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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
A product and a process specially adapted for the manufacture of said product; or
A product and process of use of said product; or
A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
A process and an apparatus or means specifically designed for carrying out the said process; or
A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-6 drawn to a nanodiamond particles based physical unclonable functional material.
Group II, claim(s) 7-13 drawn to a method for preparing a nanodiamond particles based physical unclonable functional material.
Group III, claim(s) 14 drawn to a physical unclonable functional label.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a nanodiamond particles based physical unclonable functional material of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art
Erb discloses composite parts to be assembled with precise control over the orientation and spatial distribution of reinforcing or other particles within a matrix material (abstract). Erb discloses composite part comprising magnetically responsive particles embedded in a matrix material, a plurality of the magnetically responsive particles within a single layer having different orientations in the matrix material, the part having at least one of a mechanical property, a thermal property, an electrical property, an electromagnetic property, and an optical property that is anisotropic (para 0043). The magnetically responsive particles can have any desired shape or configuration to impart the intended properties to the finished composite part. Examples include, without limitation, discontinuous fibers, rods, platelets, flakes, whiskers, and platelets (para 0136).
With respect to the alignment and orientation limitation, Change in size and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04[R-1]
During a telephone conversation with MARK L. WEBER on July 8 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-6. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 4-6 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 4-6 recites the broad recitation particle size and coverage surface such as 50-1000000 nm or 1-500 nm and 0.1-100$% surface, and the claim also recites 100-10000 nm, 5-100 nm and 10-50% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 115232615).
Regarding claims 1, Zhang discloses method of microcrystalline diamond crystal grain with adjustable silicon space color centre luminescence intensity, comprising: selecting a certain crystal orientation epitaxial substrate; organic cleaning the substrate; carrying out ultrasonic seeding treatment to the cleaned substrate; pre-treating the substrate processed by ultrasonic seeding; growing microcrystalline diamond on the substrate, and adjusting the crystal grain orientation by adjusting the proportion of nitrogen and oxygen in the growth environment, so as to form the microcrystalline diamond grain with specific crystal orientation, so as to realize the control of the silicon space color centre luminescence intensity (abstract). The substrate is an intrinsic silicon substrate, the resistivity is greater than 2000 ohm-cm, the thickness is 1-3 mm, and the silicon crystal orientation is 100 (claim 2), where the silicon substrate is monocrystalline.
While there is no disclosure that the nanodiamond particles is an physical unclonable functional material as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. physical unclonable functional material, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Zhang and further that the prior art structure which is a nanodiamond identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claims 2-3, with respect to the chemical vapor deposition method and salt oxidation treatment, Any difference imparted by product by process limitations would have been obvious to one having ordinary skill in the art at the time of the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicant to establish that their product is patentably distinct not the examiner to show the same process of making, see In re Brown, 173 USPQ 685, In re Fessmann, 180 USPQ 324, In re Spada, 15 USPQ2d 1655, In re Fitzgerald, 205 USPQ 594 and MPEP 2113.
With respect to the nanodiamond and the soluble having a mass ratio of 1:0.1-10. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claim 4, Zhang discloses crystal grain size of the microcrystalline diamond crystal grain is 3-10 microns (claim 9).
Regarding claim 5, Zhang discloses the diamond powder suspending solution with the diamond particle size of 3-50nm as the ultrasonic solution; putting the cleaned substrate into the ultrasonic solution for ultrasonic treatment for 10-30 hours so as to form uniformly distributed diamond crystal seeds on the substrate (page 9).
Regarding claim 6, Zhang discloses step 3 comprises: preparing the diamond powder suspending solution with the diamond particle size of 3-50nm as the ultrasonic solution; putting the cleaned substrate into the ultrasonic solution for ultrasonic treatment for 10-30 hours so as to form uniformly distributed diamond crystal seeds on the substrate; where uniformly distributed on substrate would meet the surface coverage of 100% (page 3).
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (CN 104831253).
Regarding claim 1, 4-6 Hu discloses single-particle layer nano-diamond film with strong-Si-V illumination and preparation method: using hot-wire chemical vapor-phase deposition method, preparing single-particle layer nano diamond film with thickness of 500-700nm on a single crystal silicon substrate, and then the thin film air at 600 ℃ centigrade to preserve heat for 10 to 50 minutes, to obtain the single particle layer with strong Zn-V luminescence nano-diamond film (abstract), where the single layer would be adapted to cover the substrate surface of 100%. As Hu discloses nano diamond having a thickness of 500-700 nm, therefore it would intrinsically meet the particle size of 50-100000 nm.
While there is no disclosure that the nanodiamond particles is an physical unclonable functional material as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. physical unclonable functional material, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Hu and further that the prior art structure which is a nanodiamond identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claims 2-3, with respect to the chemical vapor deposition method and salt oxidation treatment, Any difference imparted by product by process limitations would have been obvious to one having ordinary skill in the art at the time of the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicant to establish that their product is patentably distinct not the examiner to show the same process of making, see In re Brown, 173 USPQ 685, In re Fessmann, 180 USPQ 324, In re Spada, 15 USPQ2d 1655, In re Fitzgerald, 205 USPQ 594 and MPEP 2113.
With respect to the nanodiamond and the soluble having a mass ratio of 1:0.1-10. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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