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 with respect to claim(s) 1-9, 11-12, 14-16, 18, 20 have been considered but are moot because the new ground of rejection does not rely on the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding the drawings, examiner notes that the drawings submitted on 5/1/2026 are clearer and are suitable for printing, therefore, the drawings are entered. Examiner notes that the new claim language renders new drawing objections.
Applicant makes no effort to remedy the IDS deficiencies. Applicant has not refiled NPL from applicant’s related cases, which are not parents to this case. Therefore, applicant has failed their duty to disclose from MPEP2001.04. IDS is not remedied.
Regarding 112 rejections, applicant has not previously addressed nor amended to relieve the issue of having “elongated sections” which allow a decorative link to be “able to slide therein” along with the gemstones. Applicant’s arguments could be considered non-responsive by ignoring this topic, please see MPEP711.02a, but examiner has decided to respond to the amendment.
Applicant asserts that the holes of Zeuner cannot be enlarged and retain the shape of the alphanumeric characters, examiner contends that this is not persuasive.
Applicant asserts “Penna’s elongated openings would just only slightly larger than Zeuner’s small holes and not as applicant claims”. This is a conclusory statement and not persuasive to change the rejection. Penna figure 1 clearly provides space for the intended use chain of Penna to be able to slide along the length shown, which meets the intended function of the “open elongated sections” as claimed. Applicant asserts that applying the elongated openings of Penna as to elongate the openings of Zeuner “one would not obtain an alphanumeric character defined by claim 1”. Examiner contends that the elongation of the opening is not capable of extending in a location outside of the existing alphanumeric character of Zeuner, and therefore, the application of the elongated openings of Penna into the alphanumeric character of Zeuner does not destroy the alphanumeric shape of Zeuner. Similarly, it is known in the art to have open sections of a shape as taught by Rosenberg. Applicant’s argument is not persuasive.
Regarding claim 6, the decorative link of claim 1 is applied to an earring; Pejchar merely shows that a similar charm can be hung from an earring in the same manner as the charm is used in a necklace. Applicant’s argument is not persuasive.
Regarding terminal disclaimers, applicant has not filed one. This issue has been previously argued and answered.
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.
-“completely open interior” as well as “open elongated portion” in claims 1 and 16. Examiner assumes these are the same thing, please see 112b rejection below.
-“further elongated section” of claims 12 and 16 would be outside of the outline of the alphanumeric character, which in claim 1 prohibits any structure beyond the outline of the alphanumeric character. Please see 112b rejection below.
-“thickness” is not indicated as a dimension in any drawing.
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.
Regarding claims 1 and 16:
Applicant claims the outline member and the use of “a wire or metal strip”. Examiner assumes that applicant means to further limit the outline member to be made of “a wire or metal strip”, and does not intend to claim the use of both an outline member and a “wire or metal strip”. Applicant has asserted the desire to further limit the outline member, as stated in the interview summary. For the claims to match applicant’s assertion, examiner suggests claiming “wherein the outline member comprises a wire or metal strip having…”.
Applicant claims “outline member which defines an elongated section therein that has at least one open elongated portion, with the outline member forming an outermost boundary of the alphanumeric character which solely defines the alphanumeric character”. Then applicant claims the outline member “as an outer periphery about a completely open interior”. Examiner believes that applicant is claiming for a third time that the outline member has an open interior, as applicant has previously claimed “elongated section” which is then “at least one open elongated portion”, and then a third time “a completely open interior”. Examiner believes applicant is restating previously claimed subject matter, and therefore, the phrase “as an outer periphery about a completely open interior” is not further limiting of the previously claimed phrase “outline member which defines an elongated section therein that has at least one open elongated portion”. For the claims to match examiner’s assumption, applicant should remove the phrase “as an outer periphery about a completely open interior”.
Applicant claims a “thickness” but does not indicate which dimension of the jewelry chain applicant intends to be the measurement of “thickness”. The record is not clear if “thickness” refers to the thickness of the wire/metal strip, or for the measurement from the front to the rear side of the entire decorative link, or the distance between the outline members. Based on [0024], it seems that “thickness” refers to the thickness between the front and rear sides of the decorative link.
