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 .
Response to Arguments
Applicant's arguments filed 10/9/2025 have been fully considered but they are not persuasive.
Regarding the specification, the amendments are not new matter and are acceptable to enter. The specification amendments are entered.
Regarding the IDS, applicant is correct in that the NPL’s which are included in parent cases do not need to be resubmitted, however, USPTO office actions of application 18/185640 were not considered as NPL’s in the parent case 18/185640, nor were they included in their parent case 16/035012. Therefore, since the office actions of parent case 18/185640 were not previously submitted during the prosecution of parent case 18/185640, these are new NPL and require a copy. Since applicant is adamant that all of the references have been previously submitted, applicant is welcome to point on which application on which day, the NPL’s were submitted into the record.
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Regarding the drawings:
Applicant has submitted new figure 5, which is still submitted in non-black ink, creating a figure which is not suitable for printing. Examiner has included a screenshot here so that applicant can be convinced to finally file figure 5 in black ink.
Examiner thanks applicant for cancelling language which is not clearly shown in the drawings. Examiner notes that some issues have been resolved.
Regarding 112 rejections:
Applicant cites websites but does not provide a copy of the websites appropriately required by the IDS requirements in MPEP609.04a(I).
Applicant asserts “setting” is generic… Examiner notes that what applicant has shown in the drawings is merely a stone attached to the charm; applicant does not detail any structure that could be considered “a setting”. Applicant may only assert that a “setting” is used to attach a stone to the charm, applicant does not disclose any particular structure, and must treat the term “setting” as a black box.
Further, the extensive amendments to claims 16-19 may change the scope of the claims. For instance, claim 19 claims dependency, and therefore, may alter the allowability consideration of claim 19.
Examiner notes that applicant’s amendments render new 112b rejections. Examiner notes that placing the gemstones within the “elongated open section” renders the “open section” no longer “open”, since the section is now filled with gemstones. These sections do not allow the connecting link to pass through this section. Therefore, the “open elongated portion” is not considered to be the entirety of the alphanumeric character, but is closer to the expansion of the holes of Zeuner, as argued in the 103.
Examiner notes that claim 1 is still broader than the previously patented claim 1 of parent case 18/185640. Examiner continues to reject the claim 1. Examiner notes that the new subject matter relevant to the instant application does not include a gemstone until claim 12.
Regarding 103 rejections:
Regarding claims 1-11, applicant seems to amend to be as close to the previously allowed claims from the parent. If this is applicant’s intent, examiner notes these claims were previously allowed, and making these claims identical to the allowed claims, this is a double patenting issue. Should applicant intend to make these claims different than the allowed claims, examiner requests applicant indicate how applicant wants claims 1-11 be different than the previously allowed claims. Applicant seems to be making arguments about previous office actions, meaning that applicant intends to claim the identical subject matter previously considered, which seems to indicate that these claims are intending to be identical to the previously allowed claims. Identical claims are prohibited by double patenting rules, and would require a terminal disclaimer. To reduce issues, examiner suggests cancelling these claims.
Zeuner discloses an opening, but does not disclose it is “elongated”. Rosenberg clearly shows that a link that creates a chain shows elongating an opening in a known manner. Applicant does not persuade examiner that Rosenberg is not appropriate to be considered relevant to Zeuner. Both create a chain. The intended purpose of the chain can be anything, since a chain can be used in a functional manner AND can be used as necklace. Size is not an indication that an item cannot be jewelry: please see rapper Flava Flav, who is notable for wearing wall clocks on a chain as a necklace. The chains used by the rapper can be regular jewelry size, or comically large. Size of jewelry is a personal opinion, and does not convince the examiner the link that creates a chain of Rosenberg is not related to a link that creates a chain of Zeuner.
Examiner notes that further searching has found new art, and Rosenberg is replaced by D761150 Penna.
Regarding allowable subject matter, examiner notes that applicant’s extensive amendments may not render the claims allowable at this time.
Regarding terminal disclaimer, examiner does not that the claims 12, 14-21 include subject matter that is newer than the parent cases. Therefore, should applicant cancel the claims that are broader or potentially double patenting (claims 1-11), then a terminal disclaimer would not be required. However, should applicant retain the claims 1-11, then a terminal disclaimer would be required. Examiner suggests cancellation of claims 1-11, this would reduce issues.
