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 1/27/2026 have been fully considered but they are not persuasive.
Regarding 112a: applicant asserts all ranges of angles for all facets are generic for the same gemstone 1. Applicant’s arguments are persuasive. Examiner has removed the 112a rejection.
Regarding 103 rejection over Samuels, applicant argues the table percentage and the girdle thickness. Examiner and applicant both agree that Samuels discloses a table percentage of 25% in figure 6a. Similarly, examiner and applicant both agree that Samuels discloses a girdle thickness percentage of “between 3-4%” in [0054]. All of applicant’s arguments are that of asserting it is non-obvious to change the table percentage and the girdle thickness percentage. Please see obviousness of ranges, MPEP2144.05.
First, applicant asserts that Samuels does not disclose the table percentage as a variable, because Samuels discloses only one table percentage. Examiner notes that figures 6a shows that the table size has a plus and minus next to this size, which indicates that the table size Dtab is variable. Regarding “result effective”, examiner notes that the applicant has not claimed a result that this table size effects. The cut gemstone of Samuels with a 25% table or with a 28% table will still be a cut gemstone. Applicant does not claim or disclose any particular “optical performance”. Therefore, the changing of the table percentage does not negate the cut gemstone of Samuels from being a cut gemstone. Applicant’s argument is not persuasive to convince examiner that the table percentage is not variable.
Second, applicant asserts “small amount” of a 12% increase is “factually and legally insufficient” because it changes “coordinated changes… to maintain meet points and light paths”. Examiner notes that these adjustments are old and well known in the art of gemstone cutting; a larger table slightly moves all facet abutting locations in an old and well known manner. Further, applicant does not claim or disclose any “light paths”. Applicant asserts “optimizing” is not needed in Samuels and therefore should not be changed; examiner notes the standard method of choosing a facet structure for a gemstone is based on the size and shape of the raw stone, and to cut the largest carat stone possible from the raw stone. Since a larger table percentage presents a larger carat stone, a larger table percentage is always desired. Therefore, applicant’s argument that the change of the table size changes the stone in a non-conventional manner is not persuasive.
Third, applicant asserts there is no reason to target the claimed range of the table percentage to 38-36%. Examiner notes the standard method of choosing a facet structure for a gemstone is based on the size and shape of the raw stone, and to cut the largest carat stone possible from the raw stone. Since a larger table percentage presents a larger carat stone, a larger table percentage is always desired. Applicant’s arguments are not persuasive.
Regarding the girdle size, applicant asserts the girdle thickness is similarly argued. First, examiner notes that the girdle thickness is disclosed by Samuels as a range, therefore it is variable, so the first argument is not persuasive regarding girdle thickness. Second, the change of a girdle thickness does not rearrange any facet in the crown or the pavilion, and applicant does not claim nor disclose a particular light path, therefore the second argument is not persuasive regarding girdle thickness. Third, examiner again notes that the particular choice of 5% instead of the disclosed 4% is not a 25% increase, it is a 1% increase, and not one that affects the form, function, or use, of the cut stone of Samuels.
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, 3-5, 7-17, 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2003/0192346 Samuels in view of 2021/0212421 Paikin.
Regarding claim 1, applicant claims the facet pattern of Samuels, with a cross section of an “elongated elliptical shaped cross section”. Samuels discloses the facet pattern on a gemstone having a girdle with a circular cross section, disclosing in [0038] “One skilled in the art can envision using other shapes (e.g. an oval shape, a marquis shape, etc.)”. Further, [0038] states “specific parameters (e.g. depths, heights, ratios, and angles) are used for illustrative purposes only and should not be used to limit the scope of the present invention”.
