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
Applicants’ arguments filed 8/6/2026 have been fully considered but they are not persuasive.
Examiner thanks applicant for cancelling claim 7, and for substantial amendments to claim 9. Previous 112d rejections are relieved.
Regarding rejection of Chia in view of Dover, applicant argues:
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1-“surface identified…in Chia’s figure 12 cannot serve as the claimed end of crimping bearing” because it “faces away from a cylindrical tool entering from the rear”. Examiner notes that applicant is not claiming the combination of the support and the crimping tool, nor is applicant claiming the method of assembly; examiner also notes that Chia does not disclose how the lip 29 is folded down, just that it IS folded down. Applicant’s claims require the bearing surface is “distinct and adjacent to the lip”, which it is, must “provide an end of crimping bearing for a crimping tool having a linear movement coaxial to the axial direction of the through opening”, which is an intended use limitation, and that the bearing surface is a “first surface”. Since applicant is not positively claiming the crimping tool nor the method of making, and Chia does not disclose how exactly the lip 29 is folded down, only that the lip 29 is folded, examiner notes that there are multiple manners of folding the lip 29. This includes inserting a tool through the side openings 19 at an angle to abut the free end of the lip 29, and then pivoted downward to fold the lip 29, with the fulcrum of the pivoting movement of the tool is within the width of the wall 13 of the setting. Therefore, the end of the tool is moving linearly coaxially to the axial direction of the opening, to fold the lip 29.
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2- “does not disclose a clear space between the rear face and a continuous lip that provides an axial passage”. Examiner notes that there is no material of the setting in figure 12 between the free end of the lip and the rear face of the setting, therefore, this is not persuasive. Further, applicant states the bearing surface as shown cannot allow the unclaimed crimping tool to “then terminate its movement against a distinct bearing surface adjacent to that lip”. Examiner contends that by folding the lip, the folded lip creates a bearing surface in the manner intended by applicant. The applicant intends to claim that the lip is spaced from the inner diameter of the support, and the bearing surface is between the inner diameter of the support and the lip, but does not positively claim this arrangement. Examiner contends that the folded position of the lip in Chia provides this arrangement, as shown in the annotated figure 13. The bearing surface as annotated is between the inner diameter of the support and the lip 29. Therefore, even applicant’s intended arrangement is met in Chia. Applicant’s arguments are not persuasive.
3- Dover is not used to show any other structure than that a continuous lip is known in the art.
4- Bernsen is used to show that there are multiple known locations to crimp a material to set a stone in a continuous lip setting.
Applicant’s arguments are not persuasive.
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 “sheared portion” of claim 9 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 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.
Claim 9 is 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.
Claim 9 requires “a sheared portion of the side wall”. Examiner notes that the word “shear” shows up in applicant’s [0018] and [0093], which refer to “an embodiment”, not the embodiment disclosed in figures 1, 3, which have a previously existing lip. Applicant claims a sheared portion AND a lip, which is not shown in any drawing. Further, the disclosure does not disclose what the sheared portion is. Examiner assumes that applicant is attempting to claim that the lip is created by the shearing of a crimping tool, which is not claimed by applicant, nor is applicant claiming the method of assembling. Examiner asserts that the “sheared portion” is not shown in the drawings, not disclosed in the specification, and if it means to create the lip by shearing, this conflicts with the independent claim 1 which has an existing lip.
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, 3, 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2004/0103689 Chia, in view of 837615 Dover, optionally in view of 2005/0199004 Bernsen.
