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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/1/2026 has been entered.
Response to Arguments
Regarding the prior art, Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. New grounds of rejection are due to amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 includes that the nucleation on the surface of the substrate is performed without seeding. However, this language is not present in the disclosure. Further, the mere absence of a positive recitation is not basis for an exclusion (MPEP 2176.05(i)) Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977)
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 1-4 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. The Raman Shift peak needs clarified that the shift occurs from the silicon substrate, this is currently not clear and confusing. One of ordinary skill in the art would look at the instant figures that have Raman spectra in the 1250 CM-1 and up and not know where the disclosure of 520 is coming from as this peak is not shown in the Figures.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirkpatrick (US 5082359) in view of Li et al. (Precision Engineering 71 (2021) 103-118; as cited on the 7/24/24 IDS) and Ali et al. (Solid State Sciences Vol 14, Issue 4, (2012) 540-544.
As to claim 1, Kirkpatrick subjects a silicon surface to an unevenness formation as claimed (plasma, for example in the abstract) to create a surface roughness over 10 nm as broadly claimed in Example 1. Further, Kirkpatrick teaches a single crystal silicon substrate (col 2 lines 13-25) that inherently has a Raman shift at 520 cm-1 undamaged. It would have been obvious to one of ordinary skill in the art that when the surface roughness is changed to that claimed, the Raman shift peak is modified to the amount claimed as well as the peak depends upon the roughness treatment as claimed. Further, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed Raman shift based on the surface roughness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
In addition, Li et al., in Figures 17 and 18, shows the desirability of damaging a Si substrate such that the Raman spectra shifts in the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kirkpatrick to include the damage amount of Li et al. as Li et al. teaches the art recognized suitability and utility of such a Raman shift.
Kirkpatrick uses seeding. Ali et al. teaches that diamond deposition may occur with or without seeding, and that not seeding is preferable as it reduces the amount of defects in the film, is less expensive and is more suitable for electronic applications (abstract, p 540). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kirkpatrick to deposit its diamond without seeding as Ali et al. teaches not seeding is preferable as it reduces the amount of defects in the film, is less expensive and is more suitable for electronic applications.
As to claim 2, hot filament CVD is used in Kirkpatrick Example 1 and Ali (Abstract).
As to claim 3, the Kirkpatrick Figures show crater or unevenness formation on parts of the regions of the substrate and these are nucleation regions as in the abstract. Ali teaches a pretreatment without seeding (Experimental section)
As to claim 4, hot filament CVD is used in Kirkpatrick Example 1 and Ali (Abstract).
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ali et al. (Solid State Sciences Vol 14, Issue 4, (2012) 540-544 in view of Kirkpatrick (US 5082359) and Li et al. (Precision Engineering 71 (2021) 103-118; as cited on the 7/24/24 IDS) and Ali et al. (Solid State Sciences Vol 14, Issue 4, (2012) 540-544.
As to claim 1, Ali et al. deposits diamond by a CVD method on a silicon substrate (p 540, 541) using a CVD method. Ali et la. does not teach damaging the silicon substrate before deposition.
Kirkpatrick subjects a silicon surface to an unevenness formation as claimed (plasma, for example in the abstract) to create a surface roughness over 10 nm as broadly claimed in Example 1. Further, Kirkpatrick teaches a single crystal silicon substrate (col 2 lines 13-25) that inherently has a Raman shift at 520 cm-1 undamaged. It would have been obvious to one of ordinary skill in the art that when the surface roughness is changed to that claimed, the Raman shift peak is modified to the amount claimed as well as the peak depends upon the roughness treatment as claimed. Further, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed Raman shift based on the surface roughness, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
In addition, Li et al., in Figures 17 and 18, shows the desirability of damaging a Si substrate such that the Raman spectra shifts in the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kirkpatrick to include the damage amount of Li et al. as Li et al. teaches the art recognized suitability and utility of such a Raman shift.
Kirkpatrick damages the substrate in order to define nucleation cites for diamond in the abstract. It would have been obvious to one of ordinary skill in the art at the time of filing to modify Ali et al. to include damaging a Si substrate before deposition as taught by Kirkpatrick and Li et al. in order to define nucleation cites.
As to claim 2, hot filament CVD is used in Kirkpatrick Example 1 and Ali (Abstract).
As to claim 3, the Kirkpatrick Figures show crater or unevenness formation on parts of the regions of the substrate and these are nucleation regions as in the abstract. Ali teaches a pretreatment without seeding (Experimental section)
As to claim 4, hot filament CVD is used in Kirkpatrick Example 1 and Ali (Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/ Primary Examiner, Art Unit 1718
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