrathin diamond nanofilms…) (hereinafter “Huang”) or, in the alternative, claims 1-4, 6, 11-18 are rejected under 35 U.S.C. 103 as obvious over Huang.
Regarding claims 1-4, 6, and 11-18, Huang teaches a visible light transparent diamond nanofilm formed by hot filament chemical vapor deposition (HFCVD) deposited on a polished quartz glass [2. Materials and Methods], with an example transparent quartz glass slid being 5.5 cm x 13 cm (71.5 cm2), wherein the film comprises a first layer having diamonds with a grain size of 30 nm, an root mean square (rms) roughness of about 5.7 nm, and a thickness of about 22 nm; a second/first layer having a grain size of ~45 nm, a rms roughness of 4.5±0.2 nm, and a total thickness of about 45 nm (~23 nm); and an additional/second layer having a grain size of ~15 nm, a rms roughness of about 7.0 nm, and a total thickness of about 77 nm (~32 nm vs 45 nm) [pgs. 4-5 & Fig. 2].
Claims 1-7 & 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sumant et al. (U.S. Pub. No. 2017/0011914 A1) (hereinafter “Sumant”) in view of Lin et al. (Fabrication of highly transparent ultrananocrystalline diamond films…) (hereinafter “Lin”) AND Chowdhury et al. (Synthesis and mechanical wear studies of ultra smooth nanostructured diamond coatings…) (hereinafter “Chowdhury”) OR Steinmuller et al. (U.S. Pub. No. 2012/0051192 A1) (hereinafter “Steinmuller”) and Bourban et al. (U.S. Pub. No. 2013/0234165 A1) (hereinafter “Bourban”).
Regarding claims 1-7 and 11-18, Sumant teaches a transparent substrate and method of providing a wear-resistant protective coating thereof comprising a microwave plasma chemical vapor deposition (MPCVD) process, usable as a wear-resistant protectively coated display such as a smartphone display, table display, smart glass display, etc. [0043, 0058], wherein the coating is a primarily sp3 hybridized crystalline structure nanocrystalline diamond having a grain size of 10 nm to 200 nm [0030, 0070] and a thickness between 30 to 150 nm [0041, 0070, 0054] and may comprise a root mean square roughness of less than 7 nm or less than 10 nm [0041, 0044, 0054], wherein the substrate is inherently (or obviously) coated on first (top) and second (side) surfaces [0071].
However, a film having more than one layer, specifically an ultrananocrystalline (top) layer having a grain size and rms roughness as claimed is not taught.
Lin teaches the formation of highly transparent ultrananocrystalline diamond films from microwave plasma chemical vapor deposition (MPVCD), wherein a transition from microcrystalline diamond (MCD) to nanocrystalline diamond (NCD) to ultrananocrystalline diamond (UNCD) was imparted by the increase of argon (Ar) gas flow, in relation to that of the hydrogen (H2) gas flow (Ar/H2 ratio), wherein the increase in sp2 hybridization relative to the relatively predominantly sp3 hybridized structure decreased surface roughness from 22 nm at 0% Ar to 11.1 nm at 50% Ar to 7.5 nm at 90% Ar having fine grained crystallites of ~4-8 nm, which also increased transparency but also decreased elastic modulus and hardness [Fig. 4 & Table 1, Conclusions].
Chowdhury teaches a wear resistant coating, wherein MPCVD diamond coatings most benefited from a multilayered coating, as opposed to a single layer coating, comprising a nanocrystalline diamond layer(s) and an upper ultrananocrystalline layer having roughnesses as low as 4 nm and a grain size of 5 to 6 nm.
OR
Steinmuller teaches a wear resistant protective coating comprising a chemical vapor deposition process that deposits a first thickness having a primarily sp3 hybridized crystalline structure and a second thickness having relatively increased sp2 hybridized content in order to provide a reduction in surface roughness and grain size such as crystal/grain sizes less than 8 nm and having a surface roughness less than 10 nm forming an ultrananocrystalline diamond layer [0051-0052, 0054, 0058], which can be attributed to an increase in argon (or other inert gas) relative to the amount of hydrogen [0036, 0059] and/or an increase in carbon content such as methane increase [0032, 0056].