Regarding claim 1, Chia discloses a support (assumed to be equivalent to “setting” for a timepiece or item of jewelry, the timepiece or item of jewelry comprising the support and a decorative insert (item of jewelry is a ring or bracelet, the decorative insert 17 is included), such as a gemstone (the decorative item nor the item of jewelry is positively claimed), crimped on the support, the support comprising:
-a front face 15, arranged to be visible for a user (as shown in figures 5 and 7),
- a rear face (annotated in figure 12)
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-at least one through opening, defining an axial direction (the arrow of figure 12) arranged between the front face and the rear face (as shown in detailed figure 12) and intended to receive the decorative insert (as it does in figures 13-14), comprising:
-an exposure opening 16 provided on the front face 15 in order to make the decorative insert visible to the observer (as is done in all assembled figures of Chia),
-an insertion opening (as shown in figures 12 and 14) provided on the rear face (as annotated) in order to introduce the decorative insert into the through opening (in the manner shown in figures 12 or 14),
-a mount 33 (believed to be a surface abutting the intended use decorative insert) intended for positioning the decorative insert in the through opening,
wherein the support comprises a lip 29 which is plastically deformable around the periphery of the mount, the lip 29 has an uncrimped position (figure 12) and a crimped position directly abutting the decorative insert positioned within the mount (figure 13),
wherein the support comprises a bearing surface (as annotated in figure 12 OR as annotated in figure 13 in the arguments above) distinct (as annotated in figure 12) and adjacent to the lip (as shown in both annotated figures 12 and 13) and arranged on the rear face side to provide an end-of-crimping bearing for a crimping tool having a linear movement coaxial to the axial direction of the through opening (in the manner intended by applicant OR in the manner of annotated figure 13 in the arguments above) intended to deform the portion to be crimped on the decorative insert (Chia does not disclose the type of tool, however the tool is not claimed. The structure of the Chia device meets this limitation. Should applicant have further issues with the intended use tool, please see previously cited reference 2005/0199004 Bernsen figure 2b),
wherein the front face 15 comprises a surface intended to be visible for the user (as it is visible in figure 5), the front face is decorated with a decorative finish (flat in figure 12, ridged in figure 30, notched in figure 37, angled and rounded in figures 62-64, textured in patterns figures 77-83, writing and other decorative features in figures 90-95), and
wherein the bearing surface is a first surface (already a surface) and the front face is a second surface (already a surface), wherein the areas of these surfaces have a ratio, the front face is larger than the bearing surface, as shown particularly in figures 77-83), and
wherein the support comprises a clear space between the rear face (as annotated in figure 12 above and the lip 29 to provide a passage for the cylindrical crimping tool (the clear space can be used for the crimping tool or not).
Chia does not disclose that the lip is continuous, or the particular size relationship of the front face being 150% larger than the bearing surface (which is hidden from view).
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Dover discloses a bezel setting having a body with a central opening, into which a gem is inserted, and the continuous lip a3 is then “over-turning the flange a3 upon [the gem’s] outer margin” (line 49).
Bernsen discloses a similar bezel setting having a body with continuous contact surfaces 18 abutting the crown of a faceted stone, and a continuous holding surface on part 20 in contact with the pavilion of the stone.
It would have been obvious to one of ordinary skill in the art before the effective filing date to make the discontinuous lip which abuts the rear side of a decorative insert of Chia into a continuous lip as is taught by Dover and Bernsen, as being continuous or discontinuous does not affect the form, function, or use, of the folding material of the lip taught by both Chia and Dover, optionally as taught by Bernsen. 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 contends that this change of shape is done for the purpose of having more surface area of the decorative insert abutting the folded material taught by Chia, in an old and well known manner taught by Dover.
Regarding the size relationship of the front decorative surface of Chia being larger than the bearing surface (which is hidden from view in Chia) by a particular percentage, Chia already presents the front face as being variable in size, decoration, and finish (ridges 23 figure 7, ridges figure 30, dappled figure 50, figures 77-83). Therefore, the changing of the front surface in size for aesthetic purposes, does not alter the function or use of the Chia device, but merely alters the aesthetic decoration of the visible rim of the setting as taught by Chia. A change in size is generally recognized as being within the level or ordinary skill in the art. See MPEP 2144.04 (IV)(a). Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art, and is described how the structure disclosed performs the claimed functions in the parentheses; therefore, all italicized language is considered and shown in the prior art. Further, examiner notes that the disclosed structure is capable of performing the intended use claimed by applicant.
Regarding claim 3, Chia as modified discloses the support according to claim 2, wherein the bearing surface (as annotated) is arranged at the periphery of the lip 29 (as shown in figures 12-14).
Regarding claim 9, please see 112a rejection above. Chia discloses the support according to claim 1, wherein the lip 29 in the uncrimped position (Chia figure 12) is part of a side wall of the through opening (as shown in figure 12), the lip in the crimped position (figure 13) comprises a sheared portion (assumed to be the lip) of the side wall through the opening bend toward the mount.
Regarding claim 10, Chia discloses the support according to claim 1, wherein the mount 33 comprises a contact surface with the decorative insert which is continuous (as shown in figure 3).
Regarding claim 11, Chia discloses the support according to claim 1, wherein the mount comprises a discontinuous contact surface (figures 46 and 49) with the decorative insert.
Regarding claim 12, Chia discloses an item of jewelry (ring figure 6, bracelet figure 1), comprising: -at least one support according to claim 1, and at least one decorative insert 17 arranged in the through opening against the mount 33 (figure 13), the lip 29 being in said crimped position abutting the decorative insert positioned within the mount (figure 13).
Regarding claim 13, Chia discloses a method for manufacturing a timepiece or item of jewelry, comprising the following steps:- providing a support according to claim 1, introducing a decorative insert 17 into the through opening via the insertion opening (as shown in figures 12 and 14), plastically deforming the portion to be crimped 29 against the decorative insert.
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 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
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