DETAILED ACTION
Continuation Reissue Application
The instant reissue application is a continuation reissue of earlier reissue Application No. 17/472,249 and, thus, is a second application for reissue of US Patent No. 10,405,618 B1. See MPEP 1451, 35 USC 251(b), and 37 CFR 1.177.
Earlier reissue Application No. 17/472,249 is now abandoned.
Maintenance Fees
MPEP 2504 explains that, for maintenance fees due on or after January 16, 2018, separate maintenance fees must be paid in:
Each reissued patent in force on (i.e., issued before) the maintenance fee due date. This includes all reissued patents that replace the same original patent.
An original patent that is not surrendered because one or more applications for reissue of that original patent are still pending on the maintenance fee due date.
USPTO records show that the four-year maintenance fee has been timely filed and, thus, maintenance fee payments are up to date for original US Patent No. 10,405,618 B1.
Status of Submission
The amendment filed on April 30, 2026 has been entered with the exception of the proposed replacement drawing sheets (see explanation below).
Claims Subject to Examination
Patent claims 1-9, 12, 13 and 15-20 (claims 2, 3, 16-18 and 20 in amended form) and new reissue claims 21-24 are subject to examination. Patent claims 10, 11 and 14 have been canceled.
Objection to Amendment – Formalities
The specification amendments filed on April 30, 2026 are objected to as failing to comply with 37 CFR 1.173(b)(1), (d) and (g). The precise point in the patent specification must be identified where any added or amended paragraph is located. Such paragraphs must show all changes made relative to the patent specification, with omitted text enclosed in single brackets, and added text underlined. New paragraphs must be underlined in their entirety.
The specification amendments are improper because:
The instruction to “Please insert the following new heading and paragraph at col. 1, line 3” is inaccurate since the heading is amended (not new) and one of the paragraphs is amended (not new).
The amendments to the heading and paragraph located at col. 1, lines 3-10 fails to enclose omitted text in single brackets. The use of strikethrough is not permitted in reissue applications.
The instruction to “Please replace the paragraph (formula) at col. 11, lines 1-5 with the following rewritten paragraph (formula)” is inaccurate since the amended paragraph does not contain a “formula”.
In the 6th line of the amended paragraph located at col. 12, lines 41-50, “green areas 14A” should read “green areas 14A” in order to properly show the changes made.
In the 1st line of the amended paragraph (formula) located at col. 13, line 29, “[LH°max=[PM+1.26-0.3667*(LH %-75)] (4)]” should read “[LH°max=PM+1.26-0.3667*(LH %-75) (4)]” in order to properly reflect the patent and properly show the changes made.
In the replacement Table 2, under Equation (3), “[LH°max = [PM+ 1.26 + 0.06 * (40.9 - PM) - 0.3667 * (LH % - 75)]]” should read “[LH°max = [PM + 1.26 + 0.06 * (40.9 - PM) - 0.3667 * (LH % - 75)]]” in order to properly show the changes made.
In the replacement Table 2, Equation (4) is modified, but the changes are not shown via the required single brackets and underlining.
Applicant is required to place the amendments into compliance with 37 CFR 1.173 in response to this Office action.
The specification amendments filed on December 2, 2024 are also objected to because: in the 6th and 7th lines of the amended paragraph located at col. 12, lines 41-50, “green areas 14A” and “green areas 14A” are inconsistent with the identification of elements 14A, 14B as “green regions” in the 7th line of the amended paragraph located at col. 2, lines 45-67.
Replacement Drawing Sheets
Applicant’s petition to accept color drawings filed on December 2, 2024 was granted by the petition decision mailed on February 4, 2026.
The proposed replacement drawing sheets filed on April 30, 2026 have been disapproved by the examiner and will not be entered because Figs. 16-21 and 23 are designated as “AMENDED”, but no changes are made to these figures.
Original Disclosure – Definition
The instant application seeks reissue of US Patent No. 10,405,618 B1, which issued from Application No. 15/717,472. The “original disclosure” is the disclosure of Application No. 15/717,472 as filed on September 27, 2017. Any subject matter added to the disclosure (including the claims) during either the examination of the instant reissue application or the earlier-concluded examination of Application No. 15/717,472 does not constitute a part of the “original disclosure”.
Prohibition of New Matter
35 USC 132(a) states, in part, that “No amendment shall introduce new matter into the disclosure of the invention.” 35 USC 251(a) states, in part, that “No new matter shall be introduced into the application for reissue.”
New Matter Added During Present Examination
The amendment filed in the instant application on December 2, 2024 is objected to under 35 USC 132(a) and 35 USC 251(a) because it improperly introduces new matter for the following reasons.
