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 .
Status of Claims
This communication is a First Office Action Non-Final on Merits. Claims 1-20 are currently pending and have been considered below.
Priority
The present application, filed on 03/03/2023, claims priority to Provisional Application 63/417,163, filed on 10/18/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/31/2023, 08/03/2023, 09/13/2023, 10/26/2023, 01/10/2024, 02/28/2024, 05/30/2024, 08/29/2024, 11/22/2024, 06/18/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 non-obviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over SCARSELLI (CN 114341628 A), hereinafter “CN” over Meissner (US 6,025,060), hereinafter “Meissner”.
Regarding Claim 1, CN teaches A single ... transparent gemstone comprising: a first transparent gemstone having a first internal side; (CN, page 4, jewelry, transparent or translucent materials, polymers, gemstones or crystals);
a copyright protected element etched on the first internal side, wherein the copyright protected element is owned by a third party; and (CN, page 7, teaches a laser Etch the logo/information into and/or on the structure of the asset (gemstone); Examiner interprets the logo as the copyright protected element. Further, Examiner notes the “copyright protected element” is non-functional descriptive matter. While the copyright protected element etched on the gem may be a particular poem, haiku, letter, or logo, it adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the specific type of information) which does not explicitly alter or impact the steps does not patentably distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05. Further, with respect to “the copyright protected element is owned by a third party”, Examiner notes the source of the printed matter does not change the function, and adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. However, Examiner notes the CN reference does teach third party ownership, see at least CN, page 4.)
Yet, CN does not appear to explicitly teach and in the same field of endeavor Meissner teaches integrated ... a second transparent gemstone having a second internal side and fused together with the first transparent gemstone, wherein the second internal side is aligned with the first internal side such that the copyright protected element does not extend beyond a perimeter of the second internal side (See at least Meissner, Abstract, teaches creating unique composite gemstones... a composite gem is fabricated by bonding a naturally occurring gem to an artificial gem to form a single composite gemstone of large size that outwardly appears to be a single natural gem....In another aspect of the invention, the composite gem includes an engraved pattern (Examiner notes copyright protected element) at one or more internal gem interfaces).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine CN with integrated ... a second transparent gemstone having a second internal side and fused together with the first transparent gemstone, wherein the second internal side is aligned with the first internal side such that the copyright protected element does not extend beyond a perimeter of the second internal side as taught by Meissner with the motivation for creating unique gemstones (Meissner, Abstract). The CN invention now incorporating the Meissner invention, has all the limitations of claim 1.
Regarding Claim 2, CN, now incorporating Meissner, teaches The single integrated transparent gemstone of claim 1, wherein the copyright protected element includes a haiku poem (See at least CN, page 7, teaches a laser Etch the logo/information into and/or on the structure of the asset (gemstone); Further, Meissner, Column 3, lines 13-16, teaches The engraved design may include drawings, letters, logos, etc.). Examiner again notes the “copyright protected element includes a haiku poem” is non-functional descriptive matter. While the copyright protected element etched on the gem may be a particular poem, haiku, letter, or logo, it adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the specific type of information) which does not explicitly alter or impact the steps does not patentably distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05.
Regarding Claim 3, CN, now incorporating Meissner, teaches The single integrated transparent gemstone of claim 2, wherein the copyright protected element further includes human-readable text of the haiku poem (See at least CN, page 7, teaches a laser Etch the logo/information into and/or on the structure of the asset (gemstone)... achieved by etching it in a human readable form; Further, Meissner, Column 3, lines 13-16, teaches The engraved design may include drawings, letters, logos, etc.)
Examiner again notes the copyright protected element including a haiku poem is non-functional descriptive matter. While the copyright protected element etched on the gem may be a particular poem, haiku, letter, or logo, it adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the specific type of information) which does not explicitly alter or impact the steps does not patentably distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05.
Regarding Claim 4, CN, now incorporating Meissner, teaches The single integrated transparent gemstone of claim 2, wherein the copyright protected element further includes a machine-readable image of the haiku poem (See at least CN, page 7, teaches a laser Etch the logo/information into and/or on the structure of the asset (gemstone)... achieved by etching it in a human readable form (by using an optical magnification device) and/or a machine readable form such as numbers, barcodes, QRs code, etc.; Further, Meissner, Column 3, lines 13-16, teaches The engraved design may include drawings, letters, logos, etc.)
