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 § 112
The preceding 35 U.S.C. 112(b) rejections of claims 3, 8, and 11 are withdrawn in view of applicants’ claim amendments.
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 1-2, 4-11, and 13-16 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 pre-AIA the applicant regards as the invention.
The term “ultra-flat” in claim 1 is a relative term which renders the claim indefinite. The term “ultra-flat” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Since neither the specification nor claim 1 as filed clearly ascertain the degree of flatness the surface must have in order to be considered as “ultra-flat,” its recitation in claim 1 is therefore considered to be indefinite. Dependent claims 2, 4-11, and 13-16 are similarly rejected due to their dependence on claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-7, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,526,768 to Jack Linn (hereinafter “Linn”) in view of U.S. Patent Appl. Publ. No. 2016/0197027 to Nasser-Faili (“Nasser”).
Regarding claim 1, Linn teaches a method for scalable fabrication of ultra-flat polycrystalline diamond membranes (see the Abstract, Figs. 1-5, and entire reference which teach a method of producing a flat diamond membrane (26)), comprising:
(1) performing chemical vapor deposition on a growth substrate to grow a polycrystalline diamond membrane, wherein a surface of the polycrystalline diamond membrane exposed to the air is a grown surface having a first roughness and a surface at which the polycrystalline diamond membrane is bonded to the growth substrate is a buried surface (see Fig. 2(a) and col. 1, l. 60 to col. 2, l. 33 which teach depositing a polycrystalline diamond layer (26) onto a substrate (28) by CVD to produce a composite wafer (24); see specifically col. 2, ll. 48-50 which teach that the CVD diamond layer is grown on a silicon wafer which would necessarily result in the formation of polycrystalline diamond due to their differing lattice parameters; moreover, the growth surface possesses a first roughness and there is a buried surface between the CVD diamond (46) and the substrate wafer (28));
(2) bonding the grown surface of the polycrystalline diamond membrane to a transfer substrate using an adhesive (see Fig. 2(c) and col. 1, l. 60 to col. 2, l. 33 which teach that the CVD diamond layer (26) is bonded to a handle wafer (34) using a bonding layer (32) which may be broadly considered as a type of adhesive); and
(3) removing the growth substrate to expose the buried surface of the polycrystalline diamond membrane, wherein the buried surface has a second roughness after exposure, and the second roughness is less than the first roughness (see Fig. 2(d) and col. 1, l. 60 to col. 2, l. 33 which teach that the substrate wafer (28) is removed in order to expose the buried surface of the CVD diamond layer (26) which has a second roughness which is less than the first roughness as a result of growth on a Si wafer having a smooth and polished surface).
Linn does not teach that the growth substrate has diamond seeds thereon. However, in Fig. 3 and ¶¶[0083]-[0100] Nasser teaches that CVD diamond generally grows as polycrystalline diamond with the size of the crystal grains changing with increasing thickness. The incubation phase produces relatively low nucleation densities which results in a high thermal boundary resistance across the interface between the substrate and the first-grown layers of diamond. In order to reduce the near-substrate thermal boundary resistance the substrate surface is prepared to have a very high nucleation density and this is achieved by seeding the substrate surface in step (303) with diamond seeds having a predetermined size distribution such as nanocrystalline diamond prior to CVD diamond growth. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to provide a plurality of diamond seeds on the substrate wafer (28) prior to growth of the CVD diamond layer (26) in the method of Linn in order to control diamond nucleation and growth such that a diamond layer and film-substrate interface having the desired thermal characteristics is produced.
Regarding claim 4, Linn and Nasser do not teach that the buried surface has a higher refractive index than the grown surface; and the buried surface has a lower extinction coefficient than the grown surface. However, since the method of Linn and Nasser performs each and every step of the claimed process using the same materials it must necessarily produce the same results, namely a buried surface which has a higher refractive index and a lower extinction coefficient than the grown surface. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. Therefore, a buried surface which has a higher refractive index and a lower extinction coefficient than the grown surface, if not clearly envisaged, would be reasonably expected by the skilled artisan. See Leinoff v. Louis Milona & Sons, Inc. 220 USPQ 845 (CAFC 1984).