The rewritten paragraph (formula) located at col. 6, line 12 defines Equation (4) as “LH°max=[PM+1.26-0.03667*(LH%-75)]”. However, the original disclosure defines Equation (4) as LH°max=[PM+1.26-0.3667*(LH %-75)]. The change from “0.3667” to “0.03667” introduces new matter because it does not find support in the original disclosure. Applicant argues that substituting the values shown in Table 5 into the new Equation (4) confirms that “0.03667” is the correct value. See p. 17 of the response filed on January 25, 2024. As shown below, substituting many of the values shown in Table 5 into the new Equation (4) yields results that conflict with the data in Table 5. Thus, such substitution does not provide the necessary support for the new factor “0.03667”.
Pavilion Mains Angle (PM)
Lower Halves Length (LH %)
LH°max, No Indexing in Table 5
Result Using Factor 0.03667
40.5
79
41.62
41.61
40.6
76
41.83
41.82
40.7
76
41.93
41.92
40.8
76
42.03
42.02
40.8
78
41.96
41.95
40.9
76
42.13
42.12
40.9
78
42.06
42.05
40.9
79
42.02
42.01
41.0
76
42.23
42.22
41.0
78
42.16
42.15
41.0
79
42.12
42.11
On p. 22 of the response filed on April 30, 2026, applicant’s arguments provide data that is consistent with the data shown in the table above while showing more decimal places for the calculated result. Applicant asserts that they chose to round each value of the hundredth digit up in all instances to arrive at the data shown in Table 5. This argument is not persuasive because it contradicts the standard mathematical convention for rounding up. For example, in standard mathematics, a value of 41.61332 is not rounded to 41.62; rather, it is rounded to 41.61. For this reason, applicant cannot now rely upon an unconventional rounding practice that is not set forth in their original disclosure.
The rewritten paragraph (formula) located at col. 11, line 9 defines Equation (4) as “LH°max=[PM+1.26-0.03667*(LH%-75)]”. The change from “0.3667” to “0.03667” introduces new matter for the reasons explained above.
The rewritten paragraph (formula) located at col. 13, line 29 defines Equation (4) as “LH°max=[PM+1.26-0.03667*(LH%-75)]”. The change from “0.3667” to “0.03667” introduces new matter for the reasons explained above.
Replacement Table 2 (replacing Table 2 located at col. 14, line 35 to col. 15, line 19) defines Equation (4) as “LH°max = [PM + 1.26 - 0.03667*(LH%-75)]”. The change from “0.3667” to “0.03667” introduces new matter for the reasons explained above.
Amended claim 20 recites “…the formulae…and LH°max=[PM+1.26-0.03667*(LH %-75)]” (ll. 6 and 9). The change from “0.3667” to “0.03667” introduces new matter for the reasons explained above.
New claim 22 recites a step of “amending at least one of a crown mains angle, a pavilion mains angle, or a lower halves length so that the crowns mains angle of the recut diamond is 33.70 to 35.00 degrees, the pavilion mains angle of the recut diamond is 40.60 to 41.00 degrees, and the lower halves length of the recut diamond is 75-79 percent of a pavilions main length” (ll. 3-6). Claim 22 goes on to recite “wherein the step of amending results in at least one of shallowing a lower halves angle, decreasing the lower halves length, shallowing the pavilion mains angle, or shallowing the crown mains angle” (ll. 7-9, emphasis added). The original disclosure (see patent claim 1, for example) establishes that the amending step of lines 3-6 of claim 22 is a preliminary step to be followed by an additional step of shallowing or decreasing one or more of the parameters in order to eliminate the green table effect. The original disclosure fails to provide support for the amending step of lines 3-6 of claim 22 being a step of amending that results in the claimed shallowing or decreasing of at least one parameter.
Applicant is required to cancel the new matter in response to this Office action.
Claim Interpretation
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation (BRI) standard. That is, claims are given their BRI consistent with the specification, but limitations in the specification are not read into the claims. Thus, proper claim interpretation requires a determination of the scope of claims not solely on the basis of the claim language, but upon giving claims their BRI in light of the specification as it would be interpreted by one of ordinary skill in the art. See MPEP 2111 et seq.
As explained in MPEP 2111.04, section II:
The BRI of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A nor step B is required by the BRI standard.
See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) for an analysis of contingent claim limitations in the context of a method claim. The PTAB determined that, under the BRI standard, if the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed. Therefore, in rejecting the claimed method based upon prior art, the Examiner does not need to present evidence of the anticipation or obviousness of the method steps that are not required to be performed.
In this case, method claim 1 recites the following contingent limitations:
Contingent Limitation 1: if a crown mains angle is less than 33.70 or more than 35.00 degrees, amending the crown mains angle to within 33.70-35.00 degrees.