Examiner again notes the copyright protected element including a haiku poem is non-functional descriptive matter. While the copyright protected element etched on the gem may be a particular poem, haiku, letter, or logo, it adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the specific type of information) which does not explicitly alter or impact the steps does not patentably distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05.
Regarding Claim 5, CN, now incorporating Meissner, teaches The single integrated transparent gemstone of claim 1, further comprising an authentication element etched on the first internal side or the second internal side, wherein the authentication element identifies a producer of the single integrated transparent gemstone (CN, page 7, teaches identification etched into the physical asset in order to collect verification information; CN, page 2, in addition to ownership, the information also includes the gemological laboratory certificate number.)
Regarding Claim 6, CN, now incorporating Meissner, teaches The single integrated transparent gemstone of claim 5, wherein the authentication element includes human-readable text or a machine-readable image (CN, page 7, the identification may be achieved by etching it in a human readable form (by using an optical magnification device) and/or a machine readable form such as numbers, barcodes, QRs code, etc.)
Regarding Claim 7, CN, now incorporating Meissner, teaches A system comprising: the single integrated transparent gemstone of claim 5; and a computing device configured to execute instructions that cause the computing device to: scan the authentication element, (CN, page 7, scan the identification etched into the physical asset) validate the authentication element, (CN, page 7, collect verification information of the identification and/or related asset information).and present an indication that the authentication element is validated (CN, page 7, the reading device is portable, such as a specially programmed handheld dedicated reader or mobile device (tablet, phone, etc.) Examiner notes tablets and phones may present information).
Regarding Claim 8, CN, now incorporating Meissner, teaches The single integrated transparent gemstone of claim 7, wherein the computing device is configured to use optical character recognition to scan the authentication element (CN, page 6, the reading device is an optical-based reading device including, for example, a mobile device (e.g. a camera of a smartphone, or even an optical reading device connected to a smartphone or tablet) and/or zoom camera. The reading device may be a dedicated reader, or it may be multi-purpose hardware (such as a tablet, smartphone or mobile communication device) programmed with software that uses operationally sensitive parameters such as scan depth and/or magnification and/or optical character recognition).
Regarding Claim 9, CN, now incorporating Meissner, teaches The single integrated transparent gemstone of claim 1, wherein the single integrated transparent gemstone further comprises sapphire (CN, page 3, teaches diamonds/gemstones/jewelry and other unique items of high value. Meissner teaches sapphire throughout, see at least Meissner, Col 1, lines 44-47, teaching sapphire.)
Regarding Claim 10, CN, now incorporating Meissner, teaches The single integrated transparent gemstone of claim 1, wherein the single integrated transparent gemstone further comprises a precious stone (CN teaches precious stones throughout, see at least CN, Abstract, a precious stone).
Regarding Claim 11, CN teaches A method for ... transparent gemstone, the method comprising: etching, on a first internal side of a first transparent gemstone, a copyright protected element owned by a third party; (CN, page 4, jewelry, transparent or translucent materials, polymers, gemstones or crystals; CN, page 7, teaches a laser Etch the logo/information into and/or on the structure of the asset (gemstone); Examiner interprets the logo as the copyright protected element. Further, Examiner notes the “copyright protected element” is non-functional descriptive matter. While the copyright protected element etched on the gem may be a particular poem, haiku, letter, or logo, it adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the specific type of information) which does not explicitly alter or impact the steps does not patentably distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05. Further, with respect to “the copyright protected element is owned by a third party”, Examiner notes the source of the printed matter does not change the function, and adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. However, Examiner notes the CN reference does teach third party ownership, see at least CN, page 4.)
