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) 21-22 and their dependents 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 use as “pendant, brooch or earring”, applicant now claims the optional inclusion of the chain/rod/element in order to allow the device to behave as “pendant, brooch, or earring”, and mooting the issue. Examiner thanks applicant for their new understanding of a rejection present since 5/14/2025.
Applicant asserts “Nelson ring lacks parallel channels”. Nelson clearly shows two parallel channels 20 in figures 1, 8, 13, 15, 16, 26. Applicant’s argument is not consistent with the prior art and is not persuasive. If applicant intends to argue that the extensions 16 in figure 9 are not exactly parallel, examiner will address this new limitation below. Slight angular change does not alter the form, function, or use, of the Nelson device in this manner. Examiner further notes that there is a current 103 rejection for claims 21-22 based on Nelson figures 1-15, and also a 103 rejection for claims 21-22 based on Nelson figure 16.
Applicant asserts Nelson “lacks the holes at the distal ends of the support 12”. Nelson teaches the exact purpose disclosed by applicant in [0047], however in a different location on the member. Carter is the reference showing a similar device hanging from a chain as a pendant as shown in figure 1 (since a chain is required to turn the device into a “pendant”, as previously discussed”, having holes at the end of the arms of the member for the exact purpose known in Nelson, in a known location taught by Carter. Applicant’s argument is not persuasive.
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 5, 7-9, 16-19 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 5, applicant claims “element” (U-shaped member shown in figure 2) “has a bar at a bottom thereof”. Examiner notes that there is no disclosed “bottom”, but is assumed to be the end opposite of the holes 122/125 in figures 2, 4a. Applicant claims “extending through the element and passing through the holes”, which is shown in the drawings, but not “at a bottom” of the element. Further, “bar” is not definite, because applicant discloses “bar” 200, 250, 320, 315, 322, 324. Examiner assumes that applicant is intending to positively claim the “pendant” alternative of claims 21 and 22, and positively claim the second alternative of the “pendant” using a rod. If this is applicant’s intent, then examiner should claim “the jewelry is a pendant in combination with a rod extending through the holes of the pendant”.
Regarding claims 7-9, 16-19, applicant claims “decorative addition removably attached to the base”. Applicant does not disclose the “base” in the figures. Examiner assumes “insert” and “base” are identical in scope.
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) 7-9, 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2020/0163423 Nelson in view of 4726200 Carter.
Independent claims 21 and 22 differ only in that claim 21 is sized to “fit at least partly around a wearer’s finger”, and claim 22 is sized to “fit at least partly around a wearer’s wrist”. Therefore, the claims will be treated together, and claim 22 will have an additional modification of size. Examiner notes that the first rejection is that with respect to Nelson figures 1-15, and the second rejection of claims 21 and 22 are with respect to Nelson figure 16.
Regarding claim 21, Nelson discloses jewelry comprising:
a member (figure 8) sized to fit at least partly around a wearer’s finger (“ring 10 can have an overall size appropriate for wearing on a finger” [0047]), the member comprising: a U-shaped element 12 (figures 8-15); a pair of opposing parallel extending portions 16 (each having terminus 18), each extending portion 16 having a channel 20 facing inwardly and running along the length of the extending portion (as shown in figures 8, 11-12); each extending portion 16 having a hole (20 is continuous with 22, [0048] and figure 15) at an end thereof;
the jewelry further comprising an insert 14 (figures 23-25) with flanges 66/68 on opposing sides of the insert (figure 24), each flange 66/68 fitting within a respective channel 20 so that the insert is movable along the channel (vertical to move into the channel, figure 15) to a first position near the distal ends of the extending portions 16 (in the position of figures 5-7), and a second position away from the distal ends of the extending portions 16 (“each cavity 22 opens to one of the slots 20” [0048]), and rotatable within the channel (figure 26) to a first orientation that is perpendicular to the extending portions 16 (figure 1), and a second orientation that is parallel to the extending portions (figure 26);
wherein
the insert in the first position (figure 1) the member and the insert form a ring (as disclosed in the title and specification [0047]).
Applicant claims the insert in the second position with a pendant structure in the alternative. Therefore, by meeting the ring condition, Nelson discloses the claim language of claim 21. Claim 21 does not require the “pendant” function or the inclusion of the chain/rod/element.
Nelson DOES disclose the use of a included chain [0047] to thread through holes 20 to be worn as a pendant, therefore meeting part iv of the claim language. The position of the insert is still rotatable while using the chain disclosed by Nelson. Therefore, Nelson, on its own, discloses the use of the chain, forming the pendant functionality as claimed by applicant.
Regarding “parallel” extending portions, examiner assumes that applicant intends that the extending portions 16 must be “parallel” to create “parallel channels”. Nelson discloses “the distance between the slots 20 and/or the cavities 22 may be constant” [0052], and therefore Nelson discloses that the angled extending portions 16 or parallel extending portions 16 are known obvious variants of each other.