Regarding claim 5, Linn and Nasser do not teach that the position of an XRD diffraction peak for the (111) crystal face of the buried surface is closer to the position of the standard (111) crystal face XRD diffraction peak for single crystal diamond than the position of the XRD diffraction peak for the (111) crystal face of the grown surface; and the full width at half maximum of the XRD diffraction peak of the (111) crystal face for the buried surface is less than the full width at half maximum of the XRD diffraction peak of the (111) crystal face for the grown surface. However, as noted supra with respect to the rejection of claim 4, since the method of Linn and Nasser performs each and every step of the claimed process using the same materials it must necessarily produce the same results, namely an XRD diffraction peak for the (111) crystal face of the buried surface and grown surface which has the position and FWHM as claimed. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. Therefore, an XRD diffraction peak for the (111) crystal face of the buried surface and grown surface which has the position and FWHM as claimed, if not clearly envisaged, would be reasonably expected by the skilled artisan. See Leinoff v. Louis Milona & Sons, Inc. 220 USPQ 845 (CAFC 1984).
Regarding claim 6, Linn does not teach that the polycrystalline diamond membrane has a thickness of 200 nm to 800 mm. However, in at least ¶[0065] and claim 12 Nasser teaches that the thickness of the polycrystalline CVD diamond layer typically has a thickness of at least 5 mm and up to 250 mm. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to deposit the CVD diamond layer (26) in the method of Linn to a thickness of up to 250 mm in order to produce a layer that is capable of efficiently conveying thermal energy.
Regarding claim 7, Linn and Nasser teach that the growth substrate is selected from one or more of Si, SiC, TiC, Co, Pt, Al2O3, Ni, Re, Ir, SiO2 and Mo (see col. 2, ll. 48-50 of Linn which teach that the CVD diamond layer is grown on a silicon wafer; see also at least ¶[0009] of Nasser which teach the CVD growth of polycrystalline diamond on a Si substrate).
Regarding claim 10, Linn does not teach that the diamond seeds in step (1) have a particle size of 2 to 10 nm; and a microwave plasma-assisted chemical vapor deposition device is used for the growth of the polycrystalline diamond membrane in step (1). However, in ¶[0088] Nasser teaches that the nanocrystalline diamond (NCD) seeds may have an effective diameter of less than 10 nm while ¶[0005] teaches that the CVD diamond layer may include a microwave energy source. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to use NCD seeds with a particle size of less than 10 nm and a microwave CVD source in order to more efficiently dissociate the precursor gases and facilitate a higher nucleation density such that a CVD diamond layer having the desired materials properties is produced.
Claims 2 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linn in view of Nasser and further in view of U.S. Patent No. 6,121,117 to Sato, et al. (“Sato”).
Regarding claim 2, Linn and Nasser do not teach that the step of removing the growth substrate is achieved by one or more of grinding, dry etching and wet etching. However, in Figs. 2A-D and col. 8, l. 51 to col. 11, l. 36 Sato teaches an analogous method in which a layer (202) deposited onto a substrate (205) is bonded and subsequently transferred to a second substrate (203). In Figs. 2C-D and col. 10, l. 32 to col. 11, l. 12 Sato specifically teaches that the original substrate (205) is then removed by wet etching via immersion in an etching solution such that only the deposited layer (202) remains on the second substrate (203). Thus, a PHOSITA prior to the effective filing date of the invention would look to the teachings of Sato and would recognize that the substrate wafer (28) in the method of Linn and Nasser may be removed by a wet etching process since this would involve nothing more than the use of a known material or technique according to its intended use. Use of a known material based on its suitability for its intended use has been held to support a prima facie determination of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1947). See also MPEP 2144.07.
Regarding claim 11, Linn and Nasser do not teach that the dry etching in step (3) is achieved with inductively coupled plasma (ICP) etching and/or reactive ion etching; and the wet etching comprises using a solution to dissolve the growth substrate. However, as noted supra with respect to the rejection of claim 3, in Figs. 2A-D and col. 8, l. 51 to col. 11, l. 36 Sato teaches an analogous method in which a layer (202) deposited onto a substrate (205) is bonded and subsequently transferred to a second substrate (203). In Figs. 2C-D and col. 10, l. 32 to col. 11, l. 12 Sato specifically teaches that the original substrate (205) is then removed by wet etching via immersion in an etching solution which dissolves the original substrate (205) such that only the deposited layer (202) remains on the second substrate (203). Thus, a PHOSITA prior to the effective filing date of the invention would look to the teachings of Sato and would recognize that the substrate wafer (28) in the method of Linn and Nasser may be removed by a wet etching process in which the growth substrate is dissolved since this would involve nothing more than the use of a known material or technique according to its intended use.