Contingent Limitation 2: if a pavilion mains angle is less than 40.60 or greater than 41.00 degrees, amending the pavilion mains angle to within 40.60-41.00 degrees.
Contingent Limitation 3: if a lower halves length is less than 75 or more than 79 percent, amending the lower halves length to within 75-79 percent.
The claimed method can be practiced without performing the “amending” step of Contingent Limitation 1 because there is no requirement to amend the crown mains angle if this angle is already within the range of 33.70-35.00 degrees. Likewise, the claimed method can be practiced without performing the “amending” step of Contingent Limitation 2 because there is no requirement to amend the pavilion mains angle if this angle is already within the range of 40.60-41.00 degrees. And, the claimed method can be practiced without performing the “amending” step of Contingent Limitation 3 because there is no requirement to amend the lower halves length if this length is already within the range of 75-79 percent. Since the claimed method may be practiced without performing any of the “amending” steps that are part of Contingent Limitations 1-3, none of these contingent limitations are required by the BRI standard.
Consent of Assignee
The Form PTO/AIA /53 (Reissue Application: Consent of Assignee…) filed on April 30, 2026 is acceptable because the person who signed the form has been established as being authorized to act on behalf of the assignee by the power of attorney filed on the same date.
Establishing Ownership Interest
The Form PTO/AIA /96 (Statement Under 37 CFR 3.73(c)) filed on April 30, 2026 is acceptable.
Reissue Oath/Declaration
The reissue declaration filed on April 30, 2026 is acceptable.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
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(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
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(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 20, 22 and 23 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. See the explanation above. Claim 23 is included in the rejection because of its dependency.
GROUND 2: Claims 22-24 are rejected under 35 U.S.C. 251 for failing to comply with the original patent requirement. See MPEP 1412.01.
As explained in MPEP 1412.01:
The reissue claims must be for the same invention as that disclosed as being the invention in the original patent, as required by 35 U.S.C. 251. The entire disclosure, not just the claim(s), is considered in determining what the patentee objectively intended as the invention. See In re Amos, 953 F.2d 613, 21 USPQ2d 1271 (Fed. Cir. 1991); and In re Rowand, 526 F.2d 558, 187 USPQ 487 (CCPA 1975).
The patentee’s “intent to claim” is analogous to the written description requirement of 35 USC 112(a). See In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). However, the original patent standard and the written description requirement are not the same. Where the written description requirement is based on what the skilled artisan would have understood was within the possession of the inventor, recent Federal Circuit case law indicates that the original patent requirement requires something more.
A claim submitted in reissue may be rejected under the original patent clause of 35 USC 251 if the original specification demonstrates, to one skilled in the art, an absence of disclosure sufficient to indicate that a patentee could have claimed the subject matter. The essential inquiry is whether one skilled in the art, reading the specification, would identify the subject matter of the new claims as invented and disclosed by the patentee. See In re Amos.
The original patent requirement is not satisfied when the patent only discloses one invention (e.g., a particular class of jet injectors), as evidenced by the clearly repetitive use of a descriptive term or classifier (e.g., jet injector) throughout the specification, but the reissue claims recite a broader/different invention (e.g., a generic injector encompassing a non-jet injector). See Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014).
Where a new invention is sought by reissue, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention. See Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). Accordingly, claims drawn to an invention comprising a newly claimed combination of features, which were only disclosed in the original patent as suggested alternatives (and not as a single combination), or which were only disclosed as part of the original invention and not as an invention separate from the original invention, would not satisfy the original patent requirement. See Antares Pharma Inc.
When the written description and drawings fail to disclose that a feature required by the patent claims is an optional feature of the invention, omission of such feature from the reissue claims fails to satisfy the original patent requirement. See Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019).
According to the original disclosure, applicant identified the green table effect as a problem to be solved and developed a method of shaping a gemstone (diamond) in order to eliminate the green table effect.
New claims 22-24 fail to meet the original patent requirement because they are not directed to the same invention as that disclosed as being the invention in the original patent. The original disclosure repeatedly and explicitly states that applicant’s invention is a method of shaping a gemstone (diamond) in order to eliminate the green table effect. However, claims 22-24 are limited to a method that eliminates the green table effect since they do not recite (i) elimination of the green table effect, or (ii) the specific combination of disclosed parameters (see, for example, the parameters required by claim 21) that applicant relies upon to eliminate the green table effect.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
GROUND 3: Claims 20, 22 and 23 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because these claims recite new matter. See the explanation above. Claim 23 is included in the rejection because of its dependency.
GROUND 4: Claims 1-9, 12, 13, 15-20 and 22-24 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. These claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors or a joint inventor had possession of the claimed invention at the time the application was filed.