Information Disclosure Statement
The information disclosure statement filed 3/22/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Examiner notes that applicant has not supplied any copy of any NPL cited in the IDS. Further, applicant cites office actions of the parent case 18/185640 were not submitted as NPL during prosecution of parent case 18/185640, and therefore need to be submitted with the instant case.
Further, should applicant assert that other crossed off references were previously submitted and considered by examiner, applicant is welcome to state which parent case for which each reference was submitted, and which day. Examiner thanks applicant for his cooperation in this matter.
Priority
Examiner notes that applicant’s claim 1 is broader than previously allowed claim 1 from parent case 18/185640, rendering a new search and consideration. Further, the subject matter of claims 12 (included in claim 16), 13, 14, 15, and 16-20, include subject matter that was not presented with either of applicant’s priority cases, and are therefore subject to the new date of the instant application, which is 3/22/2024.
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 followings must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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Claim 12: “mounting structure”. Please see 112a rejection below. Applicant does not disclose enough structure to add any figures with these features.
Figure 5 is too blurry; no details are distinct, no indicators are present, and the line quality is not sufficient to be “reproducible in the printed patent” 37 CFR1.84 (b) (1), MPEP 608.02(VII)b.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 16-18 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 12, which claim new subject matter presented for the first time on 3/22/2024. Applicant argues that he replaces this term with generic term “setting”, which applicant includes both “setting” and “mounting structure” in claim 12. Further, applicant claims the “gemstones each provided upon a setting”, and then claims “the mounting structure is configured to receive and support the gemstones”. Examiner notes that the “mounting structure” phrase is broader than the previous “gemstones each provided upon a setting”. Therefore, the secondary phrase includes a non-desired term “mounting structure” and is not further limiting to the structure previously claimed in claim 12.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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.
Regarding claim 1, applicant has omitted several phrases from the previously allowed claim 1 of application 18/185640, namely the material of the “precious metal”, and the requirement that the outline member “and open sections solely” define the alphanumeric character. Therefore, claim 1 is broader than the patented claim 1.
Regarding claim 12, applicant claims both “setting” and “mounting structure”, even though applicant argues “setting” replaces “mounting structure”. Further, applicant claims the “gemstones each provided upon a setting”, and then claims “the mounting structure is configured to receive and support the gemstones”. Examiner notes that the “mounting structure” phrase is broader than the previous “gemstones each provided upon a setting”. Therefore, the secondary phrase includes a non-desired term “mounting structure” and is not further limiting to the structure previously claimed in claim 12.
Regarding claims 12 and 16, applicant claims the “gemstone… mounted in a portion of the elongated open section” or “gemstone containing portion”. Examiner notes that the sections which contain the gemstones are no longer “open”, since the connecting link cannot slide along those sections.
Regarding claims 12 and 16, applicant claims “outline member which defines an elongated open section therein” which is the same as the patented claim 1 from parent case 18/185640, which is considered the definition of “outline member”. Then, applicant claims “elongated portion that includes one or more gemstones”. Examiner notes that the submitted figures indicate that the “outline member…which includes gemstones” is not in fact open. The connecting link cannot “pass through an open section” of the “additional outline member” because the “additional outline member” is not “open” and does not have an “elongated open section”.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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.
Claim(s) 1-9, 11 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over D706666 Zeuner in view of D761150 Penna.
Regarding claim 1, Zeuner discloses a jewelry chain (title) comprising
a plurality of connecting links (as annotated) and one decorative link (annotated below), with each link being made of metal (Zeuner does not disclose what kind of metal, but is an item of jewelry, which is typically gold/silver/titanium) wherein the decorative link (annotated) comprises an alphanumeric character (capital “L”) made of at least one outline member (outline members as annotated in the figure 2 below) which defines an elongated section therein that has at least one open portion (two elongated outline members with openings, one elongated member without an opening), the outline member forming an outermost boundary of the alphanumeric character which solely defines the alphanumeric character,
wherein the decorative link becomes part of the jewelry chain (already is part of the chain by the title) by connection from the at least one of the connecting links (as shown in figure 2),
wherein each connecting link passes through an open section of one outline member (as shown in figure 2 and annotated), with each connecting link able to slide along the open section of the outline member of the decorative link (please see rejection using Rosenberg below).