Claims 3 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linn in view of Nasser and further in view of U.S. Patent No. 5,500,077 to Nishibayashi, et al. (“Nishibayashi”) and still further in view of U.S. Patent No. 9,418,833 to Timothy Mollart (“Mollart”).
Regarding claim 3, Linn and Nasser do not teach that the first roughness is 10 to 200 nm; and the second roughness is 1 to 10 nm. However, in Fig. 1, col. 7, ll. 14-20 and Example 1 at col. 9, ll. 50-59 Nishibayashi teaches that polycrystalline diamond films grown on a Si substrate to a thickness of approximately 10 mm conventionally have a surface roughness of approximately 200 nm. Then in Fig. 2 and col. 5, l. 62 to col. 8, l. 29 Mollart teaches an analogous method of depositing a CVD diamond layer onto a substrate. In col. 7, l. 60 to col. 8, l. 8 Mollart specifically teaches that the surface for diamond growth preferably has a high quality surface finish in order to promote bonding and adhesion and, in one embodiment, the growth surface preferably has a surface roughness as low as 1 nm. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to use a substrate wafer (28) which has a surface roughness of 1 nm in the method of Linn and Nasser to promote bonding and adhesion between the diamond film (26) and underlying substrate (28) and would reasonably expect that the resulting CVD diamond film (26) grown thereupon would exhibit a surface roughness of approximately 200 nm as claimed. Alternatively, since the nucleation density and growth conditions such as the temperature, pressure, type and flow rate of the precursor gases, and growth duration determine materials properties such as the surface morphology of the resulting diamond film (26) it therefore would have been within the capabilities of a PHOSITA prior to the effective filing date of the invention to utilize routine experimentation to determine the growth conditions necessary to produce the desired surface roughness for the deposited diamond layer, including within the claimed range of 10 to 200 nm, that is necessary for a particular application.
Regarding claim 12, Linn and Nasser do not teach that second roughness is 1 to 5 nm. However, as noted supra with respect to the rejection of claim 3, in Fig. 2 and col. 5, l. 62 to col. 8, l. 29 Mollart teaches an analogous method of depositing a CVD diamond layer onto a substrate. In col. 7, l. 60 to col. 8, l. 8 Mollart specifically teaches that the surface for diamond growth preferably has a high quality surface finish in order to promote bonding and adhesion and, in one embodiment, the growth surface preferably has a surface roughness as low as 1 nm. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to use a substrate wafer (28) which has a surface roughness of 1 nm in the method of Linn and Nasser to promote bonding and adhesion between the diamond film (26) and underlying substrate (28) and would reasonably expect that the resulting CVD diamond film (26) grown thereupon would exhibit a surface roughness of approximately 200 nm as claimed. Alternatively, since the nucleation density and growth conditions such as the temperature, pressure, type and flow rate of the precursor gases, and growth duration determine materials properties such as the surface morphology of the resulting diamond film (26) it therefore would have been within the capabilities of a PHOSITA prior to the effective filing date of the invention to utilize routine experimentation to determine the growth conditions necessary to produce the desired surface roughness for the deposited diamond layer, including within the claimed range of 1 to 5 nm, that is necessary for a particular application.
Claims 8 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linn in view of Nasser and further in view of Mollart.
Regarding claim 8, Linn and Nasser do not teach that the growth substrate has a surface roughness of less than 2 nm. However, as noted supra with respect to the rejection of claim 3, in Fig. 2 and col. 5, l. 62 to col. 8, l. 29 Mollart teaches an analogous method of depositing a CVD diamond layer onto a substrate. In col. 7, l. 60 to col. 8, l. 8 Mollart specifically teaches that the surface for diamond growth preferably has a high quality surface finish in order to promote bonding and adhesion and, in one embodiment, the growth surface preferably has a surface roughness as low as 1 nm. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to use a substrate wafer (28) which has a surface roughness of 1 nm in the method of Linn and Nasser to promote bonding and adhesion between the diamond film (26) and underlying substrate (28).