The written description requirement serves both to satisfy applicant’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the inventor(s) was in possession of the invention that is claimed. Applicant bears the burden of setting forth sufficient information to show that the inventor had possession of the claimed invention. Thus, the written description requirement requires applicant to go beyond a discussion of mere concepts and suggestions. It is not sufficient to merely outline desired results that the claimed invention is expected to achieve. While subject matter that is conventional or well known in the art need not be described in detail, the specification must provide a complete description of each of the essential features recited in the claims—explaining how the invention is structured and how it functions in order to achieve the desired results. A description that merely renders the invention obvious does not satisfy the written description requirement. See MPEP 2163-2163.03.
Claim 1 recites a method of shaping/amending a gemstone comprising:
Contingently amending a crown mains angle (CM°) to within 33.70-35.00 degrees.
Contingently amending a pavilion mains angle (PM°) to within 40.60-41.00 degrees.
Contingently amending a lower halves length (LH%) to within 75-79 percent of a pavilion mains length (PM%).
Amending one or more parameters of the gemstone, selected from shallowing a lower halves angle (LH°), decreasing the LH%, shallowing the PM°, and shallowing the CM°, in an amount effective to eliminate the green table effect.
Claim 1 encompasses a method that produces any of a great number of amended gemstones, including the following amended gemstones:
CM°
PM°
PM%
LH%
LH°
1
33.70-35.00°
40.60-41.00°
any value
75-79% of any value of PM%
any value that has been shallowed in an amount effective to eliminate the green table effect
2
33.70-35.00°
40.60-41.00°
any value
any value that has been decreased in an amount effective to eliminate the green table effect
any value
3
33.70-35.00°
any value that has been shallowed in an amount effective to eliminate the green table effect
any value
75-79% of any value of PM%
any value
4
any value that has been shallowed in an amount effective to avoid the green table effect
40.60-41.00°
any value
75-79% of any value of PM%
any value
5
any value that has been shallowed in an amount effective to avoid the green table effect
any value that has been shallowed in an amount effective to eliminate the green table effect
any value
75-79% of any value of PM%
any value
6
33.70-35.00°
40.60-41.00°
any value
any value that has been decreased in an amount effective to eliminate the green table effect
any value that has been shallowed in an amount effective to eliminate the green table effect
7
any value that has been shallowed in an amount effective to avoid the green table effect
any value that has been shallowed in an amount effective to eliminate the green table effect
any value
any value that has been decreased in an amount effective to eliminate the green table effect
any value that has been shallowed in an amount effective to eliminate the green table effect
The table above is exemplary, not exhaustive. Numerous other amended gemstones are encompassed by the broad scope of claim 1 (and especially the broad scope of the final step of claim 1).
The Appendix to this Office action provides a summary of the patent specification’s disclosure of amended gemstones that are believed to avoid the green table effect. A comparison of the Appendix to the table above shows that applicant’s disclosure does not provide support for a method that produces an amended gemstone including any of the following features encompassed by claim 1:
Any value of PM%. The patent specification is silent as to the value of PM% or the range of values of PM%. This parameter is necessarily limited to some value or some range of values, i.e., it cannot be any value as allowed by claim 1.
LH% of 75-79% of any value of PM%. Since PM% is necessarily limited to some value or some range of values, LH% cannot be 75-79% of any value as allowed by claim 1.
LH° of any value that has been shallowed in an amount effective to avoid the green table effect such as:
Any value for LH° that is not set forth in Table 5 or Table B.
Any value for LH° that is not limited by the relationships between PM°, LH% and LH° set forth in Table 5.
LH% of any value that has been decreased in an amount effective to avoid the green table effect such as any value below 79% of any value of PM%, or any value below 75% of any value of PM%. In particular, there is no support for a LH% value that is decreased relative to the lower bound of the range of 75-79% required by claim 1. Further, LH% cannot be 75-79% of any value of PM% as allowed by claim 1.
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 41.00°, or any value below 40.60°. In particular, there is no support for a PM° value that is shallowed to a value below 40.5°.
CM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 35.00°, or any value below 33.70°. In particular, there is no support for a CM° value that is shallowed relative to the lower bound of the range of 33.70-35.00° required by claim 1.
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 40.8° in combination with CM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 35.00° (or 33.70°). Instead, the patent specification states that shallowing CM° has no effect on the green table when PM° is below 40.8° or 40.9°. Further, the patent specification sets forth specific maximum values for CM° based on specific values for PM°.
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value of 40.8° in combination with LH° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value equal to or below 40.8°. Instead, the patent specification states that LH° must be greater than PM°, and preferably greater by at least 0.5°.