Regarding the holes 20 of Nelson, Nelson discloses each extension has its own hole 20, which allows the article to be “attached to a string, thread, chain, or other necklace member” [0047]. These holes are in the location of the extensions at the bottom of the ring, appropriate for use in the old and well known manner of 4165621 Gould. Nelson does not disclose that the chain can be applied in the location of the cavity 22, which is continuous with the holes 20.
Carter discloses a “ring pendant” (title) which has a pivotable insert 3, and an arcuate member 1c, which also discloses a method of wearing the ring as a pendant (as in figure 1), using a strand going through holes 4, 5, which are on the distal ends of the arcuate member, and above the pivoting rod 2, so that the ring can be a pendant in the manner shown in figure 1, which is disclosed by applicant in figure 1a. The holes are appropriately in the location of the rotation axis of the insert of Carter.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include holes/connection points in the location as taught by Carter, to the known similar ring that is capable of being attached to a strand such as that taught by Nelson, as the duplication of known parts in known locations to perform the identical function (to attach a ring to a strand) as known in the art, is not patentably distinct from the prior art. Examiner notes that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04 (VI) (b). Examiner notes that this is done for the purpose of aesthetics (how the pendant hangs from the strand). See MPEP 2144.04 (I). 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 the location of the holes in the receiving area 24 of Nelson allows the string/thread/chain/other necklace member as taught by Nelson to be attached in an old and well known manner to display the insert of Nelson in the old and well known manners taught by Carter.
Regarding claim 22, the difference between claims 21 and 22 is that claim 22 is “sized to fit at least partly around a wearer’s wrist”. Nelson discloses “ring 10 can have an overall size appropriate for wearing on a finger, and can be provided in various sizes for various finger sizes”, and later states that it can be “in the form of a necklace, bracelet, key chain, earrings, and combinations thereof” [0047]. Therefore, Nelson teaches it is known in the art to change the size of the ring 10 to be different sizes, and knows that the size can be that capable of being worn on a wrist.
Regarding the “sized to fit” on fingers or wrists, examiner notes that this is the intended use of the device claimed. Examiner also notes that in order to accomplish “sized to fit” on different parts of the body, that only the length/size of the device is changed. Therefore, making a ring into a bracelet, or a bracelet into a ring, only depends on the change of size of the device. The prior art teaches to change the size of the device, and teaches the device can be worn on the finger and as a “bracelet”. Examiner notes 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 21, Nelson discloses jewelry comprising:
a member 28 (figure 16) sized to fit at least partly around a wearer’s finger (“ring 10 can have an overall size appropriate for wearing on a finger” [0047]), the member comprising: a U-shaped element 12 (figures 8-15); a pair of opposing parallel extending portions 18, each extending portion 18 having a channel 20 facing inwardly and running along the length of the extending portion (as shown in figure 16); each extending portion 18 having a hole 34 (which is continuous with 20, figure 16) at an end thereof;
the jewelry further comprising an insert 14 (figures 23-25) with flanges 66/68 on opposing sides of the insert (figure 24), each flange 66/68 fitting within a respective channel 20 so that the insert is movable along the channel (vertical to move into the channel, figure 15) to a first position near the distal ends of the extending portions 18 (in the position of hole 34), and a second position away from the distal ends of the extending portions 18 (position of end 32), and rotatable within the channel (figure 26) to a first orientation that is perpendicular to the extending portions 16 (figure 1), and a second orientation that is parallel to the extending portions (figure 26);
wherein
the insert in the first position (in hole 34) the member and the insert form a ring (as disclosed in the title and specification [0047]).
Applicant claims the insert in the second position with a pendant structure in the alternative. Therefore, by meeting the ring condition, Nelson discloses the claim language of claim 21. Claim 21 does not require the “pendant” function or the inclusion of the chain/rod/element.
Nelson DOES disclose the use of a included chain [0047] to thread through holes 20 to be worn as a pendant, therefore meeting part iv of the claim language. The position of the insert is still rotatable while using the chain disclosed by Nelson. Therefore, Nelson, on its own, discloses the use of the chain, forming the pendant functionality as claimed by applicant.
Regarding claim 22, Nelson discloses “ring 10 can have an overall size appropriate for wearing on a finger, and can be provided in various sizes for various finger sizes”, and later states that it can be “in the form of a necklace, bracelet, key chain, earrings, and combinations thereof” [0047]. Therefore, Nelson teaches it is known in the art to change the size of the ring 10 to be different sizes, and knows that the size can be that capable of being worn on a wrist.