Regarding claims 12 and 16, applicant has claimed multiple times that the outline member has “open elongated portions” and “completely open interior” in claim 1 and previously in claim 16. Claims 12 and 16 require a “further elongated section”, which based on claim 1 and previously in claim 16, must be formed by extra outline members, but the outline members are the “outermost boundary of the alphanumeric character” as required in claim 1 and 16. Therefore, the location of the “further elongated section” is not clear, since all sections that define the alphanumeric character are already present in claim 1 (and prior in claim 16). The record is not clear as to what applicant means by the “further elongated section”. Examiner assumes that applicant intends to claim a plate with generic stones in generic settings that is sized to fit within/on top of one of the previously existing elongated sections of claim 1. Should applicant wish to match the claims with this assumption, examiner suggests that claim 12 reads “at least one of the open elongated portions is filled with at least one gemstone in a setting”.
Regarding claims 12 and 16, applicant claims “outline member which defines an elongated open section therein” 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”. Therefore, the use of the term “open” is not appropriate for the elongated portions that have gemstones. Further, the elongated portions cannot perform the function of allowing the connecting link “to be able to slide therein” as claimed in claims 1 and 16. Therefore, examiner finds it contrary to include both this function as well as the gemstones, in claims 12 and 16.
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over, D706666 Zeuner in view of D761150 Penna, in further view of 1069581 Rosenberg.
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 outline member (please see 112b rejection and interview summary) comprises a material having a thickness (see 112b rejection above, examiner assumes “thickness” is the distance between the front surface and the rear surface of the decorative link) sized appropriately to be worn as a necklace,
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 an “open portion” which allows the connecting link to be attached to the elongated sections. Zeuner does not particularly disclose the outline member comprises a wire or metal strip having a particular thickness.
PNG
media_image1.png
363
266
media_image1.png
Greyscale
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”.
Rosenberg discloses a “chain link” having an exterior shape (decorative shape) with an outline member having elongated open sections which solely defines the character/shape, the outline member being made of “strip of flat metal” (line 55).
It would have been obvious to one of ordinary skill in the art before the effective filing date to effectuate the elongated openings of a commonly metal decorative device as is obvious in Zeuner as taught by Penna, out of material that includes multiple open elongated openings in a shape, as taught by Rosenberg, since the jewelry and the decorative links of Rosenberg are both commonly made of metal. 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.
Regarding the size, examiner notes that the Zeuner links are sized to be worn by a user around the neck, and therefore, it would be obvious to choose a thickness of the link from front to rear surface to be one to create a desired size and desired weight to be worn around the neck of a user. A change in size is generally recognized as being within the level or ordinary skill in the art. See MPEP 2144.04 (IV)(a).
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).
Claim(s) 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zeuner as modified by Penna and 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, is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeuner in view of Penna and Rosenberg 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 (of Zeuner) having a surface
PNG
media_image2.png
194
257
media_image2.png
Greyscale
that is capable of receiving gemstones, comprising the correct number of elongated sections to create the alphanumeric character as required by claim 1 above (please see 112b rejection of the term “further elongated section”).
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.
PNG
media_image3.png
527
405
media_image3.png
Greyscale
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).
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, is/are rejected under 35 U.S.C. 103 as being unpatentable over Zeuner in view of Penna, in further view of Weisman and Rosenberg, in further view of Tamir.
PNG
media_image4.png
251
282
media_image4.png
Greyscale
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 elongated portion comprises a material having a thickness (assumed to be from front surface to back surface, thickness shown in figures 4 and 5), 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 to be “precious metal” or “wire or metal strip”. 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 form of material:
Rosenberg discloses a “chain link” having an exterior shape (decorative shape) with an outline member having elongated open sections which solely defines the character/shape, the outline member being made of “strip of flat metal” (line 55).
It would have been obvious to one of ordinary skill in the art before the effective filing date to effectuate the elongated openings of a commonly metal decorative device as is obvious in Zeuner as taught by Penna, out of material that includes multiple open elongated openings in a shape, as taught by Rosenberg, since the jewelry and the decorative links of Rosenberg are both commonly made of metal. 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.
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 size:
Examiner notes that the Zeuner links are sized to be worn by a user around the neck, and therefore, it would be obvious to choose a thickness of the link from front to rear surface to be one to create a desired size and desired weight to be worn around the neck of a user. A change in size is generally recognized as being within the level or ordinary skill in the art. See MPEP 2144.04 (IV)(a).
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.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EMILY M MORGAN/Primary Examiner, Art Unit 3677
Prosecution Insights