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) 1-2, 4-19 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.
Examiner thanks applicant for drawings filed 2/6/2026. These are entered.
Examiner thanks applicant for filing in black ink.
Regarding 112f: applicant has replaced one 112f term in claim 4 (“locking means”) for another 112f term “complementary interlocking features configured to hold”. Please see 112f below. Should applicant intend that the holder has two complementary shapes and the horseshoe part and the lever both have one complementary shapes, applicant claims this feature in claim 5.
Regarding 112b rejection: applicant asserts “second holder is a bezel” is definite since it is also defined to “bearing a stone”. Applicant does not define “bezel” or the structure required or implied by such a word. Therefore, based on applicant’s arguments, the scope of claim 2 is that the holder bears a stone, and that “is a bezel” is not further limiting. Examiner thanks applicant for clarifying amendments to claims 7 and 8.
Regarding 102 rejection: Thanks to applicant’s significant amendments, Landers is no longer the primary reference in the rejection below.
Regarding “U-shaped comprises two opposed arms”, examiner notes that the shape of Alulis meets the claim limitations. Alulis discloses a rounded edge and two opposed arms/ends of the U-shaped portion, therefore meeting the claim language. Further, Applicant’s function of this “u-shape” is identical in function to the Alulis shape. Both applicant’s shape and Alulis’ shape retains exactly one holder in a non-rotational manner, and, the holder must similarly be inserted in a linear manner to get into the inserted position where the complementary shapes between holder and U-shape are engaged. For these reasons, examiner contends that there is no claimed difference, or a functional difference, between Alulis’ shape and the claim language.
Examiner suggests an interview prior to applicant’s next response.
Drawings
The drawings were received on 2/6/2026. These drawings are entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Applicant claims “complementary locking features configured to hold” in claims 4 and 14. “Features” is a nonce term, while “configured to hold” is the function. According to [0027], this refers to parts 7 and 8, “for example of complementary shapes, ensuring that the clasp 2 remains in a stable closed position”. Applicant does not present any further embodiments of “complimentary locking features”, and therefore, this phrase is considered limited to “complementary shapes”. Examiner notes that the specific claiming of this part is present in claims 5 and 15.
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 2, 12-19 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 2, applicant claims “second holder is a bezel”. Examiner notes that this does not hold a particular structure, and therefore, the record is not clear as to how “is a bezel” further limits the structure of the holder in claim 1. Applicant asserts that claim 2 further limits the holder as to “bearing a stone”, but does not define bezel in the remarks 2/6/2026. Therefore, neither the examiner nor the applicant defines “bezel” and how it further limits the structure of the holder.
Regarding claim 12, applicant claims the holder has “at least one support”, and the “holder and horseshoe shaped part having complementary shapes configured to prevent rotation”. Examiner notes that the disclosed “shape” on the holder is the support previously claimed. Therefore, the difference in scope between “support” and the “complementary shapes” is not clear in the claim.
Further, applicant claims “u-shaped part” and “horseshoe-shaped part” both in claim 12. Examiner believes these are identical in scope.
Regarding claims 14 and 15, applicant claims the “complementary shapes” are that between the holder and the horseshoe part in claim 12. In claim 15, applicant now claims the clasp and the u-shaped part have complementary shapes. Examiner notes that the “complementary shapes” are already defined in claim 12. Examiner again suggests an interview to resolve indefiniteness issues.
Regarding claim 19, applicant claims “includes a groove”. Examiner assumes that the groove is the further definition of the 112f term “complementary shapes” as required in claim 12. Applicant does not disclose the use of complementary shapes AND a groove. Further, the horseshoe shaped part already requires a complementary shape. Does applicant intend that the holder has two supports, with the u-shape AND the clasp having a groove? If so, this would forward prosecution. However, applicant’s claim language is not definite and does not require the structure suggested by examiner.
Specification
The disclosure is objected to because of the following informalities: “clasp” and “lever” are identical in scope “clasp 2 (in the form of a lever)” [0023]. Examiner notes that “the use of a confusing variety of terms for the same thing should not be permitted”. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Examiner suggests claiming only one of these terms.
Appropriate correction is required.
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) 1-2, 4-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2015/0089976 Alulis in view of 2002/0189286 Tschetter, in further view of 1160723 Lander.
Regarding claim 1, Alulis discloses a piece of jewelry (pendant, figure 1) comprising
at least one horseshoe-shaped part 34B, a lever 34a mounted on a shaft 62 so as to be pivotable on the at least one horseshoe-shaped part between an open position and a closed position (open figure 9, closed figure 2), and
a holder 32, said holder 32 being configured to be inserted into said at least one horseshoe-shaped part (flat and circular, as shown in figure 9) and to be held in said at least one horseshoe-shaped part by said lever in the closed position (as shown in figure 2),
wherein said horseshoe-shaped part comprises two opposed arms (ends of part 34b) defining a U shape space between them configured to receive the holder (as shown in figure 9), said holder 32 configured to be inserted by translation in said space between said opposed arms (holder 32 must be inserted linearly along channels 44, present in both 34b and 34a), wherein the horseshoe-shaped part 34b and lever 34a have shapes 46 configured to prevent rotation of the holder in the horseshoe-shaped part once inserted (“spacer bars 46” best seen in figure 7 “may help prevent movement and/or rotation of the disk-shaped insert 32” [0062]).
