DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of species 1, figures 1-13, claims 1-19 and 21-32 in the reply filed on 3/11/2026 is acknowledged.
Claim 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/11/2026.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 10 and 19 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 12 of prior U.S. Patent No. 12121117. This is a statutory double patenting rejection. Claim 10 is identical to claim 1 of the patent. Claim 19 is identical to claim 12 of the patent.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9, 11-18, and 21-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12121117. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the application are broader than the claims in the patent and claim all the same subject matter, such as, first side of first material, a second side of second material, a third side of first material, a fourth side of second material, a first pattern of first indicia in the first material, a second pattern of second indicia in the second material, wherein the first half has a unique design different from the second half. The claims of the patent anticipate the claims in the application.
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.
Claims 1-3, 8-9, 11-15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sen Gupta, US 2019/0387847 A1 in view of Huang, US D873166 S.
Regarding claims 1-3, 11 and 21, Sen Gupta discloses a finger ring having a first and third half sides (12) formed from a first metal material (gold, silver, platinum, titanium, brass, stainless steel, [0002]) and a second and fourth half sides (24) formed from a second metal material ([0015]). Sen Gupta discloses an ornamentation on the first and third half sides.
Claims 1-3, 11 and 21 require that the first and second half sides be adjacent and symmetrical. Also, the third and fourth half sides being adjacent and symmetrical. Sen Gupta discloses the adjacent limitations. But, it fails to discloses the symmetrical limitation. Sen Gupta discloses the upper portion of a first metal being less than half the circumference of the finger ring. Thus, it is not symmetrical to the lower portion of a second metal of the finger ring. The specification fails to disclose any criticality with regard to the symmetrical limitation. To make the upper portion and the lower portion be symmetrical would be an obvious design choice to improve the beauty of the finger ring. Therefore, it would have been obvious, prior to the earliest effective filling date, to a person having ordinary skill in the art to make Sen Gupta’s upper and lower portions symmetrical.
Claims 1-3, 11 and 21 require that there be first and second patterns of first and second indicia embedded on the first and second metal material. It also requires that the finger ring have first and second recessed annular patterns of third and fourth indicia. The indicia functions as a means to decorate the finger ring with ornamentation of jewels or engraving to make the finger ring meet the fashion trends in the jewelry market.
Sen Gupta discloses a single ornamentation on the upper portion of the finger ring. However, Huang discloses a very ornated finger ring with first and second patterns of first and second indicia, i.e., gemstones. Embedded on the first and second metal material. Huang also discloses first and second recessed annular patterns of gemstones (third and fourth indicia), i.e., recessed from the outer most surface of the central ornamentation on the finger ring. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to change and improve the beauty of Sen Gupta’s finger ring by adding addition ornamentation to the ring’s outer surface.
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Regarding claim 8, the width of the first and second patterns of indicia being three spaced rounded and rectangular jewels is for ornamental purposes. The combination of different shaped jewels in a variety of rows or columns or other placements on the jewerly is old and well known in order to create a fashionable design and aesthetically pleasing look for the wearer. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to vary the number and orientation and shape of the jewels in the combination in order to improve the aesthetic look and design of the jewerly to keep up with changing fashion trends.
Regarding claim 9, Huang discloses three spaced rounded jewels across the width of the first pattern of first indicia.
Claims 4-7 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sen Gupta, US 2019/0387847 A1 in view of Huang, US D873166 S as applied to claims 1-3, 9 and 11-15 above, and further in view of Talasazan, US 2021/0401129 A1.
Regarding claims 4-6 and 16-18, Sen Gupta fails to discloses a grill design with a receptacle for placement of a jewel. However, Talasazan, as seen in figure 5, a grill design on the inner surface of the finger ring with receptacles (120) for receiving gemstones (130) to beautify the inner surface of the finger ring. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to add the ornamentation to Sen Gupta’s finger ring to make the inner surface of the finger ring more aesthetically pleasing when the ring is not being worn.
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Regarding claims 7 and 19, Sen Gupta fails to disclose engraving or casting a serial number on the inner surface of the ring. The examiner takes official notice of the fact that engraving indicia on the inner surface of a finger ring is old and well-known technique in customizing the ring with initials and dates or marking the ring with a number for future reference. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to engrave indicia in the form of a serial number on the inner surface of Sen Gupta’s finger ring in order to be able to identify the finger ring if it becomes lost in the future.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK W LAVINDER whose telephone number is (571)272-7119. The examiner can normally be reached Mon-Friday 9-4pm (EST).
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, Tom Will can be reached on 571-272-6998. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JACK W. LAVINDER
Primary Patent Examiner
Art Unit 3677
/JACK W LAVINDER/Primary Examiner, Art Unit 3677
Prosecution Insights