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
Upon further consideration, claims 21-22 have been joined with the invention of Group I.
Applicant's election with traverse of Group I, claims 15-22, in the reply filed on 15 July 2026 is acknowledged. The traversal is on the ground(s) that there is not a serious burden to examine the inventions together. This is not found persuasive with respect to claims 23-32 because it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention (including employing different search queries)
The requirement is still deemed proper and is therefore made FINAL.
Claims 23-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 15 July 2026.
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.
Claims 15-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noguchi et al. (US 2018/0223447 A1)(Noguchi).
As to claims 15 and 16, Noguchi discloses a foundation (i.e., initial) substrate for forming diamond. See the title. Noguchi exemplifies a substrate of Si (100) having an off angle of 0°, 4° or 8° in the [011] direction. See paragraph [0049]. An off angle of 0° is the same as having no off angle. Moreover, crystalline silicon has a cubic crystal structure. In the cubic system, a Si(100) substrate having an off angle in the [011] direction is the same as a Si(001) substrate having an off angle in the [110] direction as recited in claim 15.
It is noted that the cited portion of Noguchi indicates planes using parentheses, whereas the instant application indicates planes using braces {}. In crystallography, parentheses indicate a specific plane, whereas braces indicate a family of planes. For example, {100} indicates the family of specific planes (100), (010), (001), (
1
¯
00), (0
1
¯
0) and (00
1
¯
). Although there are technical differences between braces and parentheses in crystallography, it is believed they are functionally equivalent in the instant case when dealing with cubic crystal structures.
Similarly, the cited portion of Noguchi employs brackets [] to indicate a crystal direction, whereas the instant invention employs angle brackets <>. Brackets indicate a specific crystallographic direction and angle brackets indicate the family of equivalent directions. For example, <110> indicates the family of specific directions [110], [
1
¯
10], [1
1
¯
0], [
1
¯
1
¯
0], [011], [0
1
¯
1
]
, [01
1
¯
]
, [0
1
¯
1
¯
], [101], [
1
¯
01], [10
1
¯
]
, [
1
¯
0
1
¯
]
. Although there are technical differences between brackets and angle brackets, it is believed they are functionally equivalent in the instant case when dealing with cubic crystal structures. Applicants are invited to correct the examiner if these interpretations are incorrect.
Noguchi further discloses the foundation substrate may be {111} with an off angle of 2° to 15° in the <
1
¯
1
¯
2> direction. See paragraphs [0019]-[0020]. The substrate may be silicon (i.e., Si{111}). See paragraph [0035].
Noguchi discloses single crystal MgO and Ir laminated layers on the foundation substrate. See paragraphs [0049]-[0051].
As to instant claims 17-20, the MgO and Ir laminated layers were grown to possess the same off angle as the underlying substrate. See paragraph [0056]. Thus, the MgO and the Ir will be single crystal (001) with no off angle or an off angle in the [110] direction of 4° or 8°; or single crystal (111) with an off angle of 2 to 15 degrees with respect to the <
1
¯
1
¯
2> direction.
As to claim 21, Noguchi disclose an diamond layer grown on the Si(100)/MgO/Ir or Si(111)/MgO/Ir substrate. See paragraph [0067].
As to claim 22, Noguchi fails to disclose the crystal orientation of the formed diamond layer. The diamond layer of Noguchi is presumed to inherently be {111} or {100} because it is grown by heteroepitaxy and the underlying substrate is {111} or {100} oriented.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15-22 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19-26 of copending Application No. 19/107,422 (‘422). Although the claims at issue are not identical, they are not patentably distinct from each other
Claims 15-22 are completely encompassed by claims 19-26 of the ‘422 application.
Claims 20 and 23 of the ‘422 teach off angle ranges that overlap the ranges recited in instant claims 16 and 19-20, and overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shreck et al. (US 2013/0143022 A1) discloses forming single crystal diamond on a Si(001) or Si(111) having yttria stabilized zirconia and iridium layers on it. The Si(001) or Si(111) are off-angle substrates.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Sample/Primary Examiner, Art Unit 1784
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