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Regarding claim 1, Samuels disclose a gemstone comprising: a girdle defining a perimeter of the gemstone, the girdle having a circular cross-section;
a crown forming an upper portion of the gemstone (figure 3a), a surface of the crown including: a table 302 forming a generally horizontal upper surface of the crown; a plurality of star facets 304, each of the plurality of star facets being disposed adjacent to and abutting an edge of the table 302; a plurality of upper intermediate crown facets 306, each of the plurality of upper intermediate crown facets being disposed generally between two of the plurality of star facets 304, an upper vertex of each of the plurality of upper intermediate crown facets 306 abutting a vertex of the table 302; a plurality of lower intermediate crown facets 308, each of the plurality of lower intermediate crown facets 308 being disposed generally between two of the plurality of upper intermediate crown facets16, an upper vertex of each of the plurality of lower intermediate crown facets 308 abutting a lower vertex of one of the plurality of star facets 304; a plurality of main crown facets 310, each of the plurality of main crown facets 310 being disposed generally between two of the plurality of lower intermediate crown facets 18, an upper vertex of each of the plurality of main crown facets 310 abutting a lower vertex of one of the plurality of lower intermediate crown facets 308; and a plurality of upper girdle facets 312/314 formed in pairs of adjacent upper girdle facets, each pair of adjacent upper girdle facets 312/314 being disposed generally between two of the plurality of main crown facets 310, upper vertices of both upper girdle facets in each pair of upper girdle facets abutting a lower vertex of one of the plurality of lower
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intermediate crown facets 308; and
a pavilion (figure 4a) forming a lower portion of the gemstone, a surface of the pavilion including: a plurality of culet-adjacent facets 432 forming a lower point of the pavilion; a plurality of candle facets 434, a lower portion of each of the plurality of candle facets 434 being disposed generally between two of the plurality of culet-adjacent facets 432; a plurality of main pavilion facets 436, each of the main pavilion facets 436 being disposed between two of the plurality of candle facets 434, a lower edge of each of the plurality of main pavilion facets 436 abutting an upper edge of one of the plurality of culet-adjacent facets 432; and a plurality of lower girdle facets 438 formed in pairs of adjacent lower girdle facets, each pair of adjacent lower girdle facets 438 being disposed generally between two of the plurality of main pavilion facets 436 , each pair of adjacent lower girdle facets 438 having an upper portion of a respective one of the plurality of candle facets 434 disposed generally therebetween; and
wherein the girdle (figures 1, 2, 5, 11) is positioned between the crown and the pavilion (figure 1), each of the plurality of upper girdle facets being disposed adjacent to and abutting an upper edge of the girdle, and each of the plurality of lower girdle facets being disposed adjacent to and abutting a lower edge of the girdle (as shown in figures 3a and 4a above).
Examiner notes that the facet arrangement as claimed is shown on a round cut diamond, but is also known to be on a marquise shape stone [0038]. “Marquise” shape is an old and well known shape having an elliptical shape with two opposite points; examiner has included patents 532587 Schill, published 1895, and 2729955 Jay, published 1956, for which to show the old and well known a marquise shaped diamond.
Because Samuels explicitly lists the use of a “marquise shape”, which utilizes the shape of the girdle as claimed in lines 2-4 of claim 1, examiner contends that Samuels is a 102a1 reference.
Should applicant disagree, then examiner notes that It would have been obvious to one of ordinary skill in the art before the effective filing date to change the girdle shape of round, as taught in Samuels, to a marquise shape, as taught in [0038] Samuels, in an old and well known manner, as taught by Samuels.
Samuels gemstone has a table percentage (shown in figure 3a, listed as “table size Dtab” in figure 6a [0049]) is 25%. 25% is outside the range of an alternative gemstone that applicant now claims to have a range of 28-36%. Samuels discloses the girdle percentage is “between 3-4%” [0054]. Examiner contends that the Dtab/table percentage and the girdle thickness of Samuels is a known variable input, which has plus and minus input options in Samuels figure 6a, further supported that the girdle percentage is already a range in Samuels. Therefore, it would have been obvious to change in a small amount, as this does not affect the form, function, or use, of the gemstone of Samuels.
Paikin discloses a cut stone having “table percentage is between about 26.5% and about 45%” [0035] and a girdle thickness “is between about 4% and about 10%” [0038].