However, neither Chowdhury nor Steinmuller is clear about the motivation as to why the multilayer coating comprising both (lower) nanocrystalline and (upper) ultrananocrystalline diamond might improve the coating structure.
Bourban teaches a wear-resistant protective coating comprising a first nanocrystalline diamond layer primarily dominated by sp3 hybridized crystalline structure and a second ultrananocrystalline diamond layer having relatively increased sp2 hybridized crystalline structure, wherein the dual coating is beneficial due to the first coating providing increased hardness/strength and high adherence and the second coating providing the low friction/surface roughness [0001, 0028-0034, 0062-0065].
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide a transparent substrate having a deposited nanocrystalline layer followed by a deposited ultrananocrystalline layer having a roughness within the claimed range. One of ordinary skill in the art would have been motivated to provide an increased protection and wear resistance [Chowdhury, Steinmuller, Bourban] by providing a harder, higher elastic modulus lower layer and a reduced grain size and surface roughness upper layer by a controlled increase in sp2 hybridized crystalline structure [Bourban], while using the corresponding teachings of Sumant and Lin to maintain the desired transparency.
Further regarding claim 6, although a substrate size is not specifically stated, it is well-known that substrates usable for smart phones and tablets would obviously exist within the claimed range.
Claims 8-12 & 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sumant in view of Lin and Chowdhury OR Steinmuller and Bourban, as applied to claims 1 & 15 above, further in view of Ellison et al. (U.S. Pub. No. 2016/0060161 A1) (hereinafter “Ellison”), and optionally Hart et al. (U.S. Pub. No. 2019/0337841 A1) (hereinafter “Hart”) as applied to claim 12.
Regarding claims 8-12 and 19, Sumant teaches the transparent substrate coated on a first (top) surface and a second (side) surface as recited above comprises a glass, Pyrex (aluminoborosilicate glass), quartz, fused silica, sapphire, etc. [0029, 0031], but does not teach the glass usable as a wear-resistant protectively coated display such as a smartphone display, table display, smart glass display, etc. [0043, 0058], but does not teach an ion-strengthened glass substrate.
Ellison teaches a cover glass for an electronic display device such as tablets or smart phones [0003-0004], such as Gorilla glass widely used in consumer electronics products having chemical strengthening through ion-exchange [0009], such as sodium with potassium at depths of greater than 15 microns [0051-0053], wherein a hardness/strength improving coating is provided to at least one surface of the ion-strengthened glass [0026-0027] having a thickness of 0.03 (30 nm) to 2 µm [0030], and optionally additional coatings for non-hardness/strength functional purposes [0028], wherein the material of the coating may be an ultrananocrystalline diamond [0057].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide a transparent glass substrate that has been ion-exchanged. One of ordinary skill in the art would have been motivated to provide a widely used product in consumer electronics having a high strength and/or strain to failure, especially in applications suitable for thin glass substrates [0009].
Further regarding claim 12, in the event that the top and side surfaces of Sumant does not teach the claimed limitation: Hart teaches a cover glass usable in electronic products such as a display including smart phones and tablets [0003], that may be chemically strengthened via ion-exchange [0082-0083, 0097-0102] and having a single or multiple layer protective coating deposited on at least one opposing major (top/bottom) surfaces and also on opposing minor surfaces [0057].
