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 6/25/2026 have been fully considered but they are not persuasive.
Applicant asserts the size relationship of the total area of the culet adjacent facets is less than a surface area of the table is related to the “brilliance and sparkle of the gemstone” [0069]. Examiner notes that “brilliance and sparkle” have no measurement, or definition, are not a light specific light pattern, and are completely subject to user’s preference. Therefore, examiner contends that “brilliance and sparkle” are not “a particular light path or function”, as all diamonds are cut to create the best possible amount of sparkling and reflection. Applicant does not claim or disclose a particular type of light reflection, like a hearts and arrows pattern, nor does applicant claim or disclose a particular percentage amount of light return, both of which are definite “light path or functions” of a diamond. Brilliance and sparkle are the result of a diamond being faceted, and even badly faceted diamonds have brilliance and sparkle. Since these are not measured by any set means or unit, examiner contends that this argument is merely to say “it looks prettier”, which again, is subjective and based on the viewer’s opinion. Examiner notes that the change of size of a facet of a known shape, location, number, angle, and all other patterns are similar, is an obvious change of size and does not prevent the modified diamond from having brilliance and sparkle.
Examiner notes that Samuels discloses the exact same facet number and shapes, as well as putting those shaped facets in a marquis shape. Paikin is used to show the angle ranges claimed by applicant are known in the art, and a third reference is used to show to make the pavilion facets smaller than the table.
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, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2003/0192346 Samuels in view of 2021/0219676 Paikin.
Regarding claims 1 and 23, 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”.
Regarding claims 1 and 23, 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;
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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 intermediate crown facets 308; and
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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.
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Samuels does not disclose a relationship between the “total surface area of the plurality of culet adjacent facets is less than a surface area of the table”.
‘676 Paikin, published July 22, 2021, which is more than 1 year prior to applicant’s provisional date of 5/26/2023, meets the broader claim 1 requirement regarding “total surface area of the plurality of culet-adjacent facets is less than a surface area of the table” because Paikin also meets the more narrow requirement of claim 23, “the plurality of culet-adjacent facets are sized to fit inside an outer periphery of the table should the plurality of the culet-adjacent facets and the table be overlaid”, as shown by annotated figure 1. Examiner contends that Paikin shows in figure 1 the “overlaid” table over culet adjacent facets 32, and the size of the culet-adjacent facets 32 “are sized to fit inside an outer periphery of the table”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the size of the culet adjacent facets 432 of Samuels to be of similar size relationship to that of ‘676 Paikin in the manner shown by figure 1 of Paikin, as this is a change of size of a facet (without adjusting any other aspect such as number, location, shape, or angle) is done for aesthetic purposes, and still results in a cut diamond with brilliance (as all faceted diamonds present brilliance). 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 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 “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 15 percent and 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 35 percent and 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 85 percent and 95 percent (by having the crown and pavilion facet angles as claimed in claims 14-17, 8-12).
Claim(s) 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 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.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Samuels as applied to claim 1 above, and further in view of 2021/0212421 Paikin.
Regarding claim 22, 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.
‘421 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
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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