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 .
Response to Arguments
Applicant's arguments filed 8/27/2025 have been fully considered but they are not persuasive.
Regarding applicant’s arguments stating Peck does not disclose wherein the toothed elements of Peck do not operate in the same way to insert into the corresponding female element, Examiner respectfully disagrees. Peck clearly describes in Column 3 lines 52-57 the bending movement of the prongs 4 which is effectively rotating as the prongs 4 are pivoting about the point of connection between the prongs 4 and the trapezoidal prism 1. Peck discloses the same controlled insertion of and clamping by the prongs 4 bent together for insertion and then bent back outwards to remain inside the second prism.
Regarding applicant’s arguments stating Peck does not disclose welding to enhance stability, Examiner respectfully disagrees. Peck discloses the prisms may be welded together.
Regarding applicant’s arguments stating Peck does not disclose wherein the male and female elements are not mutually constrained in the event of an elastic member failure, Examiner respectfully disagrees. Peck discloses the barbs 5 are bent outwards and enter the side openings 7. This configuration, also shown in Peck Fig 6-7, would maintain the connection between the male elements and the female elements in the event of an elastic member failure.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., covering the elastic member) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner holds rejection over the prior art.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the pivot element must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-20 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.
Claim 1 recites the limitation "said first portion" on Page 2 line 4 and line 5. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting “said first portion” to be the same part as “a first longitudinal portion.”
Claim 1 recites the limitation "the second terminal portion" on Page 2 line 9. There is insufficient antecedent basis for this limitation in the claim. Examiner is interpreting “the second terminal portion” to be the same part as “a second transverse portion.”
Claims 2-3, 6, and 8-20 are rejected for being dependent on rejected claim 1.
Claim 17 describes a pivot element, however the drawings fail to show the pivot element. It is unclear what structure the pivot element embodies. Based on the claim language, “the pivot element interposed between the toothed elements apply a divergent force,” Examiner is interpreting the prongs 4 of Peck when bent are under the force of a pivoting element.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 6, 8-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peck US 10271619.
Regarding claim 1, Peck discloses a wearable decorative element comprising:
- at least one ring-shaped elastic member (10), supporting a plurality of female elements (1), wherein each of said female elements comprises a hollow body extended between a first (6) and a second through opening (9) obtained between two opposite lateral walls (3) for the passage and sliding of said elastic member,
- a plurality of hollow male elements (4) arranged on said elastic member alternating with said female elements and adapted to allow the passage and sliding of said elastic member therein, each of said male elements fitting in a sliding manner at least partly inside one of either said first through opening or said second through opening of one of said adjacent female elements,
wherein each of said male elements comprises at least two toothed elements (5) configured, in use, to fit inside said hollow body to limit the mutual sliding between said female elements on said male elements at a predefined maximum distance between said adjacent female elements, and
- said male element comprises two abutment elements (annotated Figure 1) configured to fit sliding to size in one of either said first through opening or said second through opening;
- said toothed elements are interposed between said abutment elements;
- said toothed elements are movable between:
- an insertion configuration wherein said toothed elements are approached to each other to allow the insertion thereof into said hollow body through said first through opening along a direction of insertion (annotated Fig 1); and
- a clamping configuration wherein said toothed elements are moved away from each other and abut against the internal walls of said hollow body by clamping there (para 20 “the prongs 4 can be bent together, inserted into the rear opening of a second prism, and then bent back outward so that the barbs 5 enter the side openings 7 of the second prism and remain there”, Figure 6)
wherein each of said toothed elements comprises a first longitudinal portion (annotated Fig 1) associated with said second through opening and a second transverse portion (annotated Fig 1) associated orthogonally with said first portion and protruding cantilevered from the latter, the first portion of each toothed element is rotatable around an axis of rotation substantially perpendicular to the abutment elements so that, by applying a force convergent with respect to the direction of insertion to the toothed elements, the latter my rotate close to each other in order to insert the second terminal portion of the male element internally to the hollow body. (Column 3 lines 52-57, “These metals and their alloys are generally malleable and have low resilience, so that the prongs 4 can be bent together (towards the direction of insertion), inserted into the rear opening of a second prism, and then bent back outward so that the barbs 5 enter the side openings 7 of the second prism and remain there.”) Examiner interprets the bending of the prongs 4 as taught by Peck to essentially rotated about an axis perpendicular to the direction of insertion as annotated in Figure 1.
