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 .
Election/Restrictions
Applicant's election with traverse of the gemstone (group 1) in the reply filed on 1/12/2026 is acknowledged. The traversal is on the ground(s) that the shared technical feature (of claim 35) is not shown in X reference Grassi. This is not found persuasive because the instant rejection below also shows proper rejection of the shared technical feature of claim 35. Therefore, the shared technical feature is not a special technical feature, and the restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Gemstone setting having a metallic base and an upper crystal with cavity.
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 35-52 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 35, applicant claims “a gemstone”. Examiner notes that the device shown in figure 5b is not a “gemstone”. Base 104 is made of metal, and crown 102 is made of “crystal”, which is not a gem. Therefore, the use of “gemstone” here is contrary to the commonly known definition of “gemstone”. Examiner contends that the device shown in figure 5b and claimed in claim 35 is a setting for jewels 118.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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) 35, 37, 39, 43-45, 49-52 is/are rejected under 35 U.S.C. 102a1 as being anticipated by 2011/0056243 Asscher.
Regarding claim 35, Asscher discloses a gemstone (a device holding smaller jewels 20, see 112b above) comprising
a metal collet (“circular metal plate 34” [0032]) defined by a body having a substantially flat surface (figure 7) and at least one pocket defined in said flat surface (by having side surface 36, the collet is one big “pocket”);
at least one jewel 20 secured in said at least one pocket (figure 7)
a dome-shaped crystal crown 18 (“transparent crystalline” material [0040]) defining an operatively substantially flat base (abutting collet 34), said base being complementary to the flat surface of the collet (as they abut in figure 7),
wherein said dome shaped crystal crown 18 is securely mounted on said collet 34 to enhance the brilliance, fire and scintillation of said gemstone (allowing for a movable setting, which enhances the fire and scintillation of the stones 20);
a girdle 36 defining the junction between said collet 34 and the dome-shaped crystal crown 18.
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 37, Asscher discloses the gemstone as claimed in claim 35, wherein said collet is of a metal selected from the group consisting of gold alloy, silver alloy, platinum alloy (“gold, platinum, silver, or alloys thereof” [0006]).
Regarding claim 39, Asscher discloses the gemstone as claimed in claim 38, wherein the outer surface of the collet 34 is surface treated (polished in order to shine the metal of the collet, as well as to be smooth so as to be worn by a user).
Regarding claim 43, Asscher discloses the gemstone as claimed in claim 35, wherein said jewels 20 are cut from natural or lab grown crystal (“cut diamonds 20”).
Regarding claim 44, Asscher discloses the gemstone as claimed in claim 43, wherein said jewels 20 are of the same color (as all are diamonds 20).
Regarding claim 45, Asscher discloses the gemstone as claimed in claim 43, wherein said jewels 20 are transparent stones, (diamonds).
Regarding claim 49, Asscher discloses the gemstone as claimed in claim 35, wherein said dome-shaped crystal crown 18 is formed from a portion of the stone crystal having a spherical configuration (as shown in figure 7).
Regarding claim 50, Asscher disclose the gemstone as claimed in claim 49, wherein said dome-shaped crystal crown 18 has a hemispherical configuration (figures 6 and 7).
Regarding claim 51, Asscher discloses the gemstone as claimed in claim 35, wherein the flat base (figure 7) of said dome-shaped crystal crown 18 is finely polished (figure 7).
Regarding claim 52, Asscher discloses the gemstone as claimed in claim 35, wherein the flat surface of said collet 34 and the flat base (figure 7) of said dome-shaped crystal crown (which abut in figure 7), each have a circular configuration.
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) 35-52 is/are rejected under 35 U.S.C. 103 as being unpatentable over 5454234 Karmeli, in view of Asscher.
Regarding claim 35, Karmeli discloses a gemstone (figure 4, and see 112b rejection above) comprising:
a collet 18 (“translucent or opaque” lower stone portion 18” column 2 line 34) defined by a body having a substantially flat surface 17 and at least one pocket (settings 23) defined in said flat surface (as shown in figure 4);
at least one jewel 16 secured in said at least one pocket 23;
a crystal crown 14 (made of topaz or quartz, column 2 line 18) defining an operatively substantially flat base 15, said base being complementary to the flat surface of the collet 18 (as shown in figure 4), wherein said crystal crown 14 is securely mounted on said collet (using “UV glue” column 4 line 6) to enhance the brilliance, fire and scintillation of said gemstone (by having a movable setting, allowing for greater scintillation);
a girdle 20 defining the junction between said collet 18 and the crystal crown 14.