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the table percentage and the girdle percentage in a small manner, as taught in Paikin, to the facet choices as made in Samuels. Examiner notes that applicant does not claim a particular light path or function of these facets, and therefore, there is no criticality of these percentages. Further, the purpose of changing a table size would be the shape of the raw diamond, and how the shape of Samuels best fits in the raw diamond shape. It would have been obvious to one having ordinary skill in the art at the time the invention was made, to contrive any number of desirable ranges for the “table percentage” or “girdle thickness” limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
Regarding claims 19 and 20, Samuels discloses the use of a “maquis shape”, which has a specific definition, meeting the limitations of both lines 2-4 in claim 1, as well as having the elliptical shaped cross section is symmetrical along an axis extending between the pointed ends, and being symmetric between the widest points of the marquis shape.
Regarding claim 7, Samuels discloses the gemstone of claim 1, wherein a horizontal plane is defined by the table 302 of the gemstone, and wherein each of the plurality of star facets 304 is disposed at a first angle relative to the horizontal plane (Figure 6b), each of the plurality of upper intermediate crown facets 306 is disposed at a second angle relative to the horizontal plane, each of the plurality of lower intermediate crown facets 306 is disposed at a third angle relative to the horizontal plane, each of the plurality of main crown facets 308 is disposed at a fourth angle relative to the horizontal plane, and each of the plurality of upper girdle facets 314/312 is disposed at a fifth angle relative to the horizontal plane. Please see figure 6b for a table of all angles of the crown and pavilion.
Regarding claim 13, Samuels discloses the gemstone of claim 1, wherein a horizontal plane is defined by the table 302 of the gemstone, and wherein each of plurality of culet-adjacent facets 432 is disposed at a first angle relative to the horizontal plane, each of plurality of candle facets 434 is disposed at a second angle relative to the horizontal plane, each of plurality of main pavilion facets 436 is disposed at a third angle relative to the horizontal plane, and each of the plurality of lower girdle facets 438 is disposed at a fourth angle relative to the horizontal plane. Please see figure 6b for a table of all angles of the crown and pavilion.
Regarding claim 8, Samuels discloses the gemstone of claim 7, wherein first angle (of the star facet 304) is 14 degrees, between 6° and 18°. Please see figure 6b for a table of all angles of the crown and pavilion.
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Regarding claim 9, Samuels discloses the gemstone of claim 7, wherein the second angle (of the upper intermediate crown facet 306) is 20 degrees, between about 17° and about 25°. Please see figure 6b for a table of all angles of the crown and pavilion.
Regarding claim 10, Samuels discloses the gemstone of claim 7, wherein the third angle (of the lower intermediate crown facet 308) is 26.18 degrees, which is between about 20° and about 30°. Please see figure 6b for a table of all angles of the crown and pavilion.
Regarding claim 11, Samuels discloses the gemstone of claim 7, wherein the fourth angle (of the main crown facet 310) is 45.579 degrees, between about 43° and about 50°. Please see figure 6b for a table of all angles of the crown and pavilion.
Regarding claim 12, Samuels discloses the gemstone of claim 7, wherein the fifth angle (of the upper girdle facets 312/314) is 54 degrees, which is between about 48° and about 60°.
Regarding claim 14, Samuels discloses the gemstone of claim 13, wherein the first angle (of culet adjacent facets 432) is a minimum of 35 degrees, which is “about” 29°, since applicant does not define the range of “about”. Samuels also discloses [0038] states “specific parameters (e.g. depths, heights, ratios, and angles) are used for illustrative purposes only and should not be used to limit the scope of the present invention”.
Regarding claim 15, Samuels discloses the gemstone of claim 13, wherein second angle (of the candle facet 434) is 45.5 degrees, which is about 44°, since applicant does not define the range of “about”. Further, “or both” renders the whole range indefinite, as “or both” ranges seems to make the acceptable range about 25 degrees to about 44 degrees. Samuels discloses [0038] states “specific parameters (e.g. depths, heights, ratios, and angles) are used for illustrative purposes only and should not be used to limit the scope of the present invention”.