Alulis discloses the use of a holder 32, but it is not “configured to bear a stone”. Further, the Alulis holder 32 is prevented from rotation [0062] by use of a protrusion/shape called “spacer bars 46”, and Alulis discloses the protrusion/shape called “Spacer bars 46” are present on the horseshoe shape part 34b and the lever 34a (figure 7). Alulis does not disclose that the holder needs a complementary indentation/shape to engage the “spacer bars 46” in order to perform the function of “preventing rotation”. Therefore, the holder of Alulis does not have “complementary shapes” that engage the “complementary shapes” of the horseshoe shaped part 34b or the lever 34a, but performs the function claimed (“prevent rotation”).
Tschetter figure 2 discloses a holder 28, having a circular and planar part 32 which is configured to bear a stone 30.
It would have been obvious to one of ordinary skill in the art before the effective filing date to decorate the holder 32 of Alulis with a stone 30 as taught by Tschetter, in order to utilize the jewelry of Alulis for a different insertable part. This allows the user to apply a different aesthetic to an existing piece of jewelry, and therefore, make the jewelry of Alulis more versatile, saving the user money. Examiner contends that by applying a stone to the holder 32 of Alulis does not alter the form, function, or use, of the Alulis jewelry, and the inclusion of a stone is merely for aesthetic purposes. Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Lander discloses a rotating arm 8 having a recess 11, the recess 11 engaging a lug 10 to prevent rotation of rotating arm 8, which is the use of “complementary shapes configured to prevent rotation”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the exterior edge surface of the holder of Alulis by having a “complementary shape” configured to engage the anti-rotation protrusions 46 of Alulis, as suggested by Lander’s complementary shapes configured to prevent rotation”. Alulis already performs the function of “preventing rotation” [0062], therefore, having or not having a “complementary shape” on the holder taught in Landers does not alter the form, function, or use, of Alulis. Both the presence or absence of the complementary shapes on the holder, results in the holder being prevented from rotation. 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”.
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. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art, and is described how the structure disclosed performs the claimed functions in the parentheses; therefore, all italicized language is considered and shown in the prior art. Further, examiner notes that the disclosed structure is capable of performing the intended use claimed by applicant.
Regarding claim 2, Alulis as modified discloses The jewelry according to claim 1, wherein the holder is a bezel bearing a stone 30, as taught in Tschetter.
Regarding claim 4, Alulis as modified discloses the jewelry according to claim 1, wherein the lever 34a and the horseshoe-shaped part 34b comprise complementary interlocking features 38a/36a/lever 48 configured to hold the lever in the closed position (latching it closed, figure 13).
Regarding claim 5, Alulis as modified discloses the jewelry according to claim 4, wherein the lever 34a and the horseshoe-shaped part 34b comprise complementary shapes 46 (as discussed in claim 1).
Regarding claim 6, Alulis as modified discloses the jewelry according to claim 1, said jewelry is a pendant due to the size of the insert of Alulis being a coin. However, changing the size of the insert to be that as taught of Landers would allow the insert to be an appropriate size to be worn on a finger, such as that taught by Landers.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the setting of Alulis for a smaller insert which is sized to be worn on a finger, and therefore using the setting of Alulis on a ring on which the horseshoe-shaped part is mounted, in the manner taught by Landers. Examiner contends that the use of a setting for one type of jewelry is appropriate to be worn in any other type of jewelry, according to the size of the insert.
Regarding claim 7, Alulis as modified discloses the jewelry according to claim 1, wherein the at least one horseshoe-shaped part 34b includes a chain 52 and at least one ring 50 configured to allow the passage of a chain therethrough (as shown in figures 7 and 1).
Regarding claim 8, Alulis as modified discloses the jewelry according to claim 1, said jewelry is a pendant due to the size of the insert of Alulis being a coin. However, changing the size of the insert to be that as taught of Landers would allow the insert to be an appropriate size to be worn on a pin/stud 14 configured to pass through a pierced ear, such as that taught by Landers.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the setting of Alulis for a smaller insert which is sized to be worn on a finger, and therefore using the setting of Alulis on a stud/pin 14 on which the horseshoe-shaped part is mounted, in the manner taught by Landers. Examiner contends that the use of a setting for one type of jewelry is appropriate to be worn in any other type of jewelry, according to the size of the insert.
Regarding claims 9 and 11, Alulis as modified discloses the jewelry according to claim 1, wherein the jewelry is made of “gold, silver, platinum, titanium, copper, brass, nickel” [0055].
Regarding claim 10, Alulis as modified discloses an assembly comprising at least one piece of jewelry according to claim 1 and a plurality of holders 32 (any other coin in Alulis, or “multiple jewel assemblies 28” [0034] in Tschetter), each of the plurality of holders comprising a bezel (unknown term) bearing a stone 30 (as taught in Tschetter).