Karmeli discloses that the upper stone section 14 is transparent and the lower stone portion 18 is “translucent or opaque” (column 2 line 34), but does not disclose that the “opaque” material is metal. Karmeli discloses that the settings 23 for the individual stones 16 are made of gold. Karmeli also discloses a crystal crown 14 having a circular flat shape (figure 4), or a shape that emulates the crown of a traditionally faceted diamond (figure 5). Karmeli does not disclose “dome shaped”, but does disclose that the shape of the crown is changeable.
It would have been obvious to one of ordinary skill in the art before the effective filing date to choose another known opaque material for the collet 18 of Karmeli to be gold, as this is a known stone setting material, as taught in Karmeli to set the stones 16 in gold settings (column 3 line 53). Note that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. See MPEP 2144.07. Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Asscher discloses a setting for multiple stones using a translucent dome shaped crown.
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the shape of the crown of Karmeli to another known and aesthetic shape, such as a dome shape as taught by Asscher, 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 36, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein said collet 18 has a configuration, which is undescribed in figure 4. Karmeli discloses the collet has the configuration of a pavilion of a diamond in figure 5. Karmeli does not disclose that the collet has a “hemispherical configuration”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the shape of the collet 18 of Karmeli, as Karmeli discloses it is already old and well known in the art to have different shapes. Examiner contends that a hemispherical collet in conjunction with the dome shaped crown from Asscher, as discussed in claim 1, would present the emulation of a pearl, rather than a cut diamond as suggested in Karmeli figure 5. 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 37, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein said collet 18 is of a metal selected from the group consisting of gold alloy, (as discussed in claim 35 above).
Regarding claim 38, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein said flat surface and the outer surface of said collet 18 is finely polished (“final faceting and polishing step” (column 4 line 63).
Regarding claim 39, Karmeli as modified discloses the gemstone as claimed in claim 38, wherein the outer surface of the collet (“final faceting and polishing step” column 4 line 63) is surface treated.
Regarding claim 40, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein multiple pockets 23 are configured on said flat surface of said collet (inside the pocket, figure 4).
Regarding claim 41, Karmeli as modified discloses the gemstone as claimed in claim 40, wherein said pockets 23 are glued inside the cavity to “hinder the movement of the free floating stones” (column 4 line 50), but does not disclose drilling a pocket on the flat surface of said collet. Karmeli discloses “at least one, or if desired, a plurality of blind cavities 20 are formed in the upper surface 17 of stone portion 18” which are formed “using an ultrasonic drill” (column 2 lines 50-57).
Regarding claim 42, Karmeli as modified discloses the gemstone as claimed in claim 40, wherein said pockets (23 integrated in the collet 18) are of the same size (since all stones 16 are the same size, as shown in figure 3).
Regarding claim 43, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein said jewels 16 are cut from natural or lab grown crystal (“diamonds are the preferred stone” column 3 line 48).
Regarding claim 44, Karmeli as modified discloses the gemstone as claimed in claim 43, wherein said jewels 16 are of the same color (all are diamonds).
Regarding claim 45, Karmeli as modified discloses the gemstone as claimed in claim 43, wherein said jewels 16 are selected from a group consisting of transparent stones, (diamonds).
Regarding claim 46, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein said jewels 16 are secured in said pockets 23 (or the multiple cavities 20) such that the table of each of said gemstone 16 is flush with said flat surface (figure 3 “height of the gem or gem plus setting can be adjusted to substantially match the depth of the cavity” column 3 line 55).
Regarding claim 47, Karmeli as modified discloses the gemstone as claimed in claim 46, wherein said jewels 16 are embedded in said pockets (23 or plurality cavities 20).
Regarding claim 48, Karmeli as modified discloses the gemstone as claimed in claim 47, wherein said glue is a UV curable adhesive (“UV glue is locktite UV glue” column 4 line 6).
Regarding claim 49, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein said dome-shaped crystal crown 14 (shaped by Asscher) is formed from a portion of the stone crystal having a spherical configuration (as taught by Asscher).
Regarding claim 50, Karmeli as modified discloses the gemstone as claimed in claim 49, wherein said dome-shaped crystal crown 14 has a hemispherical configuration (as taught in Asscher).
Regarding claim 51, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein the flat base 15 of said dome-shaped crystal crown 14 is finely polished (as shown in figure 4).
Regarding claim 52, Karmeli as modified discloses the gemstone as claimed in claim 35, wherein the flat surface 17 of said collet 18 and the flat base 17 of said dome-shaped crystal crown 14, each have a circular configuration (figure 1b).
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
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