DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 25, 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the amendment filed on March 25, 2026, claims 1 – 14 are pending. Claim 1 has been amended.
Claim Rejections - 35 USC § 103
Claims 1 – 14 is/are remain under 35 U.S.C. 103 as being obvious over Tan et al. WO 2023102273 A1 and family members US 20230175120 A1 and US20250361605 A1 (with US20230175120 A1 and US20250361605 A1 cited for the same disclosure shared between family members, hereinafter “Tan”) in view of Tzeng US 20200362455 A1 (hereinafter “Tzeng”). The citations provided below map to the disclosure of the WO23102273 A1 publication, which may be similarly be found in the other family members.
The applied reference has a common joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding claim 1, 2, 3, 14:
Tan is directed to methods of seeding substrates for diamond film deposition and subsequent formation of a full nanocrystalline diamond film (Abstract, [0022]).
As depicted in Fig. 1 and Fig. 2A to 2E, Tan discloses that their method comprises:
providing a silicon substrate into a first plasma process chamber ([0006], [0014], [0016], [0029]);
exposing the silicon substrate to a first mild plasma comprising argon and organic species having the empirical formula CxHy, wherein y may be e.g. 2x+2, 2x, or 2x-2 [substantially y ≥ x] and adamantane [organic species with formula C10H16, also within the claimed empirical formula] to form an adamantane seed layer onto the silicon substrate [treated silicon substrate] ([0030] – [0033]);
exposing the seeded silicon substrate to a second mild plasma formed from a stream of argon gas and other organic species and adamantane having the empirical formula CxHy, to convert the adamantane seed layer into a diamond nuclei layer directly on the substrate surface [nucleation of diamond particles] at a power of e.g. 5 kW or 4 kW for e.g. 0.5 to 6 hours ([0034] – [0039]; Claim 10); and
moving the diamond-nucleated substrate to a second plasma chamber and then exposing the diamond-nucleated substrate to a third plasma that may be a microwave plasma, wherein the microwave plasma has a power may have a power greater than 50W ([0041] – [0044]; Claim 14)
Tan does not expressly teach that silicon substrate has not been previously treated with a bias-enhanced nucleation (BEN) technique.
In analogous art, Tzeng is directed to methods of nucleating diamonds on substrates without biasing the substrate (Abstract; [0010]). Tzeng discloses that biased enhanced nucleation (BEN) is known within the prior art ([0004] – [0005]). During BEN, the substrate is negatively biased to induce a negatively-charged bias state on the substrate during nucleation. In such a state, the positive ions from the plasma are accelerated by the potential difference between the plasma and the substrate. The positive ions then form diamond nuclei by bombarding the substrate with positive ions that are favorable for diamond growth. However, Tzeng also discloses that such a substrate state is not favorable for processing substrates that are textured with grooves or sidewalls due to electric filed screening and do not form uniform diamond films in such substrates ([0005]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have recognized an embodiment of Tan’s method where a silicon substrate had not been previously treated with a bias-enhanced nucleation technique otherwise would have modified the method of Tan to treat a silicon substrate without such previous treatment because Tzeng suggests substrates previously treated by bias-enhanced nucleation are not favored for creating uniform deposition of diamond films, especially where such films are applied to substrates with sidewalls and/or grooves.
Regarding claims 4, 5, 6, 7, 9, 11, 13:
As discussed above, Tan discloses that the seeded silicon substrate is exposed to a second mild plasma formed from a stream of argon gas and other organic species having the empirical formula CxHy with adamantane, to convert the adamantane seed layer into a diamond nuclei layer directly on the substrate surface [nucleation of diamond particles] at a power of e.g. 5 kW or 4 kW for e.g. 0.5 to 6 hours at temperatures between 50°C to 600°C and duty cycles between 10% and 100% ([0034] – [0039], [0046] – [0047]; Claim 10) at plasma source to substrate gap between 2 – 10 cm. Furthermore, the organic species described is a range of potential hydrocarbon species that overlap with the claimed hydrocarbon species. Finally, as the amount of gases present have to sum to 100%, an overlapping range of specific gas amounts exist. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Regarding claims 8, 10, 12:
Tan discloses that the third microwave plasma may be applied at a duty cycle of 60 – 100% and in a temperature range between 100°C – 750°C and plasma source to substrate gap of less than 10cm ([0047]).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02. See also MPEP 2155.01.