Regarding claim 16, Samuels discloses the gemstone of claim 13, wherein the third angle (of the main pavilion facet 436) is 47 degrees, which is between about 42° and about 48°. Further, “or combinations thereof” renders the whole range indefinite, as “or combinations thereof” ranges seems to make the acceptable range about 25 degrees to about 48 degrees. Samuels discloses [0038] states “specific parameters (e.g. depths, heights, ratios, and angles) are used for illustrative purposes only and should not be used to limit the scope of the present invention”.
Regarding claim 17, Samuels discloses the gemstone of claim 13, wherein the fourth angle (of the lower girdle facet 438) has a range of 50-61 degrees, which is about 50°.
Regarding claims 3-5, applicant claims indefinite ranges of “percentages”, which are ratios of existing facets/heights/areas with relation to the girdle area/total height/girdle diameter. Samuels discloses that the ratios exist, and while figure 6a is illegible as to the numerical values of the ratios, Samuels also discloses the angles of the crown and pavilion facets meet the claimed language (claims 8-12, 14-17). Therefore, by meeting both the facet structure and arrangement (claims 1, 7, 14), and the angles of these facets (claims 8-12, 14-17), examiner contends that Samuels therefore discloses the claimed ratios of claims 2-6.
Regarding claim 3, Samuels discloses the gemstone of claim 1, wherein the gemstone has a top depth percentage (ratio of the crown height to total width; the gemstone of Samuels has a total height and a total width, and therefore has a “top depth percentage”) between about 15 percent and about 35 percent (created by having the same crown facet angles claimed in claims 8-12).
Regarding claim 4, Samuels discloses the gemstone of claim 1, wherein the gemstone has a bottom depth percentage (ratio of the pavilion height to total width; the gemstone of Samuels has a total height and a total width, and therefore has a “bottom depth percentage”) between about 35 percent and about 40 percent (created by having the same pavilion facet angles claimed in claims 14-17).
Regarding claim 5, Samuels disclose the gemstone of claim 1, wherein the gemstone has a total depth percentage (ratio of the total height to total width; the gemstone of Samuels has a total height and a total width, and therefore has a “bottom depth percentage”) between about 85 percent and about 95 percent (by having the crown and pavilion facet angles as claimed in claims 14-17, 8-12).
Claim(s) 18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Samuels in view of Paikin as applied to claim 1 above, and further in view of 2011/0265514 Fakier.
Regarding claim 18, Samuels discloses the gemstone of claim 1, having the gemstone facet cut on a round gemstone, and it is known to apply that gemstone cut and arrangement to a gemstone having a marquise cut. Samuels does not explicitly talk about the profiles of the obvious variant of the marquise shape.
Fakier discloses the use of the same facet arrangement on several different shapes of gemstones (round, figures 1-3, oval figures 4-6, cushion figures 7-9, heart figures 10-12, pear figures 13-15, marquise figures 16-18, princess figures 19-21, princess square figures 22-24). Fakier discloses the marquise shaped diamonds in figures 16-18 have pointed ends with the same profile (figures 16-18).
It would have been obvious to one of ordinary skill in the art before the effective filing date to apply the known facet arrangement and angles of Samuels to a marquise cut, as disclosed by Samuels, so that it has “same profile” pointed ends in the old and well known manner of marquise diamonds, as taught by Fakier.
Regarding claim 21, Samuels discloses the gemstone of claim 20, with the known marquise shape, which has first axis and second axis. Samuels does not particularly show the particular ratios of these axes.
Fakier discloses the marquis shape in figures 16-18. The long axis of Fakier figure 16 measures 3.7 cm and the short axis measures 2 cm. Therefore, the shape shown in figures 16-18 of Fakier discloses the axis ratio of 1.85, which is within both of applicant’s ranges of 1.55-2.1, or 1.2-1.9.
It would have been obvious to one of ordinary skill in the art before the effective filing date to choose a particular shape of the marquis cut known in Samuels to have the marquis axis ratios as taught in Fakier, since Fakier is also a known marquis shape.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
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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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