Zeuner does not disclose the “open elongated portion”, but does disclose “an elongated section” in order to create the letters, and “open portion” which allows the connecting link to be attached to the elongated sections.
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Penna discloses a decorative link which hangs from a connecting link, the connecting link extending through an elongated open section of the decorative link (annotated claim 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date to elongate the existing openings of Zeuner, as an elongated opening for a connecting link is a known shape for an opening for a connecting link, as taught by figure 1 in Penna. The application of an elongated opening of Penna in the decorative link of Zeuner as modified is an obvious change of shape for a change of aesthetic, as well as for lighter weight. A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b). Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I). Examiner contends that these (through hole that is round, or a through hole that is elongated) are known equivalents and are used for the same purpose (allowing a connecting link to attach to a decorative link) within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Regarding claim 2, Zeuner as modified discloses the jewelry chain of claim 1 which includes a plurality of alphanumeric characters which are letters (of Zeuner).
Regarding claim 3, Zeuner as modified discloses the jewelry chain of claim 1 which includes a plurality of alphanumeric characters that spell out a nickname (“love”).
Regarding claim 4, Zeuner as modified discloses the jewelry chain of claim 1 which is configured as a necklace (Zeuner).
Regarding claim 5, Zeuner as modified discloses the jewelry chain of claim 11, which includes a clasp for closure (shown in dotted lines in Zeuner).
Regarding claim 10, Zeuner as modified discloses the jewelry of claim 1, wherein each outline member is made of metal sheet having a periphery to facilitate sliding of the connecting link within the open section (Zeuner is made of a metal sheet that could be punched in the shape suggested by Penna).
Claim(s) 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zeuner as modified by Rosenberg as applied to claim 1 above, and further in view of 0758848 Pejchar.
Regarding claim 6, Zeuner as modified discloses the jewelry chain of claim 1 which is configured as a necklace, but does not disclose the use of an earring.
Pejchar discloses an earring with a post a, the post a being attached to a decorative article as well as a clasp b, also attached to a chain with a decorative article on the chain.
It would have been obvious to one of ordinary skill in the art before the effective filing date to attach the chain of Zeuner with hollow sections from Rosenberg to a post as known in Pejchar in order to wear the initials, name, or insignia, in a different but known manner. Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Regarding claim 7, Zeuner as modified discloses the jewelry chain of claim 6 wherein the alphanumeric character furthest from the post has only one connecting link (the L of Zeuner only has one link, because it is a “pendant” and not “part of the chain”).
Regarding claims 8-9, Zeuner as modified discloses the jewelry chain of claim 6 wherein the first alphanumeric character includes the post (taught by Pejchar, because the post is inserted through the loop of the letter), and there are a plurality of characters that spell out a nickname “love”.
Claim(s) 12, 14-15, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeuner as applied to claim 1 above, and further in view of D151306 Weisman.
Regarding claim 12, Zeuner as modified discloses the device of claim 1 as discussed above, the alphanumeric character having a surface
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that is capable of receiving gemstones.
Weisman disclose the use of letters having one outline member of the alphanumeric character to have gemstones in a setting. The gemstones are in a strip, but do not cover the entire letter, allowing other elongated portions to be of a different style.
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It would have been obvious to one of ordinary skill in the art before the effective filing date to include gemstones in the known manner of Weisman onto the known alphanumeric characters of Zeuner as modified in order to bejewel the decorative links of Zeuner and show off more status by making the necklace of Zeuner more expensive. The inclusion of a partial strip of gemstones as taught by Weisman, only affects one elongated section of the alphanumeric shape, and does not affect the rest of the structure. Therefore, the application of Weisman to Zeuner as modified by Penna results in the filled sections of the letter to function in the same manner as disclosed by filled sections taught by Weisman and Zeuner.
Regarding claim 14, Zeuner as modified discloses the jewelry chain of claim 12 wherein the plurality gemstones (as taught in Weisman) are all the same (all are the same in Weisman).
Regarding claim 15, Zeuner as modified discloses the jewelry chain of claim 12 wherein the connecting links (of Zeuner) are round, (“O” has “smooth corners”, since it does not have corners).
Regarding claim 19, Zeuner as modified discloses the chain of claim 12, wherein the outline member (material of Zeuner on the outside of the elongated holes as taught by Penna) is made of a sheet of metal (as suggested in Zeuner) to facilitate sliding of the connecting link with the open sections (as the connecting link is in the open section, and the open section is elongated taught by Penna).
