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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “means for attaching a chain” or bale (claim 7), the “setting” claim 13, the “piece of jewelry” of claims 13 and 14, or the “brooch” of claim 14, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-15 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 1:
Applicant claims “a diamond jewel comprising: a lab-grown diamond having”. Examiner notes that “diamond” is a more specific “jewel”, and therefore, “diamond jewel” is a broad AND narrow limitation. Examiner believes applicant intends to claim “diamond”. Further, a “diamond jewel comprising a diamond” seems superfluous, that the jewel is claiming itself. Additionally, there is no structural difference in “lab-grown” diamond and a natural diamond. The applicant does not indicate what, if any, structural difference this term makes. Examiner reminds applicant that applicant is not claiming a chemical vapor deposition method to create a diamond; applicant is claiming the end product of the diamond having a particular shape. Examiner assumes that the first two lines are equivalent to “diamond, comprising”. Examiner notes that “lab grown” is a product by process limitation.
Regarding claim 6, applicant claims “free of visible imperfections”. Examiner notes that it is common in the art to rate the quality of diamonds, regarding imperfections, called clarity ratings. These ratings vary from I1-3 (included), SI1-2 (slightly included), VS1-2 (very slightly included), VVS1-2 (very very slightly included), Internally Flawless, and Flawless. Applicant’s claim only requires “free of visible imperfections”, which is a negative limitation. Examiner notes that it is not clear what point of the ratings scale “free of visible imperfections” falls. Examiner further notes that it is obvious in the art that “flawless” rating regarding clarity is the most desirable, and that selection of the most desirable diamond within a budget is an obvious and well known optimization procedure when purchasing diamonds. The record is not clear how this claim further limits the diamond.
Regarding claim 7, applicant claims “means for attaching a chain”. Examiner notes that this is 112f “means plus function” language. The specification only discloses “such as a bale” for “chain attachment means”, but does not indicate what the alternatives for “means for attaching a chain” are. Examiner also notes that the bale is not shown in the drawings. Examiner considers “means for attaching a chain” is equivalent to the hole claimed in claim 2. Therefore, claims 2 and 7 are considered together.
Regarding claim 9, applicant further limits the method of “lab growing” to be chemical vapor deposition. Examiner notes that “lab grown” is a product by process limitation, and is not further limiting the structure of the diamond. Further restricting the product by process limitation to “CVD” does not further limit the structure of the diamond either. Applicant is reminded that process limitations are given little patentable weight in product claims since the patentability determination of product-by-process claims is based on the product itself, even though such claims are limited and defined by the process. See MPEP § 2113.
Regarding claims 13 and 14, examiner notes that “setting” is broad, and applicant does not disclose a particular structure for “setting” in the drawings. Further, “brooch” is also a broad term, and applicant does not disclose a particular structure for “brooch” in the drawings. Therefore, both these terms are considered in the broadest reasonable interpretation of devices that could be considered “setting” or “brooch”.
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 7, 9, 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 7, applicant further limits the diamond to further comprise “means for attaching a chain”. Applicant discloses “bale” but does not disclose “bale” in the figures or describing this device and how it interacts with the diamond at any point. Examiner is not sure how the claim 7 further limits the diamond.
Regarding claim 9, applicant further limits the “product by process” limitation of “lab grown”. Examiner notes that the process to create the product is not positively claimed by claiming the product. Further, this does not create any physical or structural differences in diamonds, whether they are natural, “lab grown”, or created by CVD.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 7, 9-10, 13-14 is/are rejected under 35 U.S.C. 102a1 as being anticipated by 2011/0226016 Howard.
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Regarding claim 1, Howard discloses a diamond jewel 815 comprising: a lab-grown diamond 815 (“diamond...815 may be formed from the same CVD formed diamond plate” [0045]) having:
a front surface (annotated) with an outline having a shape (shape of a circle), the front surface comprising a polished front face (“sheet of diamond that is polished flat on both sides of the sheet” [0033]);
a rear surface (annotated) with an outline having the shape (circle), the rear surface comprising a polished rear face [0033], the rear surface parallel to the front surface (as shown in figure 8a); and
an outer surface (annotated in figure 8a) extending between the front and rear faces (as shown in figure 8a), the outer surface comprising one or more outer faces, each of the one or more outer faces being perpendicular to the front and rear faces (as shown in figure 8a).
