Ex Parte Twitchen et al

Patent Trial and Appeal Board

Jan 26, 2017

12968862 (P.T.A.B. Jan. 26, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/968,862 12/15/2010 Daniel James Twitchen 58116-945487 3165
23370 7590 01/30/2017
KTT PATRTrK TOWNSFND fr STOrKTON T T P
EXAMINER
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SCHLEIS, DANIEL J
SUITE 2800 ART UNIT PAPER NUMBER
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NOTIFICATION DATE DELIVERY MODE
01/30/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL JAMES TWITCHEN, ANDREW MICHAEL
BENNETT, RIZWAN UDDIN AHMAD KHAN, and
PHILIP MAURICE MARTINEAU
Appeal 2015-007409
Application 12/968,862
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 8—15 and 17—19 of Application
12/968,862. We have jurisdiction under 35 U.S.C. § 6(b). We affirm—in­
part.
1 Appellants identify the real party in interest as Element Six Technologies
Limited (UK). App. Br. 1.
Appeal 2015-007409
Application 12/968,862
BACKGROUND
The subject matter on appeal relates to a synthetic diamond material
made by chemical vapor deposition (“CVD”) in which significant quantities
of single substitutional nitrogen are incorporated into the diamond lattice
during growth, while simultaneously lowering the presence of other defects
such as vacancy clusters. App. Br. 3. The material can be formed to have a
yellow coloration dominated by single substitutional nitrogen while
minimizing brown coloration due to the presence of other defects such as
vacancy clusters which typically form in combination with nitrogen doping
of CVD diamond material. Id.
Claim 8, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the claims on appeal:
8. Synthetic CVD diamond material comprising single
substitutional nitrogen (Ns°) at a concentration of greater than
about 0.5 ppm and having a total integrated absorption in the
visible range from 350 nm to 750 nm such that at least about
35% of the absorption is attributable to Ns°.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Twitchen et al. US 2004/0194690 A1 Oct. 7, 2004
(hereinafter “Twitchen ‘690”)
Shiomi et al. US 5,400,738 Mar. 28, 1995
(hereinafter “Shiomi”)
THE REJECTIONS
1. Claims 8—15 and 17—19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Twitchen ’690 in view of Shiomi.
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Application 12/968,862
2. Claims 8—11, 13, 14, and 16—19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shiomi.
DISCUSSION
Rejection 1
Appellants present arguments directed to sole independent claim 8
and dependent claims 9, 10, 11, 14, and 17, which we address below. All
other dependent claims, i.e., claims 12—13, 15, 18, and 19, stand or fall with
claim 8. 37 C.F.R. § 41.37(c)(l)(iv)(2013).
Twitchen ’690 is directed to a single crystal CVD diamond,
particularly a fancy colored diamond suitable as a gemstone. Twitchen ’690
Abstract, 121. Based on Twitchen ’690, the Examiner finds it was known
to introduce nitrogen into a CVD gas mixture to produce a synthesis
atmosphere of 0.5 to 500 ppm nitrogen and that nitrogen could be used to
cause morphological changes to a growing single crystal CVD diamond, in
addition to producing color centers in the diamond. Ans. 3—4, citing
Twitchen ’690 H 2—3, 30—31. The Examiner further finds that Twitchen
’690 teaches the perceived color of an object depends on its
transmittance/absorbance spectrum, and can also be influenced by its
luminescence properties. Ans. 13—14, citing Twitchen ’690 H 67, 87. In
particular, the Examiner finds that Twitchen ’690 explicitly teaches that the
CVD process parameters can be adjusted to control the color of the resulting
diamond. Ans. 13, citing Twitchen ’690 1 84.
The Examiner acknowledges that Twitchen ’690 does not explicitly
set forth varying the hydrocarbon source gases of a CVD process, but
determines it would have been obvious to a person of ordinary skill in the art
to have modified the flow rates of the hydrocarbon source gases based on
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Application 12/968,862
Shiomi’s teaching of varying the supply amounts of a carbon-containing
compound, an oxygen-containing compound, and a dopant in a CVD process
in order to obtain desired properties in the CVD diamond. Ans. 4—6, citing
Shiomi 2:17-21, 3:30-52.
