DETAILED ACTION
In the amendment filed on June 18, 2026, claims 1 – 20 are pending. Claims 1, 2, 4, 6, 11, 12, 13 have been amended. Claims 15- 20 have been added.
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 .
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 – 14 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 claim 1:
Claim 1 has been amended to introduce the claim limitation “first linear hydrocarbon plasma”.
Under the plain meaning of the term “plasma”, a plasma is defined as a gas-like (but distinctly different) state of matter consisting of positively charged ions, free electrons and neutral particles1. Of those neutral particles, they can exist as whole molecular compounds or as radicals. Accordingly, a plasma is inherently a mixture of particle and molecule species that may contain specific gas molecules (e.g. hydrocarbons), but cannot be characterized by morphology the same way that a gas can be characterized. Furthermore, reactive plasmas such as those derived from hydrocarbon gases can exist in a state of ionization, excitation and recombination to the same or other molecular chemical species.
There then exists a lack of clarity primarily around the term “linear” with relation to “hydrocarbon” and “plasma”. In the previous presentation of the claims, the term “hydrocarbon plasma” has been interpreted alongside a recited constituent organic species and generally understood to consist of fragments of hydrogen with carbon, hydrogen fragments and carbon fragments (e.g. ·CH, ·CH2,
CH
3
-
, alkanes, alkenes, alkynes, pure hydrocarbon fragments that do not comply with CxHy where y ≥ x such as C3H2).
However, the term linear introduces a question of clarity: is the term “linear hydrocarbon plasma” meant to define a plasma only having linear hydrocarbons, characterized by linear hydrocarbon species or derived from linear hydrocarbon molecules? This is especially aggravated because no linear hydrocarbon species is required to be part of the linear hydrocarbon plasma; the first linear hydrocarbon plasma is only required to have organic species satisfying the recited formula, regardless of the morphology of the organic species. As a second question, would the plasma be required to be devoid of fragments that would not have a property of linearity, such as ·CH, ·CH2 radicals?
The claim limitation has no specific definition provided in the instant specification. In their reply filed on June 18, 2026, the Applicant stated that support for the limitation is derived from paragraphs [0040], [0055] and [0059] of their substitute specification. The referenced paragraphs does not expressly recite what may be considered a linear hydrocarbon gas, much less a linear hydrocarbon plasma; what is described is the ignition of a weak plasma from carbon-rich gases that include gas species that are inherently linear, e.g. ethene, propene and propyne or are understood within the art to specifically reference the linear isomers of certain alkane, alkene and alkyne species, e.g. propane, butene and pentane. There is no indication that would modify or clarify in light of the plain meaning of the term “plasma” and the term “linear”. Accordingly, one of ordinary skill in the art would not be reasonably appraised of the metes and bounds of the claimed subject matter, rendering the claim indefinite.
For the purpose of art rejections, the Examiner will interpret the term “first linear hydrocarbon plasma” as referring to a plasma comprising a linear hydrocarbon species, a plasma derived from a linear hydrocarbon species, or a plasma that would inherently or would have been expected to contain linear hydrocarbon fragments, radicals or species.
Additionally, the Examiner notes that the term “the first linear hydrocarbon plasma treated silicon substrate” does not have sufficient antecedent basis. The Examiner notes that while claim 1 introduces the term “a hydrocarbon plasma treated silicon substrate” that is formed from the recited “first linear hydrocarbon plasma”, the latter object “first linear hydrocarbon plasma treated silicon substrate” does not necessarily reference the aforementioned “hydrocarbon plasma treated silicon substrate”, and thus a question of clarity exists.
Regarding claims 16, 17:
Claim 16 recites “The method of claim 16, wherein the gas stream further …”. As the claim references itself, there is a lack of clarity as to what additional limitations are required. This appears to be a typo meant to be referencing claim 15. Claim 17 also contains a similar deficiency.
Dependent claims not enumerated above are rejected based on the deficiencies of their parent claims.
Claim Rejections - 35 USC § 103
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
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 – 20 is/are rejected 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 WO2023102273 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, 13, 14, 15, 16:
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; related to first linear hydrocarbon plasma] 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 having the empirical formula CxHy [second hydrocarbon] and with or without 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 ([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 the first hydrocarbon plasma of Tan is a linear hydrocarbon plasma, in light of the indefiniteness of the claims, including one of the organic species enumerated in claim 15;
that the second hydrocarbon is a second linear hydrocarbon; and
that silicon substrate has not been previously treated with a bias-enhanced nucleation (BEN) technique.
With regards to the silicon substrate having 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.
With regards to the first hydrocarbon plasma being a linear hydrocarbon plasma, and the second hydrocarbon is a second linear hydrocarbon:
As discussed above, Tan discloses that the precursors used in both the first and second mild plasmas comprising both adamantane and an organic species having the empirical formula CxHy.
Tzeng further discloses that examples of hydrocarbon gases that are typically used in diamond formation include methane [linear alkane hydrocarbon under the broadest reasonable interpretation of the claims], acetylene [linear alkyne hydrocarbon] and ethylene [linear alkene hydrocarbon] ([0032]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Tan in view of Tzeng by specifically using linear hydrocarbon gases such as acetylene or ethylene because as taught by Tzeng, the use of linear hydrocarbon gases such as acetylene and ethylene is known to be suitable for the purpose of forming carbon films, particularly diamond films. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
The Examiner notes that as invention of Tan as modified by Tzeng would have a combination of both adamantane and a linear hydrocarbon as a part of the first hydrocarbon plasma and the second gas stream would have a combination of both adamantane and a linear hydrocarbon, the first hydrocarbon plasma would be a first linear hydrocarbon plasma (in light of the indefiniteness of the claims) and the second gas stream would comprise a second linear hydrocarbon.
Regarding claims 4, 5, 6, 7, 9, 11, 17, 18:
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, 19, 20:
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.
Response to Arguments
Applicant's arguments filed June 18, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) Tan does not disclose, teach, or suggest a method involving the use of two linear hydrocarbons to form a nanocrystalline diamond film.
In response to the applicant's arguments, please consider the following comments.
a.) As a preliminary matter, during patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit' s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
A key consideration in constructing the broadest reasonable interpretation is the transition phrases used to enumerate the elements of a given claim. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004).
With respect to the requirement of a “first linear hydrocarbon plasma”, the broadest reasonable interpretation of the term is indefinite for the reasons stated above. Applicant’s argument on page 8 of their reply seem to indicate that there is an intention to require a linear hydrocarbon species within first linear hydrocarbon plasma. If intended, the Examiner notes that the first linear hydrocarbon plasma comprises the recited organic species. Similarly in independent claim 15, the recited first hydrocarbon plasma comprises the recited first hydrocarbon. The recited gas stream comprises the second hydrocarbon. Tan expressly teaches that a hydrocarbon is provided alongside the adamantane, and thus would satisfy the limitations concerning the first/second linear hydrocarbon plasma/ hydrocarbon.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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
1 See Plasma. (2014). In C. Cleveland & C. Morris (Eds.), Dictionary of Energy (2nd ed.). Elsevier Science & Technology. Infobase. https://access.infobase.com/article/2670912-plasma?aid=279753.
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