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.
Claims1-5, 8-10, 12-15 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Vince (USPGPub 2016/0230311).
Regarding claims 1-3 and 13, Vince teaches a diamond manufacturing system (abstract) comprising a hydrogen gas production system that produces hydrogen by electrolysis of water using renewable solar energy [0060], a methane gas manufacturing system by synthesizing the manufacture hydrogen gas and carbon dioxide wherein he flow rate of hydrogen is controlled by a valve system [0083]. Vince fails to teach wherein necessarily that the methane gas flow is controlled by valves. However, Vince does reasonably indicate that the pressure of methane employed to manufacture the diamond during the CVD process is controlled within a range [0051]. Given that Vince shows that it is known to control gas pressures using valves as shown above, in a case wherein it is not implicit that Vince uses pressure controls valves to control the gas pressure of methane, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use valves to control the methane pressure of Vince because Vince shows both a desire to control the gas pressure of the methane and the ability to control gas pressures otherwise using valves. This would be considered a use of a known gas control means to improve a similar gas provision means in the same way. Further, the examiner is taking Official Notice to inform the applicant that the use of valves to control gas flows and pressures is well known in the art as in Vince for example but also in a wide variety of other arts including spraying coatings, washing, medicine and in the automotive and airline industries and it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use valves to control the flow of any gas in the invention of Vince as a use of a known gas control means provided to a known gas employing system ready for improvement wherein the results of said use would be predictable based on the wide use and knowledge of the use of valves in a variety of fields of endeavor. Further it is noted that the system of Vince creates oxygen as a by-product of the hydrogen generating hydrolysis step as shown in Fig. 1. Vince fails to teach cleaning the apparatus with said oxygen gas. However, it is noted that the current claims are apparatus/system claims. They are not method claims. As such, it is not a requirement of the prior art perform the steps of the current claims. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claims 4 and 15, Vince further teaches the use of hydrogen and methane storage tanks (Fig. 2).
Regarding claim 5, Vince further teaches a methane purification system present between the methane manufacturing means and the methane storage tank (Fig.2). Vince fails to teach use of a hydrogen purification system between the hydrogen storage tank and the hydrogen manufacture means. However, Vince does show a desire to purify his process gases as shown above as relates to methane and a known means of doing so in the provision of a methane gas purification system between the methane production means and the methane storage tank. Those of ordinary skill in the art would readily recognize the purpose of this purification was at least in part to prevent the passing of impurities into the diamonds produced using the methane. Given that Vince shows that it is known to purify process gases used in the diamond manufacture process shown above, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to a hydrogen purification system in the apparatus of Vince because Vince shows both a desire to purify process gases and the ability to purify process gases. This would be considered a use of a known gas purification process to improve a similar gas provision in the same way.
Regarding claim 8, the teachings of Vince are as shown above. Vince fails to teach the use of a battery to store the solar power and using it to form the diamonds. However, the examiner is taking Official Notice to inform the applicant that it is well known in the art to use battery systems in conjunction with solar renewable energy, especially given that it is does not function at night or when the sun is not present. Such technology is present in many fields including home solar systems, automotive solar systems and commercial solar systems. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a battery in conjunction with the solar renewable energy of Vince in order to store the power for use when the sun is not capable of directly providing the energy needed to the system.
Regarding claim 9, the hydrogen and methane gas storage tanks of Vince would be considered “stand-by” sources. Further it is noted that providing standby sources of methane and hydrogen as well as standby valve to control the flow rates of those gases would be considered a mere duplication of already provided prior art structures that mere duplication of parts wherein the Court has found that the duplication of said parts has no patentable significance unless a new and unexpected result is produced. See In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Regarding claim 10, Vince further teaches wherein a portion of the hydrogen gas produced by be manufactured using the water generated in the Sabatier process of Vince [0035].
Regarding claim 12, Vince further teaches that the carbon dioxide employed may be “captured” wherein this capture carbon dioxide is used as the carbon dioxide source [0016].
Regarding claim 14, the valves of Vince would be considered control apparatus.
Regarding claim 19, the valves of Vince would be considered control apparatus.