Appellants argue that the Examiner has not established a prima facie
case of obviousness for several reasons: (1) Twitchen ’690 does not disclose
or suggest how to avoid introduction of nitrogen defects other than single
substitutional Ns° (such as vacancy clusters) in order to achieve a colored
CVD diamond material; (2) modification of the synthesis parameters of
Twitchen ’690 to avoid introduction of a significant quantity of optically
active defects (such as vacancy clusters) without eliminating Ns° defects
would render Twitchen ’690 unsatisfactory for its intended purpose because
non-Ns° defects are specifically required to form Twitchen ’690’s material;
(3) there is no recognition in Twitchen ’690 or Shiomi of result effective
variables that a person of ordinary skill would have optimized to achieve a
single crystal CVD diamond having a high concentration of Ns°but a low
concentration of other optically active defects. App. Br. 6—20; Reply Br. 2—
6.
Appellants’ arguments do not persuade us of harmful error by the
Examiner. The synthetic CVD diamond materials taught by Twitchen ’690
comprise Ns° at a concentration encompassed by the claimed range.
Twitchen ’690 130. Further, claim 8 does not exclude the presence of
defects other than Ns°, so long as at least about 35% of the absorption in the
visible range from 350 nm to 750 nm is attributable to Ns°. Claims Appx.
Appellants’ arguments based on Twitchen ’690’s combination of Ns° and
non-Ns° defects thus do not establish that Twitchen ’690 is excluded by
claim 8 because they do not address the percentage of absorption attributable
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Application 12/968,862
to Ns° defects. For example, Appellants’ argument that “it is a central and
essential feature of the invention of Twitchen ’690 that optically active
defects other than single substitutional nitrogen are incorporated in CVD
diamond material to achieve the colors as describe in Twitchen ’690” (App.
Br. 9), even if assumed to be correct, does not establish that Twitchen ’690
falls outside the scope of claim 8 because the claim does not require that all
defects are Ns° defects.
Further, as the Examiner explained, Twitchen ’690’s disclosure is not
limited to its specific embodiments; the broader teaching of Twitchen ’690
sets forth utilizing Ns° doping to produce a colored diamond. Ans. 13, citing
Twitchen ’690 H 2, 53. See In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.”) Thus, Appellants’ argument that Twitchen ’690 “specifically
requires the presence of defects other than single substitutional Ns° defects in
order to achieve the desired colored CFD diamond materials described
therein” (App. Br. 6, emphasis in original) is not persuasive because it does
not properly take into account the general disclosures of Twitchen ’690.
Similarly, the Examiner’s reasoning that Twitchen ’690 recognizes the
parameters of CVD diamond synthesis as result effective variables is
sufficient to support the determination of obviousness. Twitchen ’690
explicitly recognizes that properties such as color, hue, saturation, and
lightness can be controlled by adjusting parameters of the CVD diamond
process. Twitchen ’690 Tflf 81, 84; see In re Applied Materials, Inc., 692 F.3d
1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.”)
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Application 12/968,862
Moreover, Appellants have not submitted convincing evidence to show
criticality of any CVD synthesis parameter, but merely attorney argument.
E.g., App. Br. 8—10. We have reviewed the Declaration Under 37 C.F.R.
§1.132 of co-inventor Daniel James Twitchen dated February 27, 2014 but
do not find it persuasive because it does not provide a factual basis to rebut
the Examiner’s findings. We discern no reversible error in the Examiner’s
assessment of the weight to be given to the opinion of an interested party. In
re Oelrich, 579 F.2d 86, 91 (CCPA 1978) (consider the nature of the matter
sought to be established as well as the strength of the opposing evidence in
assessing the probative value of expert opinion); In re Altenpohl, 500 F.2d
1151, 1158 (CCPA 1974) (lack of factual support rendered an affidavit of
little probative value in overcoming obviousness rejection). Accordingly,
we sustain the rejection of claim 8.
Claim 9 depends from claim 8 and additionally requires that the
diamond material have a hue angle greater than about 80- for a transmission
pathlength of 1 mm. Appellants argue Twitchen ’690 is directly contrary to
claim 9, because it discloses a CVD diamond layer having a hue angle of
preferably less than 80°, preferably less than 75°, and more preferably less
than 70°. App. Br. 20, citing Twitchen ’690 114. We construe the term
“about” as used in claim 9 and Twitchen ‘690 to permit some tolerance. See
In re Ayers, 154 F.2d 182, 184-185 (CCPA 1946) (prior art disclosure of not
exceeding “about 8%” encompassed the claim limitation “at least about
10%”). Thus, “greater than about 80°” includes values slightly less than
80°. Appellants do not provide any convincing evidence that the “preferably
less than 80°” range taught by Twitchen ’690 fails to overlap the range of
claim 9. Further, Appellants do not submit any evidence of criticality of the
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Application 12/968,862
claimed range. App. Br. 20. Accordingly, we sustain the rejection of claims
9 and 10, which Appellants argue as a group.
