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
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 11, 2026.
Applicant’s election without traverse of Group I in the reply filed on February 11, 2026 is acknowledged.
Claims 1-7 are pending, claim 1 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “There is provided” is language that can be implied.
Claim Objections
Claim 1 is objected to because of the following informalities: "According to an aspect of the present invention, there is provided" is language that is passive and subject to broad reasonable interpretation and should be deleted. Appropriate correction is required.
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.
Claims 1-7 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 1, claim 1 recites the limitation "the present invention" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 2-7, claims 2-7 are rejected for their incorporation of the above due to their respective dependencies on claim 1.
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, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2015/0345011 A1), hereinafter Choi.
Regarding claim 1, Choi teaches a niobium (metal) substrate with a niobium carbide layer on the substrate (shown in Fig. 2 to be on a main surface of the substrate) and an electrically conductive diamond layer on the niobium carbide layer ([0049]; Fig. 2), that is deposited (Abstract), where the thickness of the first conductive diamond layer is 2 microns or less ([0051]; a film). Choi further teaches that pinhole formed during the formation of the first conductive diamond layer (13) can be eliminated during the formation of the second conductive diamond layer ([0047]-[0049]). One of ordinary skill in the art reasonably understands that where pinhole(s) are eliminated, there are none that reach the substrate or niobium carbide layer, including those viewable from a surface. As such, the prior art overlaps with the claim limitation regarding pinholes.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding “observed with a scanning electron microscope … within a field of view of 20 micron by 20 micron”, this is functional language, where the feature of testing is defined by what it does, rather than what it is (MPEP 2173.05 (g)). The structural and property limitations (properties themselves are property limitations) of the claims shall be considered for patentable distinction, as the testing method itself is functional language which does not distinguish over the prior art (claims cover what a device is, not what a device does; MPEP 2114 II). In this instance, no pinholes reaching the substrate or the niobium carbide layer are present, is the structural limitation.
Examiner notes that “main surface” is subject to broadest reasonable interpretation and any surface is considered to be “main”, absent a teaching to the contrary.
Regarding claim 4, Choi teaches each limitation of claim 1, as discussed above and further teaches the niobium carbide on the substrate surface is NbC ([0054]).
Regarding claims 6 and 7, Choi teaches each limitation of claim 1, as discussed above, but does not specifically teach a crystallite size of the niobium carbide in the niobium carbide layer is 1-60 nm, nor a crystallite size of the niobium metal is 30-90 nm. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify Choi to incorporate these crystallite sizes. The motivation for doing so would have been where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144 IV A). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Claim(s) 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Choi in view of Xu et al. (CN 108486546 A Google Patents April 1, 2026 machine translation), hereinafter Xu (copies provided herewith).
Regarding claims 2 and 3, Choi teaches each limitation of claim 1, as discussed above, and further teaches the niobium substrate has a size of 3 mm wide ([0052]) onto which niobium carbide is formed ([0054]), and Fig. 2 is a sectional view of a diamond electrode (i.e. the entire electrode over 3 mm) ([0048]) and Fig. 2 shows the niobium carbide layer to be continuous over the whole electrode (Fig. 2 [0049]; including a width of 20 micron or more). Choi does not specifically teach the thickness of the niobium carbide layer is 0.5 micron or more or 0.5-5 microns.
Xu is in a similar field of endeavor of a base material of niobium (Pg. 2 [6]) with a diamond layer and a transition zone between the base material and diamond layer (Pg. 3 [3]) where the transition zone may be niobium carbide (Pg. 3 [5]). Xu teaches the thickness of the niobium carbide transition region is 0.5-2 micron preferred (Pg. 3 [5]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Choi to incorporate the thickness of the niobium carbide layer of Xu. The motivation for doing so would have been to provide enough material to improve the base material and diamond layer bond strength (Pg. 3 [3]; Xu), and thereby meet the intent of Choi (to increase adhesion between the substrate and diamond layer by action of the carbide; [0040] Choi)
Regarding “is observed with a scanning electron microscope”, this is functional language, where the feature of testing is defined by what it does, rather than what it is (MPEP 2173.05 (g)). The structural and property limitations (properties themselves are property limitations) of the claims shall be considered for patentable distinction, as the testing method itself is functional language which does not distinguish over the prior art (claims cover what a device is, not what a device does; MPEP 2114 II). In this instance, a continuous niobium carbide layer having a thickness of 0.5 micron or more is provided over a width of 20 microns or more in a cross section.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Allowable Subject Matter
Claim 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art to the instant claim is Choi, as discussed above in the rejection of claim 1. Choi does not teach, or suggest, alone or in combination with the prior art, wherein a main component of an upper portion of the niobium carbide layer is NbC and a lower portion of the niobium carbide layer is Nb2C.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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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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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784