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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-3 and 5-8 in the reply filed on 07/01/2026 is acknowledged. Claims 4 and 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Claims 1-3 and 5-8 are currently examined on the merits.
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 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.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3 and 5-8 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Yasunaga Nara (US 20210031308 A1, “Nara”), or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Nara.
Regarding claim 1, Nara teaches a method of processing a carbon-contained monocrystalline substrate that contains carbon as a main component of a single crystal, comprising a modified spot/region/void along a line (processed-groove) forming step of forming a processed groove in the diamond/silicon carbide crystal substrate (same carbon-contained monocrystalline substrate as recited in the instant claims 6 and 7) by applying a laser light (first laser beam) having a wavelength of 1030 nm (same laser beam wavelength as described in the instant PGPUB US 2025/0059681 A1, for example [0051], [0055], [0107], [0138], [0139], [0144], [0157]) absorbable by the carbon-contained monocrystalline substrate to the carbon-contained monocrystalline substrate (diamond/silicon carbide) along a projected dicing line (for example line 5) established on one surface of the carbon-contained monocrystalline substrate (abstract, 0002, 0013. 0020-0023, 0053-0063, 0155); If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP 2112.01 II; and a temperature rising (heating) step of causing modified/damage/fractures region (products from diamond/silicon carbide) that contain carbon, that have a damaged/modified structure (structure) different from that of a material of the carbon-contained (diamond/silicon carbide) monocrystalline substrate, that are produced in the processed-groove forming step, and that are positioned at least within the processed groove by applying a second laser beam having a wavelength having high transmittance (transmittable) through the carbon-contained monocrystalline substrate and absorbable by the products to the carbon-contained monocrystalline substrate along the processed groove (0006, 0062, 0067, 0068, 0091, 0149, 0157, 0413). As just addressed, Nara teaches the processed-groove forming step and the heating step of causing products, substantially the same or similar to the instantly claimed, and further teaches the modified region (products) is removed by evaporation (0022, 0060, 0072, 0364, 0370, 0372, claim 15). Even if it is not clearly envisaged that products react with oxygen to vaporize the products, it still would have been reasonably expected to one skilled in the art before the effective filing date that products would have reacted with oxygen to vaporize the products, because the same or similar process is expected to produce the same or similar results/effects. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. MPEP 2144 II.
Regarding claim 2, Nara teaches that the processed-groove forming step includes dividing/cutting/slicing (severing) the carbon-contained monocrystalline substrate by forming the processed groove that extends through the carbon- contained monocrystalline substrate from the one surface thereof to another surface thereof that is opposite the one surface (figs 2 and 4, 0020, 0021, 0057, 0060, 0145, 0150).
Regarding claim 3, Nara teaches that the processed-groove forming step includes forming the processed grove that has a depth from the one surface of the carbon-contained monocrystalline substrate to a point therein that is short of another surface thereof that is opposite the one surface, without severing the carbon- contained monocrystalline substrate (0082, 0083, 0153, 0281, 0427), the method further comprising intermittently second laser processing (before or after the heating) step, a dividing/slicing rupturing step of rupturing the carbon-contained monocrystalline substrate by applying an external force to a residual region of the carbon-contained monocrystalline substrate that underlies the processed groove in a thicknesswise direction of the carbon-contained monocrystalline substrate (0057, 0087, 0091, 0100, 0157, 0282, 0324, 0441, claim 1). Moreover, it is well-established that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). Also see MPEP 2144.04 IV C. Further, in general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held not to patentably distinguish the process (e.g., Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See MPEP 2144.04 (IV)(C).
Regarding claim 5, Nara teaches that the wavelength of the second laser beam applied to the carbon-contained monocrystalline substrate in the heating step is in a range of 1150 nm to 9500 nm (1.15 µm to 9.5 µm), overlapping the instantly claimed range. Overlapping ranges are prima facie obvious. 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, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05 I).
Regarding claim 6, Nara teaches that the carbon-contained monocrystalline substrate is a diamond substrate (0062).
Regarding claim 7, Nara teaches that the carbon-contained monocrystalline substrate is a silicon carbide substrate (0062).
Regarding claim 8, Nara teaches that the carbon-contained monocrystalline substrate is a diamond or a silicon carbide substrate (0062), same material as recited in the instant claims 6 and 7. Also, Nara teaches the processed-groove forming step and the heating step of causing products, substantially the same or similar to the instantly claimed, as just addressed. Therefore, it still would have been reasonably expected to one skilled in the art before the effective filing date that products would contained graphite or amorphous carbon, because the same or similar process is expected to produce the same or similar results/effects. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. See MPEP 2144 II. If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hua Qi whose telephone number is (571)272-3193. The examiner can normally be reached 9am-6pm.
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/HUA QI/ Primary Examiner, Art Unit 1714
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