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Regarding Claim 2, Peck discloses wherein each of said male elements extends between a first and a second terminal portion wherein are obtained a first and a second opening (annotated Fig 1) communicating with each other for the passage and sliding of said elastic member, each of said male elements being comprised between a first and a second female element (Figure 6).
Regarding Claim 3, Peck discloses wherein said first terminal portion of said male element is associated with said second through opening of said first female elements and said second terminal portion of said male elements is associated in a sliding manner with said first through opening of said second female element so that at least said second female element can slide at least partly said male element to vary the mutual distance between said female elements (Figure 6).
Regarding Claim 6, Peck discloses wherein each of said toothed elements comprises a first longitudinal portion associated with said second through opening and a second transverse portion associated orthogonally with said first portion and protruding cantilever from the latter (Figure 1).
Regarding Claim 8, Peck discloses wherein said first through opening comprises two opposite abutment surfaces which are obtained internally to said hollow body, in said clamping configuration said toothed elements abutting respectively against said abutment surfaces (as seen in Figure 6).
Regarding Claim 9, Peck discloses wherein in said clamping configuration each of said second transverse portions abuts one of said abutment surfaces respectively, said first longitudinal portions being divergent with respect to said direction of insertion (as seen in Figure 6).
Regarding Claim 10, Peck discloses wherein each of said toothed elements is substantially L-shaped (Figure 1).
Regarding Claim 11, Peck discloses wherein in said clamping configuration, said toothed elements have a maximum mutual distance which is bigger than the distance between said abutment surfaces (Figure 6).
Regarding Claim 12, Peck discloses wherein in said insertion configuration the maximum mutual distance between said toothed elements is less than the distance between said abutment surfaces of said first through opening: and in said clamping configuration, the maximum mutual distance between said toothed elements is bigger than the distance between said abutment (Peck, Spec column 2 lines 22-25).
Regarding Claim 13, Peck discloses wherein said maximum mutual distance between said female elements is substantially corresponding to the length of said male element (as seen in Figure 6)
Regarding Claim 14, Peck discloses wherein said female elements has at least one setting seat for setting at least one gem (Figure 1).
Regarding Claim 15, Peck discloses wherein said first terminal portion of said male element is locked together with said female element (Figure 6).
Regarding Claim 16, Peck discloses wherein said first female element and said male element are made in a single monolithic body wherein said male element is projecting with respect to said first female element and configured to fit into one of said adjacent female elements (Figure 1 and Figure 6).
Regarding Claim 17, Peck discloses wherein a pivot element is interposed between the toothed elements to apply a divergent force for arranging the toothed elements in the clamping configuration.
(Column 3 lines 52-57, “These metals and their alloys are generally malleable and have low resilience, so that the prongs 4 can be bent together (towards the direction of insertion), inserted into the rear opening of a second prism, and then bent back outward so that the barbs 5 enter the side openings 7 of the second prism and remain there.”)
Regarding Claim 18, Peck discloses wherein the toothed elements are welded in the clamping configuration to prevent undesired displacement under stress. (Column 2 lines 47-49 “For prisms made from metal, welding or soldering are the preferred methods of affixing the ends of the chain to one another.”)
Regarding Claim 19, Peck discloses wherein each toothed element is substantially L-shaped and abuts with its transverse portion against corresponding abutment surfaces of the female element in the clamping configuration (Figure 1).
Regarding Claim 20, Peck discloses wherein the toothed elements maintain the male and female elements mutually engaged in case of breakage of the elastic member (Figure 6).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA SALEM RASHID whose telephone number is (703)756-1113. The examiner can normally be reached M-F 10:00 - 6:00.
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, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA S RASHID/Examiner, Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677
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