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 9/26/25 have been fully considered but they are not persuasive.
Regarding applicant’s arguments stating Castel-Bijoux does not disclose wherein the gemstones are an array, Examiner notes that in the new rejection as modified by Szor, the prior art reads upon the claim.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this instance, Szor is merely used to teach the substrate being made of pearl is well known in the art.
Examiner holds rejection over the prior art.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1, 3-5, 7-10, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Castel-Bijoux FR 1512465 in view of Szor " Russell Trusso White Diamond Embedded Freshwater Pearl Pendant Necklace" (02/13/2017).
Regarding Claim 1, Castel-Bijoux discloses an item of jewellery including:
a gemstone (7) defining a peripheral region (sides of 7) and a base portion;
a plurality of posts (4a); and
a substrate (2), the substrate defining a dome-shaped recess (3) shaped to receive the base portion to reflect the colour of the substrate in the gemstone, a depth of the recess configured relative to an overall height of the gemstone such that a predetermined portion of the gemstone remains above a surface level of the substrate when mounted thereto (Fig 3), the substrate in which a plurality of apertures (5) are defined, the apertures arranged about the recess and spaced apart from each other, each aperture dimensioned to receive a portion of one of the posts to frictionally engage the post,
wherein the gemstone defines an axis of symmetry arranged to extend towards a centre of the substrate and each aperture extends transversely to the axis, and the posts are secured in the apertures to extend from the substrate and against the peripheral region to mount the gemstone on the substrate such that the opposing angles of the posts inhibit withdrawal of the posts from the substrate.
Claim language noted in italics set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of a tape banner, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the recess disclosed by Castel-Bijoux is indeed capable of the intended use statements of reflecting the color of the substrate in the gemstone. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Castel-Bijoux does not disclose wherein the substrate is substantially spherical and the substrate having double-curved external surfaces and wherein the substrate is a pearl.
Szor discloses gemstones embedded into a pearl as a substrate which is substantially spherical and having double curved external surfaces.
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the substrate of Castel-Bijoux to be made of pearl and be substantially spherical and having double curved external surfaces as disclosed by Szor for aesthetic purposes.
Regarding Claim 3, Castel-Bijoux in view of Szor discloses wherein the gemstone defines a plane of symmetry aligned with the axis of symmetry, and the apertures (Castel-Bijoux, 5) are each arranged to extend at a predetermined acute angle relative to the axis of symmetry and mirrored about the plane of symmetry (Castel-Bijoux, Fig 2).
Regarding Claim 4, Castel-Bijoux in view of Szor discloses wherein the substrate has a notional mount region (Castel-Bijoux, 3) corresponding with the peripheral region, and the apertures are arranged to be at least partially within the notional mount region of the substrate.
Regarding Claim 5, Castel-Bijoux in view of Szor discloses wherein the apertures are arranged in a regular array about the notional mount region (Szor).
Regarding Claim 7, Castel-Bijoux in view of Szor discloses wherein each post (Castel-Bijoux, 4a) is shaped to trap a portion of the peripheral region (Castel-Bijoux, Fig 2).
Regarding Claim 8, Castel-Bijoux in view of Szor discloses wherein each post defines an engaging portion (4a) configured to engage with the peripheral region (Castel-Bijoux, Fig 2).
Regarding Claim 9, Castel-Bijoux in view of Szor discloses wherein each engaging portion includes a notch (Castel-Bijoux, bend of 8/ under 4a) shaped to receive part of the peripheral region.
Regarding Claim 10, Castel-Bijoux in view of Szor discloses wherein the gemstone defines a table facet, and wherein the posts are arranged to mount the table facet substantially parallel to an adjacent portion of the substrate (Castel-Bijoux, Fig 3).
Regarding Claim 13, Castel-Bijoux discloses an item of jewellery including:
a plurality of gemstones (7), each gemstone defining a peripheral region (sides of 7) and a base portion (bottom of 7);
a plurality of sets of posts (4a); and
a substrate (2), the substrate defining a dome-shaped recess shaped to receive the base portion to reflect the colour of the substrate in each gemstone, a depth of the recess configured relative to an overall height of each gemstone such that a predetermined portion of each gemstone remains above a surface level of the substrate when mounted thereto (Fig 3), the substrate having double-curved external surfaces in which a plurality of sets of apertures (5) are defined, each set of apertures arranged about the recess, each set of apertures having the apertures spaced apart from each other, each aperture dimensioned to receive a portion of one of the posts to frictionally engage one of the posts,
wherein each gemstone defines an axis of symmetry arranged to extend towards a centre of the substantially spherical substrate and each aperture extends transversely to the axis, and each set of posts are secured in one of the sets of apertures to extend from the substrate and against the peripheral region of one of the gemstones to mount the gemstone to the substrate such that the opposing angles of each set of posts inhibits withdrawal of each set of posts from the substrate (Fig 1-3).
Claim language noted in italics set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of a tape banner, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the recess disclosed by Castel-Bijoux is indeed capable of the intended use statements of reflecting the color of the substrate in the gemstone. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Castel-Bijoux does not disclose wherein the substrate is substantially spherical and the substrate having double-curved external surfaces and wherein the substrate is a pearl.
Szor discloses gemstones embedded into a pearl as a substrate which is substantially spherical and having double curved external surfaces.
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the substrate of Castel-Bijoux to be made of pearl and be substantially spherical and having double curved external surfaces as disclosed by Szor for aesthetic purposes.
Regarding Claim 19, Castel-Bijoux discloses a method of mounting a gemstone (7) defining a peripheral region (sides of 7) and a base portion (bottom of 7) to a substrate (2), the method including:
selecting a notional mount region on the substrate, the notional mount region substantially corresponding to the peripheral region of the gemstone;
selectively removing material from the substrate to define a dome-shaped recess (3) shaped to receive the base portion to reflect the colour of the substrate in the gemstone, a depth of the recess configured relative to an overall height of the gemstone such that a predetermined portion of the gemstone remains above a surface level of the substrate when mounted thereto, and define a plurality of holes (5) in the substrate, the holes spaced in locations arranged about the recess and relative to the notional mount region;
fixing a post (4) in each hole such that a portion of the post is frictionally engaged with the substrate, and the post extends from the substrate (machine translation, lines 59-60); and
arranging the gemstone in the recess and the peripheral region of the gemstone against each of the posts such that the gemstone is retained within the posts, wherein the gemstone defines an axis of symmetry arranged to extend towards a centre of the substrate and each aperture is defined to extend transversely to the axis such that the opposing angles of the posts, arranged in the apertures, inhibit withdrawal of the posts from the substrate (Fig 1-4).
Claim language noted in italics set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of a tape banner, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the recess disclosed by Castel-Bijoux is indeed capable of the intended use statements of reflecting the color of the substrate in the gemstone. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Castel-Bijoux does not disclose wherein the substrate is substantially spherical and the substrate having double-curved external surfaces and wherein the substrate is a pearl.
Szor discloses gemstones embedded into a pearl as a substrate which is substantially spherical.
It would have been obvious to one skilled in the art before the effective filing date of the invention to modify the substrate of Castel-Bijoux to be made of pearl and be substantially spherical as disclosed by Szor for aesthetic purposes.
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 ANNA SALEM RASHID whose telephone number is (703)756-1113. The examiner can normally be reached M-F 10:00 - 6:00.
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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/ANNA S RASHID/Examiner, Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677