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 Interpretation
Claims 1 through 10 are directed to a product-by-process invention. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP section 2113. Therefore, for the purposes of this examination the claims will be considered to require a n-type diamond film comprising a tantalum doped nanocrystalline diamond film on a seed layer comprising diamond which was on a single-crystal silicon wafer.
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 1-10 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
The term “high-conductivity high-mobility” in claims 1-10 is a relative term which renders the claim indefinite. The term “high-conductivity high-mobility” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claims are indefinite because it is not clear what conductivity and mobility the n-type diamond film has to have in order to be considered a “high-conductivity high-mobility” diamond film.
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.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al (U.S. Patent Publication No. 2020/0157676) in view of Tokuda et al (U.S. Patent Publication No. 2021/0222325).
In the case of claims 1-10, Xu teaches a multilayer substrate comprised of a chemical vapor deposition (CVD) grown diamond layer on a silicon layer (Abstract). Xu teaches that the diamond layer 6 was doped n-type film having nano-crystallinity (Page 3 Paragraph 0035). Xu further teaches that the diamond layer 6 was grown by hot-filament CVD (Page 3 Paragraph 0037). Xu further teaches that the silicon layer 4 was a sing crystal silicon wafer/layer (Page 3 Paragraph 0036). Furthermore, Xu teaches that prior to growing the diamond layer 6 a seed layer comprising diamond nano-powder was formed on the surface of the silicon layer/substrate 4 (Page 3 Paragraph 0040).
Though Xu teaches that the diamond layer 6 was doped Xu does not teach that the diamond layer was doped with tantalum.
Tokuda taught a process forming a diamond film doped with tantalum which gave the diamond a black appearance (Abstract and Page 1 Paragraphs 0009-0010). Tokuda teaches that the diamond film was doped with the tantalum by being grown by hot filament CVD using a tantalum filament (Page 1 Paragraph 0014-0016).
Based on the teachings of Tokuda, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have doped the diamond film of Xu with tantalum in order to give the diamond layer a black appearance.
Conclusion
Claims 1 through 10 have been rejected. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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