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
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/02/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 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, 2, 3, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Irifune et al. Ultrahard polycrystalline diamond from graphite. Nature 421, 599–600 (2003), in view of Samsonenko et al. Investigation of the unit cell parameter and dislocation structure of polycrystalline diamond films, 2006 J. Phys.: Condens. Matter 18 5303, and Huang et al. Nanotwinned diamond with unprecedented hardness and stability. Nature 510, 250–253 (2014), referred to herein as Irifune, Samsonenko, and Huang, respectively.
Regarding claim 1, Irifune teaches a polycrystalline diamond comprising diamond particles (“granular crystals,” p. 600 col. 1 pp. 2) wherein:
a content of the diamond particles is more than 99% by volume based on the total volume of the polycrystalline diamond (“pure sintered polycrystalline diamond,” p. 599, bottom of col. 2);
a median diameter d50 of the diamond particles is 10 nm or more and 200 nm or less (10-20 nm and up to 100-200 nm, p. 600 col. 1; where this is interpreted to meet the limitation of the claim since the median value must necessarily fall within this range of values taught by Irifune).
Irifune does not teach a dislocation density of the diamond particles is 2.0 x 1015 m-2 or more and 4.0 x 1016 m-2 or less.
However, Samsonenko teaches polycrystalline diamond (title) comprising dislocation densities falling within and near the claimed range (density of 3.04x10^15/m2, Tables 3, 4). It would be obvious to combine the teachings of Irifune and Samsonenko in view of Huang, which teaches polycrystalline diamond comprising nanotwin dislocations (abstract) and teaches that the presence of dislocations improves the hardness of polycrystalline diamond (p. 252 col. 1 pp. 1). It would therefore be obvious to one skilled in the art to modify the teaching of Irifune by introducing dislocations as taught by Samsonenko and arrive at the claimed invention prior to the effective filing date.
Regarding claim 2, Irifune, Samsonenko, and Huang teach the invention as applied to claim 1. While Samsonenko teaches a range of dislocation densities broader than the instant claimed range, the courts have held, as set forth in MPEP 2144.05, that in the case where the claimed range "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. 1990).
Regarding claim 3, Irifune, Samsonenko, and Huang teach the invention as applied to claim 1. They do not teach that the median diameter d50 of the diamond particles is 10 nm or more and 100 nm or less. However, Irifune teaches a range of particle sizes where the d50 value must necessarily overlap with the claimed range, since the median value must fall within the range of values taught by Irifune. Regarding overlapping ranges, as set forth in MPEP 2144.05, in the case where the claimed range "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. 1990).
Regarding claim 5, Irifune, Samsonenko, and Huang teach the invention as applied to claim 1, wherein Irifune teaches that the Knoop hardness is 110-140 GPa (p. 600 col. 1 pp. 3), falling within the instant claimed range of 80 GPa or more. Since Irifune does not teach the temperature at which this measurement is obtained, it is interpreted to meet the instant limitation of a normal temperature, as supported in the instant specification (page 16).
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Irifune, Samsonenko, and Huang, as applied to claim 1 above, and in further view of Sumiya 2008, US 20080022806 A1, herein referred to as Sumiya, provided on the IDS filed on 12/04/2023.
Regarding claim 4, Irifune, Samsonenko, and Huang teach the invention as applied to claim 1. They do not teach that the polycrystalline diamond further comprises boron wherein a content of the boron is 0.01% by mass or more and 1% by mass or less based on a total mass of the polycrystalline diamond.
However, Sumiya teaches a high-hardness conductive diamond polycrystalline body (0014) wherein a content of the boron in the diamond polycrystalline body is at least 10 ppm and at most 1,000 ppm of boron (0014); this corresponds to a range of 0.001 - 0.1% content of boron by mass. It would be obvious to one of ordinary skill in the art to modify the invention taught by Irifune, Samsonenko, and Huang by including the boron content taught by Sumiya, and arrive at the presently claimed invention. One would be motivated to do so because Sumiya teaches that the conductivity of the diamond is improved (0014), graphitization or crack generation does not occur even in vacuum at 1,400 Celsius (0034), and the oxidation resistance is increased by the formation of a boron oxide protective film (0034). Sumiya teaches that these properties are advantageous for using the polycrystalline diamond to form cutting tools (0034). Regarding the overlapping ranges of the boron content taught by Sumiya and claimed in the instant claim, as set forth in MPEP 2144.05, in the case where the claimed range "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. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to obtain the polycrystalline diamond as suggested by Irifune, Samsonenko, Huang and Sumiya where the boron content is in any workable or optimum range overlapping with 10-1000 ppm as taught by Sumiya, including the claimed range, in order to obtain a boron content suitable for realizing the properties of boron in the polycrystalline diamond.
