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 3/6/2026 have been fully considered but they are not persuasive.
Examiner thanks applicant for amendments to the specification and claims, which seem to relieve the drawing issues.
Regarding rejection of Chia in view of Dover, applicant argues:
1-Chia is not suitable for a crimping tool accessing a continuous lip. First, examiner notes that neither the “crimping tool” nor any structure of such a “crimping tool” is positively claimed. Second, applicant does not claim “sufficient radial space” between the lip 251 and the external wall (examiner assumes that applicant means side wall 271). Third, applicant does not claim the method of making; applicant is only claiming the structure. Applicant’s argument is not persuasive.
2- Dover “teaches to have no rear face”. Examiner notes that the Dove setting of figure 3 has a front face (where the table of the stone is visible) and a rear face. Applicant’s argument is not persuasive.
Regarding 112a rejections, Examiner thanks applicant for clarifying amendments to the specification and to claims 9 and claim 1. Examiner notes that “clear space 27” is different than “side wall 271”. Examiner assumes the “clear space” is the open space within the setting of figure 1.
Regarding 112b rejections, Examiner thanks applicant for taking examiner’s suggested claim language and making clarifying claim amendments. Regarding bezel crimp; applicant’s claim 1 already requires a continuous lip, therefore applicant’s definition of “bezel crimp” is identical to the structure of the continuous lip in the crimped position. There is no structural difference, applicant seems to merely apply another name. This is not further limiting. Regarding claim 9, applicant seems to argue that this claim regards a method of forming; applicant is not claiming a method of formation. Claim 9 is not further limiting of the structure claimed by applicant.
Specification
The specification was amended on 3/6/2026. These amendments are entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 7:
The specification nor the drawings indicate how the lip in the folded position of figure 6, is further limited by stating “is a bezel crimp”. Examiner requests further definition. The record is not clear how claim 7 is further limiting.
Regarding claim 9:
Applicant claims how the lip is formed, examiner notes that the method of setting a gemstone is not positively claimed. The record is not clear how claim 9 is further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 7, 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)
-at least one through opening 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:
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-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 abutting the decorative insert positioned within the mount (figure 13),
wherein the support comprises a bearing surface (as annotated) arranged on the rear face side to provide an end-of-crimping bearing for a crimping tool 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).
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).
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 portion to be crimped 29 (as shown in figures 12-14).
Regarding claim 7, Chia discloses the support according to claim 1, wherein lip in the crimped position is a bezel crimp (Chia discloses “base or bezel” [0031], also, the lip is continuous as required in claim 1).
Regarding claim 9, Chia discloses the support according to claim 1, wherein the lip 29 is formed by at least one part of a side wall the through opening to be pushed back and/or sheared by the crimping tool (112d rejection above).
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
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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