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 6/11/2026 have been fully considered but they are not persuasive.
Examiner notes that the specification and drawings have been amended, which do not confuse the disclosure or add new matter. These are entered.
Examiner thanks applicant for amendments to claim 5, this reduces indefiniteness issues.
Regarding prior art rejections:
Applicant asserts Nelson’s “channels are not parallel”. This is factually incorrect, please see figures 1, 5, 7, 8, 15, of Nelson. Examiner again asks if applicant intends that the extensions need to be parallel to therefore make the channels parallel; and if this is applicant’s intention, the rejection of 3/12/2026 has already addressed this “parallel” extensions on page 6. Applicant’s arguments do not clarify why figures 1, 5, 7, 8, 15 do not show the channels are parallel. This seems merely to be an argument without any support. Further, applicant does not argue this feature missing in the rejection based on figure 16. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant also seems to argue about “far enough down the channels to keep the spinner from extending past where holes….to function as the various types of jewelry”. Examiner notes that the structure as shown by Nelson is disclosed to be worn on the finger, and therefore meets the ring requirements. The wearing as a pendant, a brooch, or earring, depends on additional structure, such as the chain disclosed in [0047] which also meets the pendant requirement. Not only does Nelson disclose the pivoting decorative device, it discloses the longitudinal movement of the decorative device, and the wearing of the device as a ring and a pendant. Applicant’s argument is not persuasive.
Applicant asserts that Nelson [0052] does not teach parallel channels; examiner notes that the quote states the “distance between the slots…may be constant” therefore teaches parallel channels. The purpose for parallel channels is irrelevant, Nelson teaches the channels to be parallel in a working embodiment of the ring of Nelson. Applicant does not claim or clarify that parallel extensions are required to create the parallel channels. Applicant’s arguments are not persuasive.
Applicant objects to examiner’s assertion that the angled extensions shown in figure 15 of Nelson could be parallel based on [0052] because [0052] is “to permit the same size spinning member…on differently sized spinner”. Examiner again notes that the reason for having parallel extensions (which applicant does not claim or clarify that parallel extensions are required to create the parallel channels) does not negatively affect or hinder the disclosed form, function, or use, of the Nelson device. Applicant’s argument is not persuasive.
Examiner notes that Nelson discloses the use of the chain to wear the device as a pendant; Carter merely shows an alternative place to thread the chain through the pendant so that the decorative insert maintains the position shown by Carter (figure 9) and by Nelson (figure 26) and applicant (figure 4a). Applicant’s argument is not persuasive.
Applicant argues “length and size are structural not an intended use”. Examiner agrees; however the obvious modification of changing length and size are for old and well known purposes of wearing the device in a different manner. It is not patentable to change the length of a decorative chain to be worn on wrists, ankles, necks, heads, or waists; this is an obvious change in size for an obvious purpose. Applicant’s argument is not persuasive.
Applicant argues Nelsons’ spinner cannot “go far enough down the channels to leave holes open” so that the chain can be placed above the spinner (closer to the termini of the extensions) rather than below the extensions (closer to the bottom of the U of the member of figure 15 of Nelson). Examiner contends that since the spinner can travel along the channel, the chain is capable of being added closer to the termini of the extensions with or without the separate hole disclosed by Carter. Nelson already discloses the use of a chain through the channels in order to wear the Nelson device in an old and well known manner. Applicant’s arguments are not persuasive.
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 23-26 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 23: Claim 21 requires “with the insert in the first position and the first orientation, the member and the insert form a ring”. Claim 23 states “wherein the insert is in the first position and the first orientation, so that the member and the insert form a ring”. Claim 23 does not further limit claim 21.
Regarding claim 24: claim 22 states “with the insert in the first position and the first orientation, the member and the insert form a ring”. Examiner assumes applicant intends to claim “bracelet” based on line 2’s “configured to fit at least partly around a wearer’s wrist”. Claim 24 states “wherein the insert is in the first position and the first orientation, so that the member and the insert form a bracelet”. Claim 24 does not further limit claim 22.
Regarding claims 25 and 26: claims 21 and 22 state “with the insert in the second position and the second orientation, the member and the insert form a pendant”. Claims 25-26 state “insert in the second position and the second orientation, so that the member and the insert form a pendant”. Neither claims 25 or 26 further limit claims 21 or 22.
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) 7-9, 14-26 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 claims 21, 23, 25, Nelson discloses jewelry comprising:
a member (figure 8) configured 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); the member (figure 8) having a pair of opposing parallel extending portions 16 (each having terminus 18, parallel as discussed in [0052] “the distance between the slots 20 and/or the cavities 22 may be constant”), 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) so that the channels are parallel (the result of parallel extending portions is that the channels 20 are parallel, this phrase does not further limit the channels); 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 configured to move 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 configured to rotate 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), and sufficiently distant from the distal ends of the extending portions that the insert does not extend above the hole 22 in each respective extending portion (the insert is capable of rotation at all positions along the channel 20);
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]); and with the insert in the second position (figure 26) the member and the insert form a pendant further comprising a chain extending through channels 20 [0047].
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. Nelson does not particularly disclose that when the chain is added, that the insert is “sufficiently distant from the distal ends of the extending portions that the insert does not extend above the hole”.
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. Carter also discloses that the insert 3 is located between the extensions 6, 7 and “sufficiently distant from the distal ends of the extending portions that the insert does not extend above the hole” while the chain is threaded through the holes 4-5 in the manner shown in figures 1 and 9.
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 claims 22, 24, 26, the difference between claims 21 and 22 is that claim 22 is “configured 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 “configured 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 21, 23, 25, Nelson discloses jewelry comprising:
a member 28 (figure 16) configured 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) so that the channels are parallel (these are parallel in figure 16 and this phrase is the result of structure of the extending portions and does not further limit the channels); 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 configured to move 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 configured to rotate 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) and sufficiently distant from the distal ends of the extending portions that the insert allows for the chain to go through the holes 34 (chain [0047] through the hole/channel);
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]) and can be used in the second position in the manner of the “pendant” by including the chain of [0047] through the known channels/holes.
Nelson does not disclose that the chain can be applied in the location of the cavity 22, which is continuous with the holes 20. Nelson does not particularly disclose that when the chain is added, that the insert is “sufficiently distant from the distal ends of the extending portions that the insert does not extend above the hole”.
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. Carter also discloses that the insert 3 is located between the extensions 6, 7 and “sufficiently distant from the distal ends of the extending portions that the insert does not extend above the hole” while the chain is threaded through the holes 4-5 in the manner shown in figures 1 and 9.
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 claims 22, 24, 26, 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 and 27 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 claims 5 and 27, 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. The post 16 is equivalent to “a bar”.
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”/pendant 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
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.
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/EMILY M MORGAN/Primary Examiner, Art Unit 3677
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