LH° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value not set forth in Table 5 or Table B in combination with LH% of any value that has been decreased in an amount effective to avoid the green table effect such as any value below 79% (or 75%) of any value of PM%. Rather, Table 5 and Table B disclose specific maximum values for LH° based on specific values of PM° and LH%.
At least for these reasons, the broad scope of claim 1 encompasses subject matter for which the patent specification fails to provide an adequate written description. That is, the patent specification fails to set forth sufficient information to show that the inventor had possession of the full scope of the claimed invention.
Claim 2 limits the claimed method to a LH° defined by Equations (1) and (2) in the patent specification. However, claim 2 encompasses subject matter for which the supporting disclosure is insufficient for many of the same reasons explained above with respect to claim 1. For example, claim 2 still encompasses:
Any value of PM%. The patent specification is silent as to the value of PM% or the range of values of PM%. This parameter is necessarily limited to some value or some range of values, i.e., it cannot be any value as allowed by claim 1.
LH% of 75-79% of any value of PM%. Since PM% is necessarily limited to some value or some range of values, LH% cannot be 75-79% of any value as allowed by claim 1.
LH° of values that are not set forth in Table 5 or Table B and that are not limited by the relationships between PM°, LH% and LH° set forth in Table 5.
LH% of any value that has been decreased in an amount effective to avoid the green table effect such as any value below 79% of any value of PM%, or any value below 75% of any value of PM%.
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 41.00°, or any value below 40.60°.
CM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 35.00°, or any value below 33.70°.
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 40.8° in combination with CM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 35.00° (or 33.70°).
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value of 40.8° in combination with LH° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value equal to or below 40.8°.
LH° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value not set forth in Table 5 or Table B in combination with LH% of any value that has been decreased in an amount effective to avoid the green table effect such as any value below 79% (or 75%) of any value of PM%.
Claims 3-9, 12, 13, 15, 16 and 22-24 encompass subject matter for which the supporting disclosure is insufficient for the same reasons explained above with respect to claim 1.
Claims 4-6 require steps of determining the polishing/cutting needed to obtain the amended gemstone. For the same reasons explained above with respect to claim 1, the patent specification fails to set forth sufficient information to show that the inventor had possession of the full scope of the claimed invention, including the full scope of the determining steps required to produce the full scope of the amended gemstones capable of being produced by the claimed method.
Claims 17-19 limit the claimed method to specific reduced ranges for CM°, PM° and LH%. However, claims 17-19 encompasses subject matter for which the supporting disclosure is insufficient for many of the same reasons explained above with respect to claim 1. For example, claims 17-19 still encompass:
Any value of PM%. The patent specification is silent as to the value of PM% or the range of values of PM%. This parameter is necessarily limited to some value or some range of values, i.e., it cannot be any value as allowed by claim 1.
LH% of 75-79% of any value of PM%. Since PM% is necessarily limited to some value or some range of values, LH% cannot be 75-79% of any value as allowed by claim 1.
LH° of values that are not set forth in Table 5 or Table B and that are not limited by the relationships between PM°, LH% and LH° set forth in Table 5.
LH% of any value that has been decreased in an amount effective to avoid the green table effect such as any value below 79% (or 78%) of any value of PM%, or any value below 75% of any value of PM%.
With respect to claims 17 and 19, PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 41.00°, or any value below 40.60°.
With respect to claims 18 and 19, CM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 35.00°, or any value below 33.70°.
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value of 40.6-40.8° in combination with CM° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value below 35.00° (or 33.70-34.70°).
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value of 40.6-40.8° in combination with LH° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value equal to or below 40.8°.
LH° of any value that has been shallowed in an amount effective to avoid the green table effect such as any value not set forth in Table 5 or Table B in combination with LH% of any value that has been decreased in an amount effective to avoid the green table effect such as any value below 79% (or 75% or 78%) of any value of PM%.
Claim 20 limits the claimed method to specific reduced ranges for CM°, PM° and LH% and to a LH° defined by Equations (4) and (5) in the patent specification. However, claim 20 encompasses subject matter for which the supporting disclosure is insufficient for many of the same reasons explained above with respect to claim 1. For example, claim 20 still encompasses:
Any value of PM%. The patent specification is silent as to the value of PM% or the range of values of PM%. This parameter is necessarily limited to some value or some range of values, i.e., it cannot be any value as allowed by claim 1.
LH% of 75-79% of any value of PM%. Since PM% is necessarily limited to some value or some range of values, LH% cannot be 75-79% of any value as allowed by claim 1.
LH% of any value that has been decreased in an amount effective to avoid the green table effect such as any value below 79% (or 78%) of any value of PM%, or any value below 75% of any value of PM%.
PM° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value of 40.6-40.8° in combination with CM° of any value that has been shallowed in an amount effective to avoid the green table effect such as a value of 33.70-34.70°.