Claim(s) 11 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeuner as applied to claims 1 and 15 above, and further in view of 7322213 Tamir.
Zeuner as modified discloses the jewelry of claims 1 and 15, but does not particularly disclose the type of metal being “gold silver platinum palladium or one of their alloys”.
Tamir discloses a similar pendant having a section with gemstones and a section without gemstones, with open sections allowing for attachment of a chain, to be “white gold or yellow gold” (column 3 line 8).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize a golden material as taught by Tamir for a similar piece of jewelry as taught by Zeuner, as Note that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. See MPEP 2144.07.Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”. Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Claim(s) 16-18, 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeuner in view of Penna, in further view of Weisman, in further view of Tamir.
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Regarding claim 16, Zeuner discloses a jewelry chain comprising a plurality of links including one or a plurality of connecting links (indicated in annotated figure 2) and a plurality of decorative links (in shape of letters “L” “O” “V” E”), each link is made of a material, wherein each of the decorative links comprises an alphanumeric character made of at least one outline member which defines an elongated section (L requires two elongated sections, so does V, and E requires four elongated sections), each elongated section had at least one open portion (hole), the portion with the hole forming an outermost boundary of the alphanumeric character which solely defines the alphanumeric character, wherein the decorative link becomes part of the jewelry chain by connection from at least one of the connecting links (as shown in figure 1), wherein each connecting link passes through an open portion of the elongated sections of the decorative link to which it is connected.
Zeuner does not disclose the particular material of the links. Zeuner does not disclose that the holes are “elongated” which allows for the connecting link can slide therein, and therefore is configured to allow the decorative link to sit at a variety of different angles on the chain. Zeuner does not disclose the use of gemstones.
Regarding elongated holes: Penna discloses a decorative link which hangs from a connecting link, the connecting link extending through an elongated open section of the decorative link (annotated claim 1), the connecting link can slide within the elongated through hole, and can allow the decorative link to sit at a variety of different angles on the chain.
It would have been obvious to one of ordinary skill in the art before the effective filing date to elongate the existing openings of Zeuner, as an elongated opening for a connecting link is a known shape for an opening for a connecting link, as taught by figure 1 in Penna. The application of an elongated opening of Penna in the decorative link of Zeuner as modified is an obvious change of shape for a change of aesthetic, as well as for lighter weight. A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b). Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I). Examiner contends that these (through hole that is round, or a through hole that is elongated) are known equivalents and are used for the same purpose (allowing a connecting link to attach to a decorative link) within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Regarding gemstones:
Weisman disclose the use of letters having one outline member of the alphanumeric character to have gemstones in a setting. The gemstones are in a strip, but do not cover the entire letter, allowing other elongated portions to be of a different style.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include gemstones in the known manner of Weisman onto the known alphanumeric characters of Zeuner as modified in order to bejewel the decorative links of Zeuner and show off more status by making the necklace of Zeuner more expensive. The inclusion of a partial strip of gemstones as taught by Weisman, only affects one elongated section of the alphanumeric shape, and does not affect the rest of the structure. Therefore, the application of Weisman to Zeuner as modified by Penna results in the filled sections of the letter to function in the same manner as disclosed by filled sections taught by Weisman and Zeuner.
Regarding material:
Tamir discloses a similar pendant having a section with gemstones and a section without gemstones, with open sections allowing for attachment of a chain, to be “white gold or yellow gold” (column 3 line 8).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize a golden material as taught by Tamir for a similar piece of jewelry as taught by Zeuner, as Note that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. See MPEP 2144.07.Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”. Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Regarding claim 17, Zeuner as modified discloses the chain of claim 16, wherein each outline member is made of a sheet having a periphery to facilitate sliding of the connecting links within the open section (does not have any protrusions on the exterior of the letter sides).
Regarding claim 18, Zeuner as modified discloses the chain of claim 16, wherein multiple gemstones are present (taught by Weisman), the gemstones of Weisman are all the same.
Regarding claim 21, Zeuner as modified discloses the chain of claim 16 wherein each gemstone is provided upon a setting (taught by Weisman) in a part of the elongated open section (making that section not “open”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
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 EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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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/EMILY M MORGAN/Primary Examiner, Art Unit 3677