Claims 1-7 & 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over Khan et al. (U.S. Pub. No. 2018/0127871 A1) (hereinafter “Khan”) in view of Sumant et al. (U.S. Pub. No. 2017/0011914 A1) (hereinafter “Sumant”), Steinmuller et al. (U.S. Pub. No. 2012/0051192 A1) (hereinafter “Steinmuller”), and Bourban et al. (U.S. Pub. No. 2013/0234165 A1) (hereinafter “Bourban”), and as evidenced by Fuentes-Fernandez et al. (Synthesis and characterization of microcrystalline diamond to ultrananocrystalline diamond films…) (hereinafter “Fuentes-Fernandez”) and as evidenced by or further in view of Lin et al. (Fabrication of highly transparent ultrananocrystalline diamond films…) (hereinafter “Lin”)
Regarding claims 1-6 and 11-18, Khan teaches an optical grade transparent substrate such as silicon, fused silica, sapphire, quartz, crown (soda lime) glass, borosilicate glass, etc. [0015] usable in a consumer electronic display [0003, 0021, 0023], wherein the transparent substrate is coated with a diamond film via microwave plasma (MPCVD) or hot filament chemical vapor deposition (HFCVD) over areas of eight inches or less (obviously overlapping with >1 cm2) and HFCVD providing deposition over areas of twelve inches or less [0020], wherein the nanocrystalline diamond film has a total thickness of less than one micron and comprises one or more layers that vary in thickness, such as one being ~113 nm [0015, 0026, claims 6 & 16], wherein a gas flow may be argon-rich [0018].
However, the multilayer film comprising a surface roughness of 9 nm RMS or less, specifically the upper layer being ultrananocrystalline is not taught.
Sumant teaches a transparent substrate and method of providing a wear-resistant protective coating thereof comprising a microwave plasma chemical vapor deposition (MPCVD) process, usable as a wear-resistant protectively coated display such as a smartphone display, table display, smart glass display, etc. [0043, 0058], wherein the coating is a primarily sp3 hybridized crystalline structure nanocrystalline diamond having a thickness between 30 to 150 nm [0041, 0070, 0054] and may comprise a root mean square roughness of less than 7 nm or less than 10 nm [0041, 0044, 0054], wherein the substrate is inherently (or obviously) coated on first (top) and second (side) surfaces [0071].
Steinmuller teaches a wear resistant protective coating comprising a hot filament chemical vapor deposition process that deposits a first thickness having a primarily sp3 hybridized crystalline structure and a second thickness having relatively increased sp2 hybridized content in order to provide a reduction in surface roughness and grain size such as crystal/grain sizes less than 8 nm and having a surface roughness less than 10 nm forming an ultrananocrystalline diamond layer [0051-0052, 0054, 0058], which can be attributed to an increase in argon (or other inert gas) relative to the amount of hydrogen [0036, 0059] and/or an increase in carbon content such as methane increase [0032, 0056], wherein the surface roughness is evidenced by Fuentes-Fernandez to be an root mean square roughness.
However, neither Khan nor Steinmuller is clear about the motivation as to why the multilayer coating comprising both (lower) nanocrystalline and (upper) ultrananocrystalline diamond might improve the coating structure.
Bourban teaches a wear-resistant protective coating comprising a first nanocrystalline diamond layer primarily dominated by sp3 hybridized crystalline structure and a second ultrananocrystalline diamond layer having relatively increased sp2 hybridized crystalline structure, wherein the dual coating is beneficial due to the first coating providing increased hardness/strength and high adherence and the second coating providing the low friction/surface roughness [0001, 0028-0034, 0062-0065], wherein this should also hold true for a transparent CVD diamond layer as evidenced/taught by Lin.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide a transparent substrate having a deposited nanocrystalline layer followed by a deposited ultrananocrystalline layer having a roughness within the claimed range. One of ordinary skill in the art would have been motivated to provide an increased protection and wear resistance [Steinmuller, Bourban] by providing a harder, higher elastic modulus lower layer and a reduced grain size and surface roughness upper layer by a controlled increase in sp2 hybridized crystalline structure [Bourban], while using the corresponding teachings of Sumant (and Lin) to maintain the desired transparency.