Double Patenting
The rejection of the claims under non-statutory double patenting is withdrawn. Applicant has timely filed a Terminal Disclaimer with co-pending application 18/062010 (now US Patent # 12534797) on March 11, 2026. The Terminal Disclaimer has been approved.
Response to Arguments and Declaration under 35 CFR 1.130(a)
Applicant's arguments filed on March 25, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) There is absolutely no requirement that the Declaration establish what parts of the disclosure were invented by which joint inventor and there is no requirement that the Declaration "provide a reasonable explanation of the presence of the additional joint inventor in WO2023/102273A. The Declaration Under 37 C.F.R. § 1.130 unequivocally establishes that the subject matter disclosed in Tan was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
In response to the applicant's arguments, please consider the following comments.
a.) As with what was stated in the previous Advisory Action, the Examiner notes that WO2023/102273A1 is co-invented by a/the joint inventors of the instant application, that the filing date of WO2023/102273A1 is before the effective filing date of January 27, 2022. However, WO2023/102273A1 also lists two other authors/joint inventors (Messrs. Jiteng Gu and Kian Ping Loh) that were part of the disclosure; WO2023/102273A1 therefore has a different inventive entity than that of the instant application and it is not immediately clear what parts of WO2023/102273A1 are attributed to one or more of the joint inventors of the present application.
Examiner notes that as of the mailing of the current Office Action, family member US 20250361605 A1 is a continuation of US 20230175120 A1 which ultimately claims priority from Provisional Application 63/286,087; which is also the same priority document from which WO2023102273 A1 claims priority (hereafter references to WO2023102273 A1 in addition to US 20230175120 A1 and US 20250361605 A1 are collectively referred to as the “Tan family members”).
The Applicant has filed under 37 CFR 1.130 a declaration to establish that the disclosures of the Tan family members are not prior art under 35 USC 102(a)(2) due to an exception in 35 USC 102(b). Where the authorship/inventorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an "unequivocal" statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure or relevant parts of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982). See also MPEP 717.01(a)(1).
Applicant argues that “there is absolutely no requirement that the Declaration … [has] no requirement that the Declaration “provide a reasonable explanation of the presence of the additional joint inventor in WO2323/102273A1”, as was quoted from the previous Advisory Action. The Examiner wishes to clarify that the recitation of “additional joint inventor” was meant to refer to “additional authors” (in this case the other joint inventors of the WIPO publication WO2023/102273A1, who are also and the other joint inventors of US 20230175120 A1 and US 20250361605 A1), as was established in the paragraph earlier.
However, the requirement that the Declaration filed under 37 CFR 1.130(a) provides a reasonable explanation of the presence of the additional authors (i.e. additional joint inventors of the Tan family members, Messrs. Jiteng Gu and Kian Ping Loh) remains, contrary to Applicant’s essential argument that such an explanation is not required. See MPEP 717.01(a)(1), which establishes:
(1) Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an "unequivocal" statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. See In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).
However as per MPEP 2155.01:
an affidavit or declaration under 37 CFR 1.130(a) that is only a naked assertion of inventorship and that fails to provide any context, explanation or evidence to support that assertion is insufficient. See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 123 USPQ2d 1146 (Fed. Cir. 2017). See also Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982).
No such context is provided within the Declaration nor is evidence presented to the particular teachings of the Tan family members.
The Examiner notes that while a declaration under 37 CFR 1.63 has been filed on February 23, 2024 as it pertains to the inventorship of the present application’s disclosure, the present application, as originally filed, does not answer to the specific disclosures found in Tan that meets the limitations of the presently claimed subject matter, especially the disclosure in Tan concerning adamantane and the process steps that involve adamantane. In view of the totality of the evidence on record, there still remains a question as to which parts of the disclosure is attributable to the inventor and/or joint inventors of the present application. Clear context, reasonable explanation as to the presence of other authors/joint inventors to the Tan family members, or persuasive argument should be established as to the contributions of the other authors/joint inventors of the Tan family members’ disclosures within future declarations and arguments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717