It would have been obvious to one of ordinary skill in the art before the effective filing date to duplicate the number of inserts possible to use in the Alulis device. Examiner contends that the inclusion of multiple inserts to be used in Alulis, in the manner taught by Tschetter, is a duplication of parts for the purpose of choosing an aesthetic for each desired use of the Alulis device. 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. See MPEP 2144.04 (I).
Claim(s) 12-15, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alulis in view of 2015/0257497 Nevatia.
Regarding claim 12, Alulis discloses a personalized jewelry system, comprising:
a U-shaped part 34b having a space therein (figure 9) defined by a pair of opposed arms (ends of the U-shaped part);
a holder 32;
the horseshoe shaped part (assumed to be the u-shaped part 34b) having complementary shapes 46 configured to prevent rotation of the holder 32 in the horseshoe shape part once inserted [0062]; and,
a clasp 34a pivotably mounted to the U-shaped part (as shown in figure 9) and configured to pivot between an open or closed position (as shown in figures 2 and 9), wherein: the space of the U-shaped part is configured to removably accept the at least one support of the holder therein (“remove the disk shaped insert 32” [0084]) and, the clasp 34a being configured to secure the holder within the space of the U-shaped part when the clasp is in the closed position (as shown in figure 2).
Alulis does not further describe the holder 32, other than being similar in structure to a coin.
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Nevatia discloses a jewelry system having a u-shaped part 20 having a space therebetween and opposed arms 11/11a; a holder 90 (detailed in figure 9) having a lower base and an upper base (a shown in annotated figure 9), the bases being connected by at least one support 91, the holder configured to secure a stone therein (with or without precious stones” [0065]) by translating said holder within the opposed arms (linearly in the manner shown in figure 9 along length of arms 11/11a), a clasp 41 pivotably mounted to the u-shaped part 20 configured to pivot between an open position and a closed position (figures 6a-6d), wherein: the space of the U-shaped part is configured to removably accept the at least one support of the holder therein (“insert or remove the plurality of decorative elements” [0054]); and the clasp 41 being configured to secure the holder within the space of the u-shaped part 20 (as shown in figure 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the structure of the holder 32 of Alulis to the structure of another known circular insert that is removably inserted into a similar jewelry item, such as that taught by Nevatia. By changing the structure of the holder of Alulis, this still provides the removable insert into the Alulis holder, to be worn in the old and well known manner of Alulis, in a non-rotatable manner as taught by Alulis, but allows other known inserts to be utilized. Examiner contends that the use of a different insert or insert structure allows the interchangeability of other set stones into the jewelry of Alulis, therefore allowing greater aesthetic options and saving the user money in buying new jewelry items. 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).
Regarding claim 13, Alulis as modified discloses the system of claim 12, wherein the holder (of Nevatia or shaped similar to Nevatia) comprises a stone [0065] set with what looks to be a bezel in figure 1, but does not particularly disclose how to set the stone onto the holder 90. Prongs are old and well known manners of attachment of a stone, please see Tschetter, as previously disclosed above. 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”.
Regarding claims 14-15, Alulis as modified discloses the system of claim 12, wherein the clasp 34a and the u-shaped part 34b have complementary shapes 46, best shown in figure 13.
Regarding claim 19, please see 112b rejection above. Examiner assumes “groove” is the further definition of “complementary shape”, however applicant’s claim seems to require the groove AND the complementary shape, which is not disclosed by applicant. Further, claim 12 already requires the horseshoe shaped part has a complementary shape, which is taught by Alulis. Alulis also teaches the complementary shape on the clasp. Alulis teaches that the “spacer bars” 46, shown in figure 13, could also be “grooves or dimples” [0062].
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alulis modified by Nevatia as applied to claim 12 above, and further in view of Lander.
Regarding claims 16 and 17, Alulis is disclosed as a pendant. Alulis as modified discloses the jewelry according to claim 12, said jewelry is a pendant due to the size of the insert of Alulis being a coin. However, changing the size of the insert to be that as taught of Landers would allow the insert to be an appropriate size to be worn on a finger, such as that taught by Landers.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the setting of Alulis for a smaller insert which is sized to be worn on a finger, and therefore using the setting of Alulis on a ring on which the horseshoe-shaped part is mounted, in the manner taught by Landers. Examiner contends that the use of a setting for one type of jewelry is appropriate to be worn in any other type of jewelry, according to the size of the insert.
Regarding claim 18, Alulis as modified discloses the jewelry according to claim 12, said jewelry is a pendant due to the size of the insert of Alulis being a coin. However, changing the size of the insert to be that as taught of Landers would allow the insert to be an appropriate size to be worn on a pin/stud 14 configured to pass through a pierced ear, such as that taught by Landers.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the setting of Alulis for a smaller insert which is sized to be worn on a finger, and therefore using the setting of Alulis on a stud/pin 14 on which the horseshoe-shaped part is mounted, in the manner taught by Landers. Examiner contends that the use of a setting for one type of jewelry is appropriate to be worn in any other type of jewelry, according to the size of the insert.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
Applicant is encouraged to request interviews after non-final rejection, rather than after final rejection. Examiner notes that interviews after final rejection “may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration” MPEP 713.09. Examiner intends to make suggests for amendment in such an interview.
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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