Claims 8-12 & 19 are rejected under 35 U.S.C. 103 as being unpatentable over Khan in view of Sumant, Steinmuller, and Bourban, as applied to claims 1 & 15 above, further in view of Ellison et al. (U.S. Pub. No. 2016/0060161 A1) (hereinafter “Ellison”), and optionally Hart et al. (U.S. Pub. No. 2019/0337841 A1) (hereinafter “Hart”) as applied to claim 12.
Regarding claims 8-12 and 19, Khan teaches an optical grade transparent substrate such as silicon, fused silica, sapphire, quartz, crown (soda lime) glass, borosilicate glass, etc. [0015] usable in a consumer electronic display [0003, 0021, 0023], but does not teach an ion-strengthened glass substrate.
Ellison teaches a cover glass for an electronic display device such as tablets or smart phones [0003-0004], such as Gorilla glass widely used in consumer electronics products having chemical strengthening through ion-exchange [0009], such as sodium with potassium at depths of greater than 15 microns [0051-0053], wherein a hardness/strength improving coating is provided to at least one surface of the ion-strengthened glass [0026-0027] having a thickness of 0.03 (30 nm) to 2 µm [0030], and optionally additional coatings for non-hardness/strength functional purposes [0028], wherein the material of the coating may be an ultrananocrystalline diamond [0057].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide a transparent glass substrate that has been ion-exchanged. One of ordinary skill in the art would have been motivated to provide a widely used product in consumer electronics having a high strength and/or strain to failure, especially in applications suitable for thin glass substrates [0009].
Further regarding claim 12, in the event that the top and side surfaces of Sumant does not teach the claimed limitation: Hart teaches a cover glass usable in electronic products such as a display including smart phones and tablets [0003], that may be chemically strengthened via ion-exchange [0082-0083, 0097-0102] and having a single or multiple layer protective coating deposited on at least one opposing major (top/bottom) surfaces and also on opposing minor surfaces [0057].
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/535,511 in view of Fuentes-Fernandez et al. (Synthesis and characterization of microcrystalline diamond to ultrananocrystalline diamond films…) (hereinafter “Fuentes-Fernandez”).
‘511 teaches a diamond coated glass structure that has been chemically modified via ion substitution [claims 1, 8, 11, and 17] having a (hot filament) CVD diamond layer disposed on one or more major (and minor) sides [claim 1, 0040], wherein the diamond layer is a polycrystalline diamond layer of grain sizes less than 1 micron and may comprise an ultrananocrystalline layer deposited on a nanocrystalline layer [claim 4, 0052] and having a root mean square roughness of less than 2 nanometers [0056] and a thickness between 30 and 150 nm [0056], which is prima facie obvious overlapping with the claimed range.
Whether or not the below 2 nanometer rms roughness range is claimed, Fuentes-Fernandez teaches that a HFCVD nano-crystalline diamond may be controlled with ±5% variation in thickness, nanostructure, and surface roughness forming micro-, nano-, and ultranano-crystalline CVD diamond films with grain sizes less than 1 micron, wherein nano-crystalline diamond comprises an average grain size of 6 to 25 nm and an average surface roughness of 2.5 to 12.6 nm and an ultranano-crystalline diamond (UNCD) comprises an average grain size of 3-9 nm and an average surface roughness of about 2 nm, such as ~5.6 nm and ~3 rms, respectively, which largely correlates to a reduction in hydrogen (H2) gas flow and an increase in argon (Ar) gas flow [Table 2, Abstract, Conclusion] and the notorious increase in sp2 hybridized crystalline structure.
It would have been obvious to and motivated for one of ordinary skill in the art at the time of invention to use grain sizes and roughness values that would be substantially imparted correlating with grain size and crystalline structure of a top ultrananocrystalline diamond layer.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JEFFREY A VONCH whose telephone number is (571)270-1134. The Examiner can normally be reached M-F 9:30-6:00.
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/JEFFREY A VONCH/Primary Examiner, Art Unit 1781 October 9th, 2025