LH° defined by Equations (4) and (5) in combination with LH% of any value that has been decreased in an amount effective to avoid the green table effect such as any value below 78% (or 75%) of any value of PM%.
GROUND 5: Claims 1-9, 12, 13, 15-20 and 22-24 are rejected under 35 U.S.C. 112(a) because the specification does not reasonably provide enablement for the entire scope of the claimed invention. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The Federal Circuit has repeatedly held that “the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’.” Nevertheless, not everything necessary to practice the invention need be disclosed; all that is necessary is that one skilled in the art be able to practice the claimed invention, given the level of knowledge and skill in the art. With respect to the breadth of a claim, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. See MPEP 2164.08.
GROUND 4 explains how the scope of the claims exceeds the scope of the disclosure. Concerning the Wands factors (see MPEP 2164.01(a)):
(A) The breadth of the claims is addressed in GROUND 4.
(B) The nature of the invention is a new discovery for avoiding the green table effect in a precision hearts and arrows brilliant cut gemstone (diamond).
(C) The prior art considered by the examiner does not explicitly identify the problem of the green table effect that is addressed by applicant, but it does teach the desirability of increased brilliance and fire, and of maximizing the reflection of red light from a cut gemstone. Further, the prior art teaches (i) evaluating parameters of a cut gemstone (or a model thereof) including CM°, PM°, LH% and LH°, and (ii) selecting/amending one or more of these parameters to yield more optimal results such as increased brilliance and fire, and maximum reflection of red light.
(D) The skilled artisan is familiar with the parameters that affect the brilliance of cut gemstones, and with amending these parameters to produce more optimal results. However, it is unclear whether the skilled artisan was aware of the problem of the green table effect, or of known solutions to this problem.
(E) The level of predictability in the art is considered to be somewhat low since (i) the prior art does not explicitly address the problem of the green table effect and, thus, does not explicitly teach solutions to this problem (though it does teach selecting/amending parameters to yield increased brilliance and fire, and maximum reflection of red light), (ii) applicant’s own specification indicates that significant experimentation is required to determine what parameters affect the green table effect and how modifications of such parameters affect the green table effect, and (iii) the prior art teaches that evaluating and amending a gemstone’s parameters for optimal results is a very complex procedure that depends upon a complex combination of a plurality of parameters.
(F) The amount of direction provided by the inventor is summarized in the Appendix to this Office action. This disclosure is insufficient at least for the reasons detailed in GROUND 3.
(G) Applicant discloses some examples that are believed to avoid the green table effect but fails to explain how one might achieve the full scope of the claims for the reasons detailed in GROUND 4.
(H) As noted above, the prior art teaches that evaluating and amending a gemstone’s parameters for optimal results is a very complex procedure that depends upon a complex combination of a plurality of parameters. Due to the insufficiency of applicant’s disclosure, an undue amount of experimentation would be needed to make or use the full scope of the invention encompassed by the claims. For example, the skilled artisan would have to engage in extensive and complex experimentation to determine:
Which values of PM% would be acceptable, i.e., would enable the elimination of the green table effect through modification of one or more of CM°, PM°, LH% and LH°. The patent specification is silent as to the value of PM% or the range of values of PM%. Further, the term “pavilion mains length” does not appear to be a standard/conventional term in the art.1 Thus, extensive experimentation would be required to determine which values of PM% are acceptable.
Which values of LH% within the disclosed range of 75-79% of the unknown value(s) of PM% would be acceptable, i.e., would enable the elimination of the green table effect through modification of one or more of CM°, PM°, LH% and LH°. Since LH% is based on PM%, extensive experimentation would be required to determine which values of PM% are acceptable and, thus, which values of LH% (as 75-79% of PM%) would be acceptable.
Which values of LH°, that are not set forth in Table 5 or Table B and are not limited by the relationships between PM°, LH% and LH° set forth in Table 5, would be acceptable, i.e., would enable the elimination of the green table effect through modification of one or more of CM°, PM°, LH% and LH°.
Which decreased values of LH% (including those below the disclosed lower bound of the range of 75-79% of PM%) would be acceptable, i.e., would result in the elimination of the green table effect either alone or together with additional modifications of one or more of CM°, PM° and LH°.
Which shallowed values of PM° (including those below the disclosed value of 40.5°) would be acceptable, i.e., would result in the elimination of the green table effect either alone or together with additional modifications of one or more of CM°, LH% and LH°.
Which shallowed values of CM° (including those below the disclosed value of 33.7°) would be acceptable, i.e., would result in the elimination of the green table effect either alone or together with additional modifications of one or more of PM°, LH% and LH°.