Regarding claim 6, Irifune, Samsonenko, and Huang teach the invention as applied to claim 1. They do not teach a content of at least one metal element selected from the group consisting of a Group 4 element, a Group 5 element and a Group 6 element in the periodic table, and iron, aluminum, silicon, cobalt and nickel is less than 1% by volume.
However, Sumiya teaches a high-hardness conductive diamond polycrystalline body (0014) wherein no sintering aid or metal catalyst is incorporated (0037); Sumiya further defines a sintering aid as being known in the art and typically including iron or an iron group metal such as cobalt or nickel (0007, 0008), which therefore implicitly discloses that these elements are not contained in the polycrystalline diamond of the invention. This falls within the claimed range of less than 1% by volume, since the content is necessarily 0% by volume.
It would be obvious to one skilled in the art to modify the invention taught by Irifune, Samsonenko, and Huang by ensuring that the content of a sintering aid or binder is 0% or approaches 0%, as taught by Sumiya; one would be motivated to do so because Sumiya teaches that the presence of these elements promotes graphitization in the diamond, thus lowering the heat resistance (0008), that the difference in thermal expansion between the sintering aid and the diamond results in cracks formed in the diamond (0008), that the use of a metal such as Co deteriorates the hardness/strength of the diamond (0008), and that the use of a sintering aid to increase the heat resistance only to remove it creates a porous crystal, which also decreases the strength of the material (0008). Sumiya further teaches that these mechanical properties are advantageous for implementing a polycrystalline diamond in tools for cutting, where strength and durability are crucial to minimize wear or deterioration (0010, 0011). One skilled in the art would therefore arrive at the claimed invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Irifune, Samsonenko, and Huang, as applied to claim 1, and in further view of Sumiya et al. 2020, US 20200340140 A1, referred to herein as Sumiya 2, provided on the IDS filed on 12/04/2023.
Regarding claim 7, Irifune, Samsonenko, and Huang teach the invention as applied to claim 1. They do not teach a content of at least one inevitable impurity selected from the group consisting of hydrogen, oxygen, nitrogen, an alkali metal, and an alkaline earth metal is less than 0.1% by volume.
However, Sumiya 2 discloses a diamond polycrystal and tool including the diamond polycrystal (0001) which has low concentrations of impurities of hydrogen, oxygen, and nitrogen (0041). It would be obvious to one skilled in the art to modify the invention taught by Irifune, Samsonenko, and Huang by ensuring that the content of impurities of hydrogen, oxygen, or nitrogen are minimized, as Sumiya 2 teaches; one would be motivated to do so because Sumiya 2 teaches that a content of impurities less than 0.1 ppm improves the strength of the diamond (0042) and suppresses crystal grain growth and promotes direct conversion to diamond (0091). Sumiya 2 teaches that this is advantageous to obtain a diamond that can be used in a cutting tool, since Sumiya teaches that a larger grain size results in a precision of the cutting edge that is deteriorated and is more likely to be chipped (0046).
While Sumiya 2 does not explicitly disclose that the content of hydrogen/oxygen/nitrogen impurities is less than 0.1% by volume, a range of 0-0.1 ppm necessarily overlaps with a range of 0-0.1% by volume. As set forth in MPEP 2144.05, in the case where the claimed range "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. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to obtain the polycrystalline diamond as suggested by Irifune, Samsonenko, Huang, and Sumiya 2, where the content of the hydrogen/oxygen/nitrogen impurities is in any workable or optimum range overlapping with 0-0.1 ppm as taught by Sumiya 2, including the claimed range, in order to obtain a content of impurity suitable for the polycrystalline diamond obtained.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/566,635 in view of Samsonenko and Huang. The instant claims differ from the copending claims in that the range of values for dislocation density are 2.0 x 1015 m-2 or more and 4.0 x 1016 m-2 or less (instant claim 1) and 4.0 x 1015 m-2 or more and 1.0 x 1016 m-2 or less (instant claim 2). This dislocation density is obvious in view of Samsonenko, which teaches ranges of dislocation densities falling within and near the claimed range (density of 3.04x10^15/m2, Tables 3, 4). It would be obvious to arrive at the values taught by Samsonenko in view of Huang, which teaches polycrystalline diamond comprising nanotwin dislocations (abstract) and teaches that the presence of dislocations improves the hardness of polycrystalline diamond (p. 252 col. 1 pp. 1). It would therefore be obvious to one skilled in the art to modify the claims of copending ‘635 by introducing dislocations as taught by Samsonenko and arrive at the claimed invention prior to the effective filing date.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/Eileen Moudou/ Examiner, Art Unit 1738
/MICHAEL FORREST/ Primary Examiner, Art Unit 1738
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