Ex Parte Nee

Board of Patent Appeals and Interferences

Feb 17, 2012

12231127 (B.P.A.I. Feb. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/231,127 08/29/2008 Han H. Nee 126-CIP 2821
7590 02/17/2012
Eternax Diamond, LLC
564 Wald
Irvine, CA 92618-4637
EXAMINER
WALCK, BRIAN D
ART UNIT PAPER NUMBER
1736
MAIL DATE DELIVERY MODE
02/17/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HAN H. NEE
____________

Appeal 2010-003963
Application 12/231,127
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1 and 6 through 8 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Shintani (US 5,814,149, patented Sep.
29, 1998). We have jurisdiction under 35 U.S.C. § 6.
The subject matter on appeal is directed to a method of growing a
single crystal diamond (Spec. 2, para. 1001 and claim 1). Details of the
Appeal 2010-003963
Application 12/231,127

2
appealed subject matter are recited in representative claim 11 which is
reproduced below:
1. A method for growing a single crystal diamond
comprising:

selecting a single crystal substrate including a single
crystal ceramic platform having at least one flat surface and a
coating fixed thereon, said coating including an iridium alloy
containing iridium between about 50 a/o % and about 99.99
a/o% and a component selected from the group consisting of
iron, cobalt, nickel, molybdenum, rhenium and a combination
thereof;

providing a mixture of gases comprising methane and
hydrogen; and

dissociating said methane in the presence of said
substrate to cause deposition of a single diamond crystal onto
said coating, said diamond crystal having a crystal structure
corresponding to said crystal structure of said substrate.

Appellant does not dispute the Examiner’s finding that Shintani
teaches the claimed method of growing a single crystal diamond, except for
using the particular coating composition “including an iridium alloy
containing iridium between about 50 a/o% and about 99.99 a/o %2 and a
component selected from the group consisting of iron, cobalt, nickel,

1 Appellant states that “[t]he appealed claims- -independent claim 1 and
dependent claims 6-8 -- stand or fall together, as a single group” (App. Br.
9). Accordingly, we select claim 1 and decide the propriety of the
Examiner’s § 103(a) rejection set forth in the Answer based on claim 1 alone
consistent with 37 C.F.R. § 41.37(c)(iv).
2 The term “a/o %” is defined as “atomic percent” (Spec. 15, para. 1036).
Appeal 2010-003963
Application 12/231,127

3
molybdenum, rhenium and a combination thereof” recited in claim 1. 3
(Compare Ans. 3-5 and App. Br. 9-13 and Reply Br. 5-13.)
Thus, the dispositive question raised by the Examiner and Appellant
is: Has the Examiner reversibly erred in determining that Shintani would
have suggested employing the coating composition “including an iridium
alloy containing iridium between about 50 a/o% and about 99.99 a/o % and
a component selected from the group consisting of iron, cobalt, nickel,
molybdenum, rhenium and a combination thereof” recited in claim 1 in its
crystal diamond growing method? On this record, we answer this question
in the negative.
As correctly found by the Examiner at pages 3 through 5 of the
Answer, Shintani teaches using a coating composition containing Pt alloys
preferably containing 50% or less of “at least one element selected from
Group VIA of the Periodic Table such as Cr, Mo, and W, Group VIIA such
as Mn, Group VIIIA such as Fe, Co, Ir [(iridium)], Ni, and Pd, and Group IB
such as Au, Ag, and Cu.” (See also Shintani, col. 3, ll. 13-22 and col. 5, ll.
30-49.) In other words, Shitani teaches using up to 50% of “at least one
element” and specifically exemplifies or names twelve elements, such as
iridium, iron, cobalt, nickel and molybdenum, in its Pt alloy coating. Id.
Appellants do not dispute the Examiner’s finding that up to about 50% (e.g.,
49.999%) of iridium overlaps with about 50 a/o % of iridium. (Compare
Ans. 4 with App. Br. 9-13 and Reply Br. 5-13.) Nor do Appellants question

3 Any new arguments raised in the Reply Brief not presented in the Appeal
Brief will not be considered absent a showing of good cause explaining why
the new arguments could not have been presented in the Appeal Brief. See
Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative).
Appeal 2010-003963
Application 12/231,127

4
using, for example, molybdenum, iron, and/or nickel as the remainder of up
to 50% of at least one element. (See App. Br. 9-13 and Reply Br. 5-13.)
Given the above teachings and findings of fact set forth in the
Answer, we concur with the Examiner that one of ordinary skill in the art
would have been led to employ, among others, a coating made of a Pt alloy
(identified by Appellant as an iridium alloy) containing about 50 a/o % of
iridium with some iron, cobalt, nickel and/or molybdenum in the crystal
diamond growing method taught by Shitani, with a reasonable expectation of
successfully growing a single crystal diamond. As our reviewing court
stated in In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even
a slight overlap in range establishes a prima facie
case of obviousness . . . . We have also held that
a prima facie case of obviousness exists when the
claimed range and the prior art range do not
overlap but are close enough such that one skilled
in the art would have expected them to have the
same properties. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).

See also Merck & Co., Inc. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir.
1989) (The fact that a reference “discloses a multitude of effective
combinations does not render any particular formulation less obvious.” ); In
re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed
where the disclosure of the prior art was “huge, but it undeniably include[d]
at least some of the compounds recited in appellant's generic claims and
[was] of a class of chemicals to be used for the same purpose as appellant's
additives”).
Appeal 2010-003963
Application 12/231,127

5
Although Appellant can overcome the prima facie case of obviousness
established by the Examiner by showing that the claimed amounts of the
claimed ingredients in a coating composition are critical in forming a single
crystal diamond, they have not shown, much less argued, that the claimed
coating composition is critical. See In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990).
(“The law is replete with cases in which the difference
between the claimed invention and the prior art is some range
or other variable within the claims….These cases have
consistently held that in such a situation, the applicant must
show that the particular range is critical, generally by showing
that the claimed range achieves unexpected results relative to
the prior art range.”)

Accordingly, based on the totality of the record, including due
consideration of the arguments advanced by Appellant and the findings
relied upon by the Examiner, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103(a).
In view of the foregoing, the decision of the Examiner is affirmed.
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

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