Claim 11 depends from claim 8 and additionally requires that the
concentration of Ns° is greater than about 2.5 ppm, as measured using the 270
nm peak using UV-visible absorption spectroscopy. Appellants argue that
an example of Twitchen ’690 discloses Ns° concentration of 0.3 ppm, which
is 88% less than the Ns° concentration required by claim 11. App. Br. 21,
citing Twitchen ’690 1133. Appellants’ argument lacks persuasive merit;
although Twitchen ’690 does not exemplify an Ns° concentration within the
range recited in claim 11, as discussed above, it teaches an overlapping
range. See Twitchen ’690 130. Accordingly, we sustain the rejection of
claim 11.
Claim 14 depends from claim 8 and recites additional limitations
relating to the color parameters of the CVD diamond material. Claim 17
depends from claim 8 and additionally requires that the diamond material is
in the form of a doublet, which is a synthetic CVD diamond material made
in layered sections of different quality, with the higher quality material at the
top. App. Br. 22. Appellants argue that Twitchen ’690 does not disclose or
suggest a color parameter a* within the range recited in claim 14 because
none of Twitchen ’690’s examples are within the claimed range (App. Br.
22, citing Twitchen ’690 82, 131,141, 156), and similarly that it does not
disclose a doublet. App. Br. 22. The Examiner responds that in view of
Twitchen ’690’s disclosure and recognition that parameters of CVD
synthesis are result effective variables, it would have been obvious to a
person of ordinary skill in the art to have selected the appropriate parameters
to produce a diamond having a desired color. Ans. 6. As discussed above,
we are not persuaded of reversible error in the Examiner’s findings
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Application 12/968,862
regarding result effective variables. Accordingly, we sustain the rejections
of claims 14 and 17.
Rejection 2
The Examiner finds that Shiomi discloses a method for epitaxial
growth of a single crystal diamond film using hydrogen gas, a carbon-
containing compound, an oxygen-containing compound, and optionally a
dopant, comprising boron, lithium, nitrogen, and other compounds. Ans. 8,
citing Shiomi 1:13—18,2:17—21. The Examiner further finds that Shiomi
teaches adjusting the amount of the carbon-containing compound and
oxygen-containing compound relative to the degree of super-saturation of
the carbon-containing compound in order to affect the color and other
optical properties of the diamond, its roughness, and electrical
characteristics. Ans. 8—9, citing Shiomi 3:30—52. The Examiner thus
determines it would have been within the ability of a person of ordinary skill
in the art to have selected the flow rates of the oxygen, carbon and hydrogen
components and the amount of substitutional nitrogen in order to produce a
diamond having the desired properties, including color. Ans. 9.
Appellants argue that there is no teaching by Shiomi that addition of
oxygen to the synthesis chemistry affects the visible color of the diamond,
and that Shiomi does not even mention color anywhere in its disclosure.
App. Br. 14. Appellants further argue that Shiomi’s teaching of improving
“optical characteristics” does not relate to visible color of the diamond, and
therefore Shiomi does not suggest that use of oxygen in the CVD synthesis
atmosphere will affect the color of the diamond material. Id. 14—15. The
Examiner does not respond to these arguments, other than a conclusory
assertion that there is no indication that the product produced by Shiomi
would not have the claimed properties. Ans. 17. Appellants’ arguments are
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Application 12/968,862
persuasive that the Examiner has not provided the requisite factual basis that
Shiomi alone would render the appealed claims obvious. Accordingly, we
cannot sustain Rejection 2.
SUMMARY
We affirm the rejection of claims 8—15 and 17—19 under 35 U.S.C.
§ 103(a) as unpatentable over Twitchen ’690 in view of Shiomi.
We reverse the rejection of claims 8—11, 13, 14, and 16—19 under
35 U.S.C. § 103(a) as unpatentable over Shiomi.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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