Regarding claim 14, Linn and Nasser do not teach that the growth substrate has a surface roughness of less 1 nm. However, as noted supra with respect to the rejection of claim 3, in Fig. 2 and col. 5, l. 62 to col. 8, l. 29 Mollart teaches an analogous method of depositing a CVD diamond layer onto a substrate. In col. 7, l. 60 to col. 8, l. 8 Mollart specifically teaches that the surface for diamond growth preferably has a high quality surface finish in order to promote bonding and adhesion and, in one embodiment, the growth surface preferably has a surface roughness as low as 1 nm. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to use a substrate wafer (28) which has a surface roughness of 1 nm in the method of Linn and Nasser to promote bonding and adhesion between the diamond film (26) and underlying substrate (28).
Regarding claim 15, Linn and Nasser do not teach that the growth substrate has a surface roughness of less than 0.5 nm. However, as noted supra with respect to the rejection of claim 3, in Fig. 2 and col. 5, l. 62 to col. 8, l. 29 Mollart teaches an analogous method of depositing a CVD diamond layer onto a substrate. In col. 7, l. 60 to col. 8, l. 8 Mollart specifically teaches that the surface for diamond growth preferably has a high quality surface finish in order to promote bonding and adhesion and, in one embodiment, the growth surface preferably has a surface roughness as low as 1 nm. Since a smoother surface (i.e., a reduced roughness) promotes improved bonding and adhesion it therefore is considered to be a result-effective variable, i.e., a variable which achieves a recognized result. See, e.g., In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also MPEP 2144.05(II)(B). It therefore would have been within the capabilities of a PHOSITA prior to the effective filing date of the invention to utilize routine experimentation to determine the optimal surface roughness for the growth substrate, including within the claimed range of less than 0.5 nm, that is necessary to produce the desired level of adhesion and to avoid non-uniform stress build-up between the diamond film (26) and underlying substrate (28) and would process the surface as per the teachings of Mollart to produce a surface roughness within the claimed range for these reasons.
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linn in view of Nasser and further in view of U.S. Patent Appl. Publ. No. 2023/0392292 to Park, et al. (“Park”).
Regarding claim 9, Linn and Nasser do not teach that the adhesive is a resist, such as one or more of a poly(methyl methacrylate) electronic resist, a water-soluble poly(vinyl alcohol), an acetone-soluble photoresist. However, in Figs 2-3 and ¶¶[0048]-[0055] as well as elsewhere throughout the entire reference Park teaches an analogous method of bonding or adhering a layer (210) to a substrate (202) by means of, inter alia, an adhesion region (206). Then in ¶[0070] Park specifically teaches that the material from which the adhesion region is made is selected such that the adhesion region is capable of adhering to the first layer and may include a material such as PMMA, PVA, and the like. Thus, a PHOSITA prior to the effective filing date of the invention would be motivated to use as material such as PMMA or PVA as the bonding layer (32) in the method of Linn and Nasser in order to bond the CVD diamond layer (26) to the handle wafer (34) since this would involve nothing more than the use of a known material suitable for its intended use. Use of a known material based on its suitability for its intended use has been held to support a prima facie determination of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1947). See also MPEP 2144.07.
Claim 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linn in view of Nasser and further in view of U.S. Patent Appl. Publ. No. 2017/0233891 to Piracha, et al. (“Piracha”).
Regarding claim 13, Linn and Nasser do not teach that the polycrystalline diamond membrane has a thickness of 200 nm to 1 μm. However, in at least ¶[0065] and claim 12 Nasser teaches that the thickness of the polycrystalline CVD diamond layer typically has a thickness of between 5 mm and 250 mm, but is not so limited. Since the thickness of the deposited diamond layer determines the thickness of the resulting membrane it is considered to be a result-effective variable, i.e., a variable which achieves a recognized result. See, e.g., In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also MPEP 2144.05(II)(B). In this regard a PHOSITA prior to the effective filing date of the invention would be motivated to utilize routine experimentation to determine the optimal growth duration necessary to form a CVD diamond layer (26) in the method of Linn which has the desired thickness for a particular application, including within the claimed range of 200 nm to 1 μm. This is supported by at least Fig. 1, ¶[0024], and ¶¶[0039]-[0041] of Piracha which teach an embodiment of a crystalline diamond layer (12) which is utilized as a membrane and has a thickness of 0.3 mm. Accordingly, a PHOSITA prior to the effective filing date of the invention would be motivated to deposit the CVD diamond layer (26) in the method of Linn to a thickness of 0.3 mm in order to produce a crystalline diamond layer suitable for use as a membrane.