Regarding the “sized to fit” on fingers or wrists, examiner notes that this is the intended use of the device claimed. Examiner also notes that in order to accomplish “sized to fit” on different parts of the body, that only the length/size of the device is changed. Therefore, making a ring into a bracelet, or a bracelet into a ring, only depends on the change of size of the device. The prior art teaches to change the size of the device, and teaches the device can be worn on the finger and as a “bracelet”. Examiner notes 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 claims 7 and 8, Nelson as modified with respect to figures 1-15 and with respect to figure 16, discloses the jewelry of claim 21, wherein the insert 14 comprises a base and a plurality of decorative addition 74 (figure 29) removably attached to the base (“permit easy replacement of a different indicia bearing element” [0062]).
Regarding claim 9, Nelson as modified with respect to figures 1-15 and with respect to figure 16, discloses the jewelry of claim 7, further comprising an attachment mechanism, “screwing pressing snapping or otherwise closing to trap indicia bearing member 36 therebetween” [0062], and “placed, snapped, slid, or otherwise inserted” [0062]. Examiner notes that “screwing pressing snapping” is a “clip” as claimed by applicant.
Regarding claim 14, Nelson as modified with respect to figures 1-15, and with respect to figure 16, discloses the jewelry as claimed in claim 22, wherein the element (figure 15 of Nelson) has an arcuate interior to fit around at least part of the wearer’s hand (hand or finger, depends on the size of the ring/bracelet as disclosed by Nelson, as discussed above in claim 22).
Regarding claim 15, Nelson as modified with respect to figures 1-15, and with respect to figure 15, discloses the jewelry as claimed in claim 22, wherein the element (figure 15 of Nelson) has an arcuate exterior.
Regarding claim 16, Nelson as modified with respect to figures 1-15, and with respect to figure 16, discloses the jewelry as claimed in claim 22, wherein the decorative addition and a base, the decorative addition comprises one or more of metal, wood [0063].
Regarding claim 17, Nelson as modified with respect to figures 1-15, and with respect to figure 16, discloses the jewelry as claimed in claim 16, wherein the metal is selected from the group consisting of yellow gold, silver, [0063].
Regarding claims 18-20, Nelson as modified with respect to figures 1-15, and with respect to figure 16, discloses the jewelry as claimed in claim 16, with decorations 72 and metals as claimed in claims 16 and 17. Nelson discloses the use of wood [0063]. Carter discloses the use of gemstones (abstract). Examiner contends that the particular materials of the wood, the particular gemstone, and the particular material of a feature which only has an aesthetic function, is obvious to modify for purposes of aesthetics. 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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nelson figures 1-15, and figure 16, as modified by Carter, as applied to claim 21 above, and further in view of 6032486 Uchin.
Regarding claim 5, Nelson figures 1-15, and figure 16, as modified by Carter, discloses the jewelry of claim 21 including holes at the terminus of the extensions, approximately near the axis of rotation of the insert, as taught by Carter. This makes the device capable of being worn as earrings, as Nelson teaches the device is capable of being worn as “a necklace, bracelet, key chain, earrings, and combinations thereof” [0047] and “necklaces, bracelets, keychains” [0045]. Nelson does not disclose using the jewelry device of claim 1 as an earring.
Uchin discloses the use of a decorative device 10 and earring 18 with post 16 to go through the ear, the decorative device 10 and the earring 18 are attached using a wire loop in the shape of “triangle” to connect to the decorative device and a hole in the earring 18.
It would have been obvious to one of ordinary skill in the art before the effective filing date to use the triangle of Uchin to attach the decorative “earring” of Nelson to a mechanism with which to wear on the ear as taught by Uchin, in order to achieve the old and well known variation of Nelson to be worn as an earring, as taught by Nelson. This results in the device of Uchin going through the chain openings as taught by Nelson in the locations taught by Carter, which are at the ends of the extending portions, as disclosed but not claimed, by applicant.
Claim(s) 10, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nelson figures 1-15, and figure 16, each separately modified by Carter as applied to claims 21 and 22 above, and further in view of 2010/0050689 Hurwitz.
Regarding claims 10 and 13, Nelson’s figures 1-15, and figure 16 as modified by Carter, discloses an insert 14 that has a cavity 84 (figure 29), which are capable of being partly separable (as they are in figures 27 and 29) to enable a chain within the hole. Nelson does not disclose that the insert is made of two separable pieces that creates a cavity to hold an item.
Hurwitz discloses an item having two extending arms 17 on alternate sides of the item, having a body and a cover which are separable from each other to create a cavity capable of holding an article.
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the shape of the spinner of Nelson to have a locket structure as taught by Hurwitz, as jewelry articles with extensions on both sides of the article, taught by both the device of Hurwitz (figure 1c) and the insert of Nelson, can have this structure, known in the art of jewelry. This would enable the device of Nelson as modified to also be able to have a cavity 13 of Hurwitz which is known in the art of jewelry to contain small articles on the body in a manner known in the art.
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.
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/EMILY M MORGAN/Primary Examiner, Art Unit 3677