Regarding claim 2, Howard discloses the diamond jewel of claim 1, wherein the lab-grown diamond further comprises one or more inner surfaces (annotated in figure 8a) extending between the front and rear surfaces, the one or more inner surfaces defining a hole 820 through the lab-grown diamond 815, each of the one or more inner surfaces being perpendicular to adjacent front and rear surfaces (as shown in figure 8a).
Regarding claim 3, Howard discloses the diamond jewel of claim 2, wherein each of the one or more inner surfaces is parallel to at least one outer surface (as shown in figure 8a to make the shape of a “decorative washer” [0045]).
Regarding claim 4, Howard discloses the diamond jewel of claim 1, wherein the shape comprises a geometric shape (circle).
Regarding claim 5, Howard discloses the diamond jewel of claim 1, wherein the shape comprises a symbol (circle is a symbol for Japan, circle of life, or any other symbol with patterns on the circle).
Regarding claim 7, Howard discloses the diamond jewel of claim 1, further comprising a means for attaching a chain (through hole 820).
Regarding claim 9, Howard discloses the diamond jewel of claim 1, wherein the lab-grown diamond is formed by a Chemical Vapor Deposition (CVD) process [0045].
Regarding claim 10, Howard discloses the diamond jewel of claim 1, wherein at least a portion of the one or more outer faces is unpolished (“polished as desired” [0048] could include “unpolished”).
Regarding claim 13, Howard discloses a piece of jewelry (figure 8a) comprising the diamond 815 jewel of claim 1 in a setting (around post 810).
Regarding claim 14, Howard discloses the piece of jewelry of claim 13, wherein the piece of jewelry is a brooch (the device of figure 8a is capable to pierce fabric with post 810, therefore is capable of performing the function of “brooch”).
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) 6, 8, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Howard.
Regarding claim 6, Howard discloses the diamond jewel of claim 1, wherein the lab-grown diamond is created in the CVD manner disclosed by applicant. Howard does not disclose if the diamond 815 has visible imperfections or not.
It would have been obvious to one of ordinary skill in the art before the effective filing date to create a diamond sheet, or select a segment of the diamond sheet, that makes the diamond 815 of Howard, to have no visible imperfections, as this is the most desirable rating of diamond, and presents the highest status, wealth, and sparkle, as possible. Please see MPEP 2144.05 (II).
Regarding claim 8, Howard discloses the diamond jewel of claim 1, wherein the lab-grown diamond further comprises one or more facets (as shown in figure 11 option) at a point where the front surface abuts the outer surface (facet 1115 in figure 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the decorative shape of the diamond 815 in a known and desired facet pattern as taught in figure 11, as A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b). Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Regarding claim 15, Howard discloses the diamond jewel of claim 2, wherein the one or more inner surfaces define a circle shaped hole, not a heart- shaped hole.
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the shape of the hole and/or the outer circumference of the diamond 815 of Howard to any known and aesthetically pleasing shape, including hearts, squares, rectangles, rhombuses, hexagons, octagons, or any other logo or outline of existing and known articles, such as apples, pets, particular dog breeds, hobby equipment, or any other article (see figures 11-15 of Howard). Examiner contends that this change in shape is done for the purpose of aesthetics, and does not further limit the utility or function of the diamond of Howard. A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b). Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Howard as applied to claim 1 above, and further in view of 2018/0042345 Moyse.
Regarding claims 11 and 12, Howard discloses the diamond jewel of claim 1, but discloses the outer face does not have an outer layer.
Moyse discloses a diamond having a metal band 22 is made of layers of precious metal (titanium, gold [0036]), wherein at least one outer face/circular ring, is covered by an outer layer 22.
It would have been obvious to one of ordinary skill in the art before the effective filing date to add a metal ring/layer around an exterior circumference of the Howard device, as old and well known and taught by Moyse, “service as a fastening means” [0031].
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