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 .
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.
Claims 1, 5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kitaichi et al. (JP 2018052129 A) in view of Uemura et al. (JP 2018204079 A).
Regarding claim 1, Kitaichi teaches a diamond tool (Kitaichi; Figs 2-6B; 40), comprising:
a base (Kitaichi; Figs 2-6B; 40) including a single-crystal portion (Kitaichi; P. 0038) formed by a single-crystal diamond (Kitaichi; P. 0038); and
the base (Kitaichi; Figs 2-6B; 40) is formed by only the single-crystal portion (Kitaichi; P. 0038) that is electrically insulating, diamond is an electrically insulating material.
Kitaichi does not teach a conductive portion formed on the single-crystal portion, wherein the conductive portion includes a conductive portion surface forming a surface of the diamond tool. While Kitaichi does not teach this specific portion Kitaichi does teach improving the conductivity of the single-crystal diamond by including trace amounts of impurities such as boron or phosphorus (Kitaichi; P. 0063).
Uemura teaches a tool (Uemura; P. 0004) and a conductive portion (Uemura; P. 0047) formed on the tool (Uemura; P. 0004), wherein the conductive portion includes a conductive portion surface (Uemura; P. 0047) forming a surface of the tool (Uemura; P. 0004). Such a conductive portion improves the life of the tool and the accuracy of the tool (Uemura; P. 0004).
It would have been obvious to a person of ordinary skill in the art before the filing date of the instant invention, when building the device from the ground up, to modify the diamond tool taught by Kitaichi such that it included a conductive portion with a conductive portion surface like that taught by Uemura as such a portion improves the life of the tool and the accuracy of the tool.
Regarding claim 5, Kitaichi in view of Uemura teaches the diamond tool according to claim 1, wherein the conductive portion has an electrical resistivity of 10 Ω cm or less (Uemura; P. 0010).
Regarding claim 7, Kitaichi in view of Uemura teaches the diamond tool according to claim 1, wherein the diamond tool (Kitaichi; Figs 2-6B; 40) is a scribing wheel (Kitaichi; P. 0006).
Regarding claim 8, Kitaichi in view of Uemura teaches a tool unit (Kitaichi; Fig. 1; 10), comprising: the diamond tool according to claim 1; and a tool support (Kitaichi; Figs. 1-2; 23) supporting the diamond tool (Kitaichi; Figs 2-6B; 40).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kitaichi (JP 2018052129 A) in view of Uemura (JP 2018204079 A) as applied to claim 1 above, and further in view of Uchiyama et al. (JP 2018192487 A) and Shintani et al. (JP 2012001798 A).
Regarding claim 2, Kitaichi in view of Uemura teaches the diamond tool according to claim 1.
Kitaichi in view of Uemura does not teach wherein the conductive portion surface includes hydrogen-terminated diamond.
Uchiyama teaches a conductive portion surface (Uchiyama; P. 0039 and 0053) including a hydrogen-terminated diamond (Uchiyama; P. 0039 and 0053). As evidenced by Shintani hydrogen-termination of a diamond produces better electrical conduction in the surface (Shintani, P. 0018).
It would have been obvious to a person of ordinary skill in the art before the filing date of the instant invention, when building the device from the ground up, to modify the conductive portion surface taught by Kitaichi in view of Uemura such that the surface included a hydrogen-terminated diamond like that taught by Uchiyama and as evidenced by Shintani as the hydrogen-termination of a diamond produces better electrical conduction in the surface.
Regarding claim 3, Kitaichi in view of Uemura, Uchiyama and Shintani teaches the diamond tool according to claim 2, wherein the conductive portion (Uemura; P. 0047) includes a hydrogen-terminated layer (Uchiyama; P. 0039 and 0053) and an impurity layer (Kitaichi; P. 0063), the impurity layer is formed on the single-crystal portion (Kitaichi; P. 0063), and the hydrogen-terminated layer is formed on the impurity layer and includes the hydrogen-terminated diamond, as Kitaichi considers the impurity layer a part of the diamond and the hydrogen-terminated layer is on top of the diamond this would result in the hydrogen-terminated layer being formed on the impurity layer.
Regarding claim 4, Kitaichi in view of Uemura, Uchiyama and Shintani teaches the diamond tool according to claim 3, wherein the conductive portion surface forms an entirety of the surface of the diamond tool (Uemura; P. 0047).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kitaichi (JP 2018052129 A) in view of Uemura (JP 2018204079 A) as applied to claim 1 above, and further in view of Coe et al. (US 2014/0150713 A1).
Regarding claim 6, Kitaichi in view of Uemura teaches the diamond tool according to claim 1.
Kitaichi in view of Uemura does not teach wherein the conductive portion has a thickness of 2000 nm or less.
Coe teaches a conductive portion (Coe; P. 0010 and 0034) wherein the thickness of the portion may be 1 nm, 5 nm, 10 nm, 20 nm, 50 nm, 100 nm, 500 nm or 1 μm (Coe; P. 0151), these thicknesses lay within the claimed range of 2000 nm or less. This allows for a thinner conductive portion to be used when desirable in applications where space is limited (Coe; P. 0151).
It would have been obvious to a person of ordinary skill in the art before the filing date of the instant invention, when building the device from the ground up, to modify the conductive portion taught by Kitaichi in view of Uemura such that the thickness of the portion was 1 nm, 5 nm, 10 nm, 20 nm, 50 nm, 100 nm, 500 nm or 1 μm or any desirable thickness like the layer taught by Coe as this allows for a thinner conductive portion to be used when desirable in applications where space is limited.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert D Cornett whose telephone number is (571)270-0182. The examiner can normally be reached M-F 7:30 am-5:30 pm.
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/ROBERT D CORNETT/Examiner, Art Unit 3724 /BOYER D ASHLEY/Supervisory Patent Examiner, Art Unit 3724
