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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement is being considered by the examiner.
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 1-6,8,10-14 and 17-18 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 claims 1, 5, 6, 8, 11, 12, 13, and 17, each of the listed claims recites a list of alternatives, such as “comprises any one of…” or “selected from any of…”. These limitations appear to be in Markush grouping form, however, the lists of alternatives provided in each claim are not in closed groups. It is unclear what other alternatives are intended to be encompassed by the claim(s). See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022).
Regarding claim 11, claim 11 recites “wherein an achieved angle is selected”. Claim 1, from which claim 11 depends, recites “a desired angle”. It is unclear what the difference between the achieved angle and desired angle is.
Any claim listed as rejected above but not specifically addressed above has inherited the rejection of a claim specifically addressed above due to dependency therefrom.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, 6, 13, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sytenko (WO 2020/161637A1).
Regarding claim 1, Sytenko discloses a method of processing a diamond surface, the method comprising:
i. locating a diamond material having a first surface and a second, opposite surface, in a holder, the holder located at the end of a positioning arm (see holding unit 21 having collet 13 for holding a gemstone, including a diamond; see [0053-0053]; see Figure 2A; see also [0066]);
ii. processing the first surface on a rotating wheel (see abrasive surface 22, as well as [0044]; [0047]; [0053]: scaife);
iii. while the diamond material is in the holder, measuring an angle of the first surface relative to the second surface using a non-contact optical technique selected from any of a spectral reflectance technique, an interferometer and an autocollimator ([0042]; [0044-0046] [0054], [0056-0057]; [0062-0063], [0072], [0076-0078]);
iv. repeating steps (ii) and (iii) until a desired angle is achieved ([0061]: see iteratively performing the polishing controlled by a feedback signal, wherein [0060] discloses analysis of angles and facets; see also [0041], [0062], [0076]).
Regarding claim 13, Sytenko discloses Apparatus for processing a diamond surface, the apparatus comprising:
a rotating wheel (see abrasive surface 22, as well as [0044]; [0047]; [0053]: scaife; see Figure 2A);
a positioning arm located in proximity to the rotating wheel (see Figure 2A regarding elements 21, 11, and 5);
a holder located on the positioning arm, the holder being configured to hold a diamond material and to allow the diamond material to be pressed against the rotating wheel (see holding unit 21 having collet 13 for holding a gemstone, including a diamond; see [0053-0053]; see Figure 2A; see also [0066]);
a device configured to measure an angle between a first surface and a second, opposite surface of the diamond material while the diamond material is attached to the holder using a non-contact optical technique selected from any of a spectral reflectance technique, an interferometer and an autocollimator (0042]; [0044-0046] [0054], [0056-0057]; [0062-0063], [0072], [0076-0078]).
Regarding claim 2, Sytenko discloses the claimed invention as applied above, wherein Sytenko further discloses further comprising, after step (iii), making an adjustment to an angle at which the diamond material is held relative to the rotating wheel (wherein [0042] discloses the gemstone polishing unit comprises a first drive unit operatively coupled to the mandrel to confer motion to the mandrel, and wherein there is a second drive unit operatively coupled to the gemstone holding unit to provide at least one degree of motion, and wherein the image processing unit transmits feedback to one or both drive units to control motion; see also [0044], [0051]).
Regarding claims 3 and 14, Sytenko discloses the claimed invention as applied above, wherein Sytenko further discloses wherein the rotating wheel is a scaife polishing wheel ([0047], [0050], [0051]).
Regarding claim 5, Sytenko discloses the claimed invention as applied above, wherein Sytenko further discloses wherein the diamond material comprises any of natural diamond, high-pressure high-temperature (HPHT) diamond and chemical vapour deposition (CVD) diamond (see [0003]: wherein approximately two hundred and fifty tons of earth needs to be moved to produce a diamond, i.e. a natural diamond).
Regarding claim 6, Sytenko discloses the claimed invention as applied above, wherein Sytenko further discloses wherein the diamond material comprises any of single crystal diamond and polycrystalline diamond ([0003]: carbon crystalized in the isometric system as octahedrons, dodecahedrons, and cubes).
Claim Rejections - 35 USC § 103
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.
Claim(s) 4, 8, 10-12, 17, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sytenko (WO 2020/161637A1) in view of Godfried (US 2004/0229464).
Regarding claim 4, Sytenko discloses the claimed invention as applied above. However, while Sytenko discloses controlling the device in order to obtain a desired angle (see [0004-0005], [0007], [0048], [0051]), Sytenko is silent regarding the angle selected, and does not explicitly teach wherein the desired angle is 0°.
From the same or similar field of endeavour, Godfried teaches wherein the desired angle is 0° ([0092]: wherein the workpiece has two very parallel surfaces 10, 12, i.e. the angle which is desired to be produced is 0°; see also [0196]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Sytenko to achieve a workpiece which has two parallel surfaces, as taught by Godfried. One would be motivated to do so in order to diversify the capabilities of the device of Sytenko to produce other workpiece types and surfaces, thus enabling a user to select a larger variety of angles. This modification would be recognised as using a known technique, i.e. modifying surfaces such that they have 0 degrees when measured by incorporating additional polishing angles, to improve a similar diamond polishing device in the same manner, and would yield predictable results with a reasonable expectation of success.
Regarding claim 8, Sytenko discloses the claimed invention as applied above. However, Sytenko does not explicitly teach wherein the non-contact optical technique comprises an autocollimator selected from any one of a visual autocollimator, an electric autocollimator, a digital autocollimator and a laser autocollimator.