Yet, CN does not appear to explicitly teach and in the same field of endeavor Meissner teaches constructing a single integrated ... aligning the first internal side of the first transparent gemstone with a second internal side of a second transparent gemstone such that the copyright protected element does not extend beyond a perimeter of the second internal side; and fusing the first transparent gemstone and the second transparent gemstone together to create the single integrated transparent gemstone (See at least Meissner, Abstract, teaches creating unique composite gemstones... a composite gem is fabricated by bonding a naturally occurring gem to an artificial gem to form a single composite gemstone of large size that outwardly appears to be a single natural gem....In another aspect of the invention, the composite gem includes an engraved pattern (Examiner notes copyright protected element) at one or more internal gem interfaces).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine CN with constructing a single integrated ... aligning the first internal side of the first transparent gemstone with a second internal side of a second transparent gemstone such that the copyright protected element does not extend beyond a perimeter of the second internal side; and fusing the first transparent gemstone and the second transparent gemstone together to create the single integrated transparent gemstone as taught by Meissner with the motivation for creating unique gemstones (Meissner, Abstract). The CN invention now incorporating the Meissner invention, has all the limitations of claim 11.
Regarding Claim 12, CN, now incorporating Meissner, teaches The method of claim 11, wherein the copyright protected element includes a haiku poem (See at least CN, page 7, teaches a laser Etch the logo/information into and/or on the structure of the asset (gemstone); Further, Meissner, Column 3, lines 13-16, teaches The engraved design may include drawings, letters, logos, etc.)
Examiner again notes the “copyright protected element includes a haiku poem” is non-functional descriptive matter. While the copyright protected element etched on the gem may be a particular poem, haiku, letter, or logo, it adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the specific type of information) which does not explicitly alter or impact the steps does not patentably distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05.
Regarding Claim 13, CN, now incorporating Meissner, teaches The method of claim 12, wherein the copyright protected element further includes human- readable text of the haiku poem (See at least CN, page 7, teaches a laser Etch the logo/information into and/or on the structure of the asset (gemstone)... achieved by etching it in a human readable form; Further, Meissner, Column 3, lines 13-16, teaches The engraved design may include drawings, letters, logos, etc.)
Examiner again notes the copyright protected element including a haiku poem is non-functional descriptive matter. While the copyright protected element etched on the gem may be a particular poem, haiku, letter, or logo, it adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the specific type of information) which does not explicitly alter or impact the steps does not patentably distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05.
Regarding Claim 14, CN, now incorporating Meissner, teaches The method of claim 12, wherein the copyright protected element further includes a machine-readable image of the haiku poem (See at least CN, page 7, teaches a laser Etch the logo/information into and/or on the structure of the asset (gemstone)... achieved by etching it in a human readable form (by using an optical magnification device) and/or a machine readable form such as numbers, barcodes, QRs code, etc.; Further, Meissner, Column 3, lines 13-16, teaches The engraved design may include drawings, letters, logos, etc.)
Examiner again notes the copyright protected element including a haiku poem is non-functional descriptive matter. While the copyright protected element etched on the gem may be a particular poem, haiku, letter, or logo, it adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art. Any differences related merely to the meaning and information conveyed through labels (i.e., the specific type of information) which does not explicitly alter or impact the steps does not patentably distinguish the claimed invention from the prior art in terms of patentability. See MPEP 2111.05.
Regarding Claim 15, CN, now incorporating Meissner, teaches The method of claim 11, further comprising: etching, on the first internal side or the second internal side, an authentication element that identifies a producer of the single integrated transparent gemstone (CN, page 7, teaches identification etched into the physical asset in order to collect verification information; CN, page 2, in addition to ownership, the information also includes the gemological laboratory certificate number.)
Regarding Claim 16, CN, now incorporating Meissner, teaches The method of claim 15, wherein the authentication element includes human-readable text or a machine-readable image (CN, page 7, the identification may be achieved by etching it in a human readable form (by using an optical magnification device) and/or a machine readable form such as numbers, barcodes, QRs code, etc.)
Regarding Claim 17, CN, now incorporating Meissner, teaches The method of claim 15, further comprising: scanning the authentication element with a computing device; (CN, page 7, scan the identification etched into the physical asset) validating the authentication element with the computing device; (CN, page 7, collect verification information of the identification and/or related asset information).and presenting, with the computing device, an indication of that the authentication element is validated (CN, page 7, the reading device is portable, such as a specially programmed handheld dedicated reader or mobile device (tablet, phone, etc.) Examiner notes tablets and phones may present information).
