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 § 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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumiya et al (US 2020/0325596) in view of Sumiya et al (US 2007/0033810), Yamamoto et al (US 5,851,658) and Ishida et al (US 2017/0349441).
Sumiya et al teaches a method of producing a synthetic single crystal diamond to obtain a diamond single crystal containing nitrogen atoms 50 ppm or more and 550 ppm or less by a temperature difference process using a solvent metal; irradiating the diamond single crystal with one or both of an electron beam and a particle beam so as to apply an energy of 100 MGy or more and 1000 MGy or less to the diamond single crystal; and annealing the irradiated diamond single crystal at a temperature of 1700° C or higher and 1800° C or lower under normal pressure ([0015], [0061]), [0107] and Table 1 teaches diamond havin a nitrogen atom at a concentration of more than 60 ppm and 480 ppm or less which overlaps the claimed ranges of 50-550 ppm of nitrogen; 10-1000 MGy and 1500-1800°C). Overlapping ranges are prima facie obvious (MPEP 2144.05). Normal pressure is 1 atmosphere which is approximately 101 kPa. The pressure does not overlap the claimed range. However, the pressure taught by Sumiya is so close to the claimed the claim. A prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to produce products having the same properties. Titanium metal Corp. Am v Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Here, the minor difference of approximately 1 kPa would be expected to produce the same product, and the range is so close to be obvious to one of ordinary skill in the art at the time of filing. Sumiya et al also teaches explicit examples in Table 1, wherein the single crystal diamond contains a nitrogen concentration of 650 ppm; irradiating at 100 MGy; and annealing at 1700°C for 1 hour, which is explicitly within the ranges claimed by applicant. Sumiya et al teaches the method of claim 7 which is the method of manufacturing the single crystal diamond of claim 1.
Sumiya et al teaches a Knoop hardness was obtained in the following manner: an indentation was made with a load of 4.9 N in the <100> direction on the {001} plane of the synthetic single crystal diamond ([0102]-[0103]). Sumiya does not explicitly teach a first Knoop indentation is formed where a Knoop indenter is pressed in a <110> direction of a {110} plane in accordance with JIS Z 2251:2009 under conditions of a temperature of 23°C+5°C and a test load of 4.9 N; and the second Knoop indentation is Knoop indentation remaining; and the ratio b/a is 0.90 or less.
In a method measuring diamond, Sumiya (‘810) teaches measuring synthetic diamond having different nitrogen content at a (100) plane in <110> and <110> direction for Knoop hardness (Table 1; [0036]-[0037]).
In a method of measuring the hardness of diamond, Yamamoto et al teaches hardness of a diamond on (100) crystal plane and (111) crystal plane are about 5,700 kg/mm2 and 9000 kg/ mm2, respectively, by Knoops scale under a load of 500 g. The hardness on (110) crystal plane is intermediate between these values (col 1, ln 20 to col 2, ln 67).
Ishida et al teaches a Knoop hardness is measured using a method compliant with “JIS Z 2251:2009 Knoop Hardness Test-Measurement Method”. A common microhardness tester can be used for measurement of the Knoop hardness. A measurement environment may be room temperature (e.g., approximately 23° C.±5° C.). A Knoop-type indenter (having a rhomboid quadrangular pyramid shape) is used as an indenter. A material of the indenter is desirably monocrystalline diamond. A test force (load) is 4.9 N (0.5 kgf). The test force keeping time is 10 seconds. ([0077]-[0079]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Sumiya et al (‘596) by measuring the Knoop hardness in a the {110} plane, as taught by Yamamoto et al, in the <110> direction, as taught by Sumiya et al (‘810) to determine the Knoop hardness of different surface planes in different directions in the conventionally known planes and directions using the conventionally known standard Knoop process, JIS Z 2251:2009 Knoop Hardness Test-Measurement Method under conditions of a temperature of 23°C+5°C and a test load of 4.9 N, as taught by Ishida et al.
In regards the claims ratio of b/a of 0.90 or less, the combination of Sumiya et al (‘596), Sumiya et al (‘810), Yamamoto et al and Ishida et al teaches method of making the crystal, as discussed below in regards to claim 7, and measuring the Knoop hardness using the same method of measuring, measuring the same plane and direction; therefore, the ratio would be expected to be the same because a similar method is expected to produce similar results.
Referring to claim 2-6, these claims merely recite additional properties of the crystal of claim 1. The combination Sumiya et al (‘596), Sumiya et al (‘810), Yamamoto et al and Ishida et al teaches method of making the crystal, as discussed below in regards to claim 7, and measuring the Knoop hardness using the same method of measuring, measuring the same plane and direction; therefore, all of the claimed properties would be expected to be the same because a similar method is expected to produce similar results.
Referring to claim 8, the combination Sumiya et al (‘596), Sumiya et al (‘810), Yamamoto et al and Ishida et al teaches explicit examples of annealing at 1700°C for 1 hr (Sumiya ‘596 Table 1). For 1700°C: -0.097(1700)+175=10.1; -1.1(1700)+2030=160, and 60 mins is within the claimed range.
Response to Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Applicant’s arguments the prior art teaches away from the claimed range of 50 to 550 ppm is noted but not found persuasive. Applicant alleges that Sumiya (‘596) teaches the when the concentration is 600 or less, the hardness and chipping resistance of the synthetic single crystal is insufficient; therefore, teaches away from the claimed range of 50 to 550 ppm. However, Sumiya et al (‘596) also teaches comparative, non-preferred examples with a nitrogen concentration of 60 ppm and 480 ppm (See table 1). Patents are relevant as prior art for all they contain and non-preferred and alternative embodiments constitute prior art (See MPEP 2123). It is noted that during the interview conducted 01/26/2026, the examiner suggested that the proposed amendment would overcome the rejection of record because of Sumiya et al’s teaching away, however a more through examination of the reference determined that Sumiya et al teaches comparative examples with nitrogen concentrations within the claimed range; therefore, no motivation to change the nitrogen concentration would be required because Sumiya et al explicitly teaches embodiments within the claimed nitrogen concentration range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nohara et al (US 2021/0268562) teaches diamond material is made of single crystal diamond, a first surface of the diamond material is a (111) plane, a (100) plane, or a (110) plane ([0008], [0036]-[0043]).
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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