Which shallowed values of LH° (including those not set forth in Table 5 or Table B) would be acceptable, i.e., would result in the elimination of the green table effect either alone or together with additional modifications of one or more of CM°, PM° and LH%.
Further, as explained in the Claim Interpretation section above, Contingent Limitations 1-3 of method claim 1 are not required by the BRI standard.
Since Contingent Limitations 1-3 are not required, the only limitation required by method claim 1 is the final step of “amending one or more parameters of the gemstone selected from shallowing a lower halves angle, decreasing the lower halves length, shallowing the pavilion mains angle, and shallowing the crown mains angle, in an amount effective to eliminate the green table effect from the amended gemstone.” Since only a single method step is required, and since this single method step only broadly requires amending one or more selected parameters, the scope of method claim 1 has essentially no limits. Rather, it covers every conceivable method step of shallowing a lower halves angle, decreasing a lower halves length, shallowing a pavilion mains angle, or shallowing a crown mains angle in an amount effective to eliminate the green table effect. In contrast, the specification is, at best, only enabling for the specific changes to the lower halves angle, the lower halves length, the pavilion mains angle, and the crown mains angle that are discussed in the specification, i.e., amending the crown mains angle to within 33.7-35.0 degrees, amending the pavilion mains angle to within 40.60-41.00 degrees, amending the lower halves length to within 75-79 percent, and amending one or more of the crown mains angle, the pavilion mains angle and the lower halves length such that the lower halves angle is less than a maximum allowable angle according to the data in Tables 2 and 5 (see col. 5, ll. 36-45). Accordingly, since the scope of method claim 1 encompasses far more than the specific gemstone amendments that are disclosed in the specification, the disclosure is not commensurate with the scope of the claim.
Thus, the specification does not reasonably provide enablement for the entire scope of the claimed invention.
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.
GROUND 6: Claims 1-9, 12, 13 and 15-24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
For the reasons detailed in GROUND 4, the scope of applicant’s claims is not commensurate with the scope of applicant’s disclosure. This makes it impossible to determine, with any degree of certainty, what subject matter is encompassed by claims 1-9, 12, 13, 15-20 and 22-24 and what subject matter is excluded thereby.
Method claim 1 defines a length as 75-79 “percent” (see ll. 7-8). However, the claim fails to provide any definition of this claimed “percent”, i.e., what reference value is used to determine this “percent”. Due to this failure to clearly define the claimed range, the scope of the claim is unclear.
Since Contingent Limitations 1-3 are not required (see explanation above), the only limitation required by method claim 1 is the final step of “amending one or more parameters of the gemstone selected from shallowing a lower halves angle, decreasing the lower halves length, shallowing the pavilion mains angle, and shallowing the crown mains angle, in an amount effective to eliminate the green table effect from the amended gemstone.” Since only a single method step is required, and since this single method step only broadly requires amending one or more selected parameters, the scope of method claim 1 has essentially no limits. Rather, it covers every conceivable method step of shallowing a lower halves angle, decreasing a lower halves length, shallowing a pavilion mains angle, or shallowing a crown mains angle in an amount effective to eliminate the green table effect. Such undue breadth renders the claim indefinite.
The final step of method claim 1 requires “shallowing a lower halves angle, decreasing the lower halves length, shallowing the pavilion mains angle, and shallowing the crown mains angle…” The terms “shallowing” and “decreasing” are relative terms, but the claim fails to define either (i) a frame of reference that the claimed parameters are shallowed or decreased relative to, or (ii) any degree to which the claimed parameters are shallowed or decreased. Without a frame of reference, the scope of the claim cannot be ascertained. And without any definition of the degree to which the claimed parameters are changed, it is impossible to determine what subject matter is encompassed by the claim, and what subject matter is excluded.
The final step of method claim 1 requires shallowing or decreasing the recited parameters “in an amount effective to eliminate the green table effect from the amended gemstone.” However, the claimed “amount effective” is relative and subject to interpretation. What one person or standard determines to be effective will differ from what another person or standard defines as effective. And standards are subject to change over time. Thus, it is impossible to determine what subject matter is encompassed by the claim, and what subject matter is excluded.
In both claim 2 and claim 3, the term “the amendment” (l. 1) lacks proper antecedent basis. Claim 1 recites multiple steps of “amending”. There is no clear definition of a singular “amendment”.
In claim 2, “such that the lower halves angle is less than…” (l. 3) is inconsistent with the equation “PM<LH°≤PM+1.50” (l. 5), i.e., “less than” differs from “≤”.
In claim 3, the term “said amended crown mains angle, pavilion mains angle, lower halves length, and lower halves angle” (ll. 3-4) lacks proper antecedent basis and is inconsistent with prior claim 1. Note that claim 1 only requires amending “one or more” of the selected parameters whereas the term in claim 3 refers to all of the recited parameters as amended. Note that “said amended crown mains angle, pavilion mains angle, lower halves length, and lower halves angle” also appears in claims 4-6.