Regarding claim 20, the valves of Vince would be considered control apparatus. Vince fails to teach the presence of a software to control the valves. However, first, the Court has long held that providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. See In reVenner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). In this case, merely automating the operation of the valves of Vince is not sufficient to distinguish over the prior art. Further the examiner is taking Official Notice to inform the applicant that automating the control of gas pressure valves in well known in a large number of fields including the CVD field and spraying fields including washing and coating, wherein some software is used to control the pressure and wherein the pressure can be set by a user. Further automated gas control is well known in welding and the operation of automobiles and airplanes. This allows for control of process parameters while not requiring a user to make adjustments manually or to control process parameters within very small ranges that might be difficult for a user to perform. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to automate the control of the valves and pressures of Vince using a software in order to allow the user or operator to adjust process parameters in a simple and largely automated fashion as an application of a known gas control technique applied to a known gas provision device ready for improvement and wherein the results of said improvement would be predictable based upon the wide use of the same types of controls in a wide range of fields.
Claim 6 are rejected under 35 U.S.C. 103 as being unpatentable over Vince (USPGPub 2016/0230311) as applied to claim 1-5, 8-10, 12-15 and 19-20 above and further in view of Tom (US5138869).
Regarding claim 6, the teachings of Vince are as shown above. Vince fails to teach wherein detecting the level of impurities in the hydrogen and methane gases and performing purification based upon a sensed level of impurities although as shown above Vince does teach the purification of the process gases. However, Tom teaches that it is known to perform gas purification processes based upon the detected level of impurities in the gases (see abstract). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to perform the gas purifications of Vince based on sensed impurities as shown by Tom as a use of a known gas impurity detection means provided to a known gas impurity removal system ready for improvement wherein the results of provision would be predictable based upon the teachings of Tom.
Claim 7 are rejected under 35 U.S.C. 103 as being unpatentable over Vince (USPGPub 2016/0230311) as applied to claim 1-5, 8-10, 12-15 and 19-20 above and further in view of Kudo et al. (USPGPub 2020/0002824).
Regarding claim 7, the teachings of Vince are as shown above. Vince fails to explicitly state that commercial power may be employed to operate the apparatus of Vince. However, Kudo teaches that commercial power may be used as an alternative to renewable sources for the electrolysis of water (see abstract and [0022-0024]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to directly power the electrolysis device of Vince using commercial power as guided by Kudo as simple substitution of one known power source for electrolytic operations wherein said substitution would be predictable based upon the teachings of Kudo.
Claim11 is rejected under 35 U.S.C. 103 as being unpatentable over Vince (USPGPub 2016/0230311) in view of Tom (US5138869) as applied to claim 6 and further in view of Yamazaki et al. (US4816113).
Regarding claim 11, the teachings of Vince in view of Tom are as shown above. Vince further teaches capturing the oxygen gas from the electrolysis process which is stored in a tank and then used to manufacture additional carbon dioxide in some cases [0100]. Vince in view of Tom fails to teach purifying the oxygen gas based on a detected level of impurities. However, as with the other process gases of Vince as shown above that are to be later employed in the manufacture process, there is a shown desire and means to detect impurities and purify process gases to prevent them from being present in the final products of Vince. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to perform the gas purifications of Vince in view of Tom as described for methane and hydrogen above for the same reasons as described above. Further it would have been obvious to provide flow means and storage for the oxygen of Vince in view of Tom for the same reasons that flow control means and storage means are provided for those gases as described above, said reasons at least in part for the ability to control the pressure of the gas and to deliver it as needed. Vince in view of Tom fails to teach the use of the oxygen produced during the electrolysis to clean the interior of the CVD chamber. However, Yamazaki teaches that the deposition of carbon materials like DLC and crystalline carbon may result in the deposition of sticky carbon deposits on the interior of the CVD chamber wherein oxygen may be employed to clean the chamber (see abstract). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to clean the CVD chamber for depositing carbon material using oxygen, specifically the oxygen produced by the electrolysis process of Yamazaki in order to clean the CVD chamber of Vince in view of Tom using oxygen as described by Yamazaki, as would be expected to be periodically needed as described by Yamazaki.
Response to Arguments
The applicant argues that the combination of prior arts as applied fails to teach the use of by-product oxygen as the source of a cleaning gas for the diamond manufacturing system. However, a couple of points should be made. As stated in the rejection above, the current claims are apparatus claims. The apparatus of the prior art need not follow the steps of the current claims in order to meet the claims limitations. The apparatus is defined by what it is structurally and not what it does. As such, the prior art provides by-product oxygen gas as claimed and is therefore reasonably as capable of using the oxygen formed to clean the apparatus. Likely the Yamazaki reference that was provided by the examiner is not necessary to reject the claims at hand given that the current claims are not drawn to a method that includes cleaning. The reference was provided to show that cleaning with oxygen is known to be performed in similar devices. Nonetheless, the prior art needs to only be capable of using the by-product oxygen to clean the apparatus as is provided in the Vince reference.
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 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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717