However, from the same or similar field of endeavour, Godfried teaches wherein the non-contact optical technique comprises an autocollimator selected from any one of a visual autocollimator, an electric autocollimator, a digital autocollimator and a laser autocollimator ([0128], [0130]: see collimated beams from a laser diode, as well as the computer portion; see also Figure 5, as well as [0149]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the specific collimated beams technique as taught by Godfried into the invention of Sytenko. One would be motivated to do so because Godfried provides a specific measurement device which is useful in the context of polishing diamond elements, and Sytenko intimates and suggests different types of detectors/monitors (see [0017, [0043-0046]). This modification would be recognized as using a known technique, i.e. an autocollimator in the context of diamond polishing devices, to improve a similar polishing device in the same data collection/detection manner, and would yield predictable results with a reasonable expectation of success.
Regarding claim 17, Sytenko discloses the claimed invention as applied above, wherein Sytenko further discloses wherein the device configured to measure the angle between the first surface and the second, opposite surface of the diamond material while the diamond material is attached to the holder (wherein the detector element 14 is connected to the base 3 and indirectly attached to the gemstone holding unit 21, see Figure 2B).
However, Sytenko does not explicitly teach the measurement device comprises any one of a visual autocollimator, an electric autocollimator, a digital autocollimator and a laser autocollimator.
However, from the same or similar field of endeavour, Godfried teaches of a measurement/detection device comprising any one of a visual autocollimator, an electric autocollimator, a digital autocollimator and a laser autocollimator ([0128], [0130]: see collimated beams from a laser diode, as well as the computer portion; see also Figure 5, as well as [0149]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the specific collimated beams technique as taught by Godfried into the invention of Sytenko. One would be motivated to do so because Godfried provides a specific measurement device which is useful in the context of polishing diamond elements, and Sytenko intimates and suggests different types of detectors/monitors (see [0017, [0043-0046]). This modification would be recognized as using a known technique, i.e. an autocollimator in the context of diamond polishing devices, to improve a similar polishing device in the same data collection/detection manner, and would yield predictable results with a reasonable expectation of success.
Regarding claims 10 and 18, Sytenko in view of Godfried teaches the claimed invention as applied above, wherein modified Sytenko further discloses claim 10: wherein the autocollimator is a visual autocollimator, the method further comprising the visual autocollimator displaying a first and a second illuminated reflected spot from the first surface and the second surface respectively, wherein an alignment of the first and second spots indicates the angle (see parallel beams [0093]; see also [0124], [0128], [0130], Figure 5), as well as claim 18: wherein the device is a visual autocollimator configured to display a first and a second illuminated reflected spot from the first surface and the second surface respectively, wherein an alignment of the first and second spots indicates the angle (see parallel beams [0093]; see also [0124], [0128], [0130], Figure 5).
Regarding claim 11, Sytenko discloses the claimed invention as applied above. However, Sytenko does not explicitly teach wherein an achieved angle is selected from any of no more than +/- 10 arc seconds, no more than +/- 5 arc seconds, and no more than +/- 2 arc seconds from the desired angle.
However, from the same or similar field of endeavour, Godfried teaches wherein an achieved angle is selected from any of no more than +/- 10 arc seconds, no more than +/- 5 arc seconds, and no more than +/- 2 arc seconds from the desired angle ([0196]: +/- 5 arc seconds; see also [0128], [0130]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Sytenko to achieve a workpiece which has an angle between surfaces comprising a range, as taught by Godfried. One would be motivated to do so in order to diversify the capabilities of the device of Sytenko to produce other workpiece types and surfaces, thus enabling a user to select a larger variety of angles. This modification would be recognised as using a known technique, i.e. modifying surfaces such that they have an angle there between of no more than +/- 10 arc seconds, no more than +/- 5 arc seconds, when measured by incorporating additional polishing angles, to improve a similar diamond polishing device in the same manner, and would yield predictable results with a reasonable expectation of success.
Regarding claim 12, Sytenko discloses the claimed invention as applied above. However, Sytenko does not explicitly teach wherein the diamond material has a surface roughness Ra measured by white light interferometry selected from any one of less than 1.0 nm, less than 0.8 nm and less than 0.5 nm.
However, from the same or similar field of endeavour, Godfried teaches wherein the diamond material has a surface roughness Ra measured by white light interferometry selected from any one of less than 1.0 nm, less than 0.8 nm and less than 0.5 nm ([0163-0164] teaches of the device configured to measure, wherein [0183] teaches of a surface roughness of less them 1 nm; see also [0201], [0254]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the ability to modify the surface of the workpiece to reflect the surface roughness as taught by Godfried into the invention of Sytenko. One would be motivated to do so in order to ensure the workpiece’s properties are achievable when selected by a user when desired (Godfried: [0242]). Furthermore, reduction of final surface flaws is a critical component when manufacturing particular workpieces, and the ability to provide a workpiece having the claimed surface roughness would thus ensure the standards for workpieces are maintained ([0201]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Leibowitz (US 4,517,770), see Figure 9.
Malshe (US 5,725413), see abstract, figures 1 and 2.
Twitchen (US 9,157,170), see Abstract and Figure 1.
Spowart (US 7,317,964), see Figures 2 and 3.
Nebel (US 10,564,351), see Figures 3-7.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm.
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
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