Regarding Claim 18, CN, now incorporating Meissner, teaches The method of claim 17, wherein validating the authentication element with the computing device further includes validating the authentication element using optical character recognition (CN, page 6, the reading device is an optical-based reading device including, for example, a mobile device (e.g. a camera of a smartphone, or even an optical reading device connected to a smartphone or tablet) and/or zoom camera. The reading device may be a dedicated reader, or it may be multi-purpose hardware (such as a tablet, smartphone or mobile communication device) programmed with software that uses operationally sensitive parameters such as scan depth and/or magnification and/or optical character recognition).
Regarding Claim 19, CN, now incorporating Meissner, teaches The method of claim 11, wherein the single integrated transparent gemstone further includes sapphire (CN, page 3, teaches diamonds/gemstones/jewelry and other unique items of high value. Meissner teaches sapphire throughout, see at least Meissner, Col 1, lines 44-47, teaching sapphire gemstones.)
Regarding Claim 20, CN, now incorporating Meissner, teaches The method of claim 11, wherein the single integrated transparent gemstone further includes a precious stone (CN teaches precious stones throughout, see at least CN, Abstract, a precious stone).
Additional Prior Art Consulted
The prior art made of record and not relied upon which is considered pertinent to applicant’s disclosure includes the following:
Maletzos, George et al. US 2009/0126402 - "According to a third-aspect of the present disclosure, a gemstone comprising a plurality of facets is provided. In the gemstone one or more of the facets have a hazy white-colored appearance associated with nanometer and/or micrometer sized features on said facets."; "Provided herein, are gemstones and related methods and systems for controlling the appearance thereof, which in certain embodiments can increase brilliance and/or fire of the gemstone using a combination of nano, micro and/or milli size features."; "Methods of fabricating improved gemstones and gemstones thus obtained are described. Roughness is introduced on facets of a gemstone through application of nanometer and/or micrometer sized features, to provide the facets with a hazy white-colored appearance"
Chan; Johnny Yat Ming et al. US 2015/0009654 A1 - "a gemstone that is at least partially transparent to light;" "Gemstones 100 may be any variety of gemstones that are sufficiently transparent or transmit enough light to allow light source 200 to manipulate the observed color of a gemstone 100. Additionally, certain gemstones 100 have a capacity for reflecting, dispersing"; "a gemstone that is at least partially transparent to light, the gemstone being including a slide groove and depression;"
Rosario; Charles et al. US 2014/0139608 - "An encoded identifier may be provided on the gemstone which is purposeful organized, to provide, in readily ascertainable form, information and/or characteristics about the gemstone. For example "and an etching device to differentially etch the gemstone in a pattern based on the independently modulated plurality of spatially dispersed portions of the energy beam"; "A further object of the invention provides a system for marking a gemstone with an energy beam, comprising an energy beam source adapted to produce a spatially dispersed energy beam"
NPL - Noura Alnuaimi; Alanoud Almemari; Mohammad Madine; Khaled Salah; Hamda Al Breiki; Raja Jayaraman, “NFT Certificates and Proof of Delivery for Fine Jewelry and Gemstones”, Published in IEEE; Date of Publication: 22 September 2022 - NFT Certificates and Proof of Delivery for Fine Jewelry and Gemstones | IEEE Journals & Magazine | IEEE Xplore - Fine jewelry is a unique class of ornaments composed of precious metals and gemstones. Premium-grade metals such as gold, platinum, and sliver, and gemstones such as pearls, diamonds, rubies, and emeralds are used use to make fine jewelry. Paper-based certificates are typically issued by retailers and producers for fine jewelry and gemstones as a proof of origin, sale, ownership, history, and quality. However, paper certificates are subject to counterfeiting, loss, or theft. In this paper, we show how non-fungible tokens (NFTs) and Ethereum blockchain can be used for digital certification, proof of ownership, sale history, and quality, as well as proof of delivery for fine jewelry and gemstones. We present the proposed system design and architecture with sequence diagrams covering key interactions for jewelry production, purchase, and sale, along with algorithms related to NFT minting, auctioning, ownership management, and physical delivery. We demonstrate that our proposed NFT and blockchain-based solution can provide superior alternative in terms of verifiability, traceability, immutability, and security when compared with paper-based certification and traditional auctioning, delivery and ownership management.
Applicant is advised to review additional references supplied on the PTO-892 as to the state of the art of the invention.
Conclusion
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/R.R.N./Examiner, Art Unit 3629/LYNDA JASMIN/Supervisory Patent Examiner, Art Unit 3629