Claim 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linn in view of Nasser and further in view of Sato and still further in view of U.S. Patent No. 7,695,564 to Micovic, et al. (“Micovic”).
Regarding claim 16, Linn and Nasser do not teach that the dry etching in step (3) is achieved with inductively coupled plasma (ICP) etching and/or reactive ion etching; and the wet etching comprises using a solution to dissolve the growth substrate; preferably, step (3) comprises removing the growth substrate using grinding, dry etching and wet etching sequentially. However, as noted supra with respect to the rejection of claim 3, in Figs. 2A-D and col. 8, l. 51 to col. 11, l. 36 Sato teaches an analogous method in which a layer (202) deposited onto a substrate (205) is bonded and subsequently transferred to a second substrate (203). In Figs. 2C-D and col. 10, l. 32 to col. 11, l. 12 Sato specifically teaches that the original substrate (205) is then removed by wet etching via immersion in an etching solution which dissolves the original substrate (205) such that only the deposited layer (202) remains on the second substrate (203). In col. 11, ll. 13-27 Sato specifically teaches that removal of the desired portion of the substrate and/or layer may also be removed by a combination of grinding and etching processes such as wet etching with a mixture of hydrofluoric acid, nitric acid, and acetic acid. Thus, a PHOSITA prior to the effective filing date of the invention would look to the teachings of Sato and would recognize that the substrate wafer in the method of Linn and Nasser may be removed by subsequent grinding and wet etching processes in which the growth substrate is first ground down and then dissolved since this would involve nothing more than the use of a known material or technique according to its intended use.
Linn, Nasser, and Sato do not teach the use of a dry etching process after grinding and before wet etching. However, in at least Figs. 1-4 and col. 4, l. 48 to col. 6, l. 10 as well as elsewhere throughout the entire reference Micovic teaches an analogous method of depositing a polycrystalline diamond layer onto a substrate followed by removal of one or more portions of the supporting substrate. In col. 5, ll. 17-50 Micovic specifically teaches that there are various methods of removing the Si wafer which include, inter alia, a method of (4) lapping and polishing (i.e., grinding) the Si wafer (102) followed by dry etching in a Cl- or Br-based plasma. This is then followed by removal of the BOX layer by immersion in a wet etchant such as HF acid. Thus, a PHOSITA prior to the effective filing date of the invention would look to the teachings of Micovic and would recognize that the substrate may be removed by a process which further includes a dry etch in-between the grinding and wet etching processes with the motivation for doing so being to remove a surface layer of residual material after grinding in order to better facilitate the removal of subsequent material by wet etching.
Response to Arguments
Applicants’ arguments filed June 26, 2026, have been fully considered but they are not persuasive.
Applicants argue against the 35 U.S.C. 112(b) rejection of claim 1 for the recitation of the term “ultra-flat” by contending that a PHOSITA would understand that ultra-flat means low roughness and that the specification provides a definition. See applicants’ 6/25/2026 reply, pp. 5-6. This argument is not found persuasive as the use of the relative term “low roughness” to define the relative term “ultra-flat” does not provide any additional clarity regarding what, exactly, is considered as “ultra-flat.” Since the range of surface roughness values that are encompassed by the terms “low roughness” or “ultra-flat” cannot be readily determined from the specification as originally filed, its recitation in claim 1 is therefore considered to be indefinite. The Examiner notes that claim 3 was not and still is not rejected under 35 U.S.C. 112(b) as it recites specific values for the first and second roughness.
Applicants initially argue against the 35 U.S.C. 103 rejection of claim 1 by contending that Linn does not use diamond seeds and there is no indication that the diamond layer is a polycrystalline diamond membrane. See applicants’ 6/26/2026 reply, pp. 7-8. Applicants’ argument is noted, but is unpersuasive since, for one, it amounts to arguing against the references individually. In this case it is Nasser rather than Linn that is relied upon to teach the use of diamond seeds. Second, calling the diamond layer a “membrane” does not impart further limitations that distinguish the recited “diamond membrane” from a deposited diamond layer. Consequently, the diamond layer disclosed in the method of Linn may be equated with the diamond membrane as claimed. Finally, it is pointed out that since the diamond layer in Fig. 2 is grown on Si, the resulting film will necessarily be polycrystalline due to the differing lattice constants of Si and diamond or, alternatively, a polycrystalline diamond layer will necessarily result as a result of using a plurality of diamond seeds as per the teachings of Nasser.
Applicants then argue that Linn does not teach or suggest the use of an adhesive in order to bond the diamond membrane to a transfer substrate. Id. at pp. 8-9. Applicants’ argument is noted, but is unpersuasive. In this case the specification does not provide a clear definition for an adhesive which clearly distinguishes it from the bonding layer (32) that is utilized in the method of Lin. Since the bonding layer (32) facilitates attachment of the handle wafer (34) to the CVD diamond layer (26) it may be broadly considered as an adhesive as claimed. Alternatively, the poly-Si layer (30) may also be broadly considered as an adhesive which facilitates attachment of the CVD diamond layer (26) to the handle substrate (34). It is also pointed out that Park has been introduced to teach the use of an adhesive as specifically recited in claim 9.
Applicants then comment that Nasser does not disclose a membrane nor bonding of a transfer to the diamond layer with an adhesive. Id. at p. 9. It is again noted that identifying the diamond layer as a “membrane” does not provide a patentable distinction. Moreover, as discussed supra, these aspects of the claim are already taught by Linn rather than Nasser.
Applicants then comment that claims 4-6 and 12 are also patentable by contending that Linn and Nasser do not teach all of the limitations of claim 1. Id. at pp. 9-10. This argument also is found unpersuasive since, for reasons noted supra, Linn and Nassar do, in fact, teach each of the recited limitations.
Applicants then argue against the rejection of claims 2 and 11 by contending that Sato does not remedy deficiencies in Linn and Nasser because Sato does not teach or suggest a diamond material and the use of an adhesive. Id. at pp. 10-11. This argument is not found persuasive as it amounts to arguing against the references individually. In this case it is Linn rather than Sato that is relied upon to teach the growth of a diamond layer and the use of an adhesive as claimed. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues against the rejection of claim 3 by contending that while Nishibayashi teaches a roughness of 200 nm, it fails to disclose a range of 10 to 200 nm and that the 1 nm surface roughness disclosed in Mollart is the roughness of the interface layer (6) in Fig. 2(c) rather than the buried surface of the diamond layer as required by claim 3. Id. at pp. 11-13. This argument is not found persuasive since, for one, if the prior art discloses a value within the claimed range it therefore anticipates the range. In this case Nishibayashi teaches a surface roughness of 200 nm which touches and, hence, falls within the claimed roughness range of 10 to 200 nm. Second, it is noted that in col. 7, l. 60 to col. 8, l. 8 Mollart specifically teaches that the surface for diamond growth (i.e., the surface of the underlying substrate upon which the diamond layer is grown) preferably has a roughness as low as 1 nm in order to promote bonding and adhesion. This therefore means that Mollart specifically teaches that the buried surface of the diamond layer preferably has a roughness of as low as 1 nm as claimed.
Applicant argues against the rejection of claim 8 by contending that the growth substrate of the present invention is the grown surface of the polycrystalline diamond membrane and that in Mollard the surface with the roughness as low as 1 nm is the surface of the interface layer (6) not the grown diamond surface (8). Id. at p. 13. Applicants’ argument is noted, but is unpersuasive. The growth substrate recited in claims 1 and 8 refers specifically to the substrate upon which the diamond layer is deposited and is not the surface of the diamond layer itself. Since Mollart specifically teaches that the surface for diamond growth preferably has a roughness as low as 1 nm, the teachings of Mollart therefore meet the claim.
Finally, applicant argues against the rejection of claim 9 by contending that Park does not teach or suggest bonding a diamond layer to a transfer substrate using an adhesive. Id. at pp. 13-14. This argument also is found unpersuasive as it again amounts to arguing against the references individually. In this case it is Linn rather than Park that is relied upon to teach bonding the diamond layer to a transfer substrate. Park is merely introduced to teach that the types of adhesive agents recited in claim 9 are known in the art and that it would have been within the capabilities of a PHOSITA to utilize these same adhesives as a bonding agent in the method of Linn.
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.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714
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