Claim 6 requires “determining the polishing needed to obtain said amended crown mains angle, pavilion mains angle, lower halves length, and lower halves angle and polishing the gemstone according to the determined polishing”. However, claim 6 depends from claim 5, which requires “determining cuts needed to obtain said amended crown mains angle, pavilion mains angle, lower halves length, and lower halves angle and cutting the gemstone according to the determined polishing”. If the determination and cutting of claim 5 are carried out, then the gemstone is already amended; thus, the determination of claim 6 would yield no need to further amend the gemstone, and the polishing of claim 6 would not be necessary. Such a claim construction (reciting limitations that are duplicative/optional/unnecessary) renders claim 6 indefinite.
In claim 7, “prior to the cutting or polishing, simulating the amended gemstone to determine the presence or absence of the green table effect in the simulation” appears to contradict and is inconsistent with the requirements of prior claims 1-3. Claims 1 and 2 require that the gemstone is amended to eliminate the green table effect, and claim 3 requires that the gemstone is amended by cutting or polishing. However, if the claim 7 determination finds the “absence of” the green table effect, then there is no need to amend the gemstone. When a dependent claim (i.e., claim 7) negates (or renders optional) a requirement of the claims from which it depends, the dependent claim is indefinite.
In claims 8, 12 and 15, the term “the shaping” (l. 1) lacks proper antecedent basis. Further, this reference to a singular “shaping” is inconsistent with the plural steps of “amending” recited in claim 1. Note that the term “the shaping” also appears in claims 9 and 13.
In claim 8, “to amend the length or angle of the lower halves” (l. 2) is indefinite because claim 8 fails to define how this required amendment relates to the plural steps of “amending” recited in claim 1—specifically how it relates to “amending one or more parameters of…shallowing a lower halves angle, decreasing the lower halves length…” (claim 1, ll. 9-10). Does claim 8 refer to the same amendment required by claim 1, or does claim 8 require some additional amendment?
In claim 12, “to amend the angle of the pavilion main, and the angle and length of the lower halves” (ll. 2-3) is indefinite because claim 12 fails to define how this required amendment relates to the plural steps of “amending” recited in claim 1—specifically how it relates to “amending one or more parameters of…shallowing a lower halves angle, decreasing the lower halves length, shallowing the pavilion mains angle…” (claim 1). Does claim 12 refer to the same amendment(s) required by claim 1, or does claim 12 require some additional amendments?
In claim 12, the singular term “pavilion main” (l. 2) is inconsistent with the plural term “pavilion mains” in claim 1.
In claims 16 and 23, “an AGS light performance grade of ideal 0” (ll. 7-8) is indefinite because standards change over time, which would mean that the scope of the claim would change over time.
In claim 19, the “percent” (l. 2) is indefinite because the claim fails to recite any specific reference value for the recited “percent”. Without the required reference value, the scope of the claim is unclear.
In claim 20, the “percent” (l. 5) is indefinite because the claim fails to recite any specific reference value for the recited “percent”. Without the required reference value, the scope of the claim is unclear.
In claim 20, Equation “(3)” (l. 7) differs from Equation (3) in the specification (see col. 6, l. 7). If equation numbering is used in the claims, it should correspond to the specification to avoid confusion as to the scope of the claims. The examiner suggests eliminating the numbers “(3)” and “(4)” from claim 20 since they are unnecessary.
In claim 20, “the lower halves length in percent of the pavilion mains length” (l. 9) is indefinite because:
The term “the pavilion mains length” lacks proper antecedent basis.
The “pavilion mains length” is not defined in the claim. Since there is no specific reference value for the recited “percent”, the scope of the claim is unclear.
Neither claim 1 nor the patent specification identifies any value for pavilion mains length (PM%). Therefore, it is impossible to determine with any certainty what values of lower halves length (LH%) fall within the claimed range of 75-78% of PM%. Further, the prior art considered by the examiner does not use or define the term “pavilion mains length”, and this term does not appear to be a standard/conventional term in the art.2 Thus, it cannot be argued that the skilled artisan would readily understand the meets and bounds of the claimed 75-79% of PM%.
Claim 21 recites “cutting or polishing a lower halves length to within 75-79 percent of a pavilion mains length” (ll. 4-5). This subject matter is indefinite for the same reasons given above with respect to claim 20.
In claim 21, the term “the shaping” (l. 6) lacks proper antecedent basis.
In claim 22, the term “the recut diamond” (ll. 4, 5 and 6) lacks proper antecedent basis. Further, this term is inconsistent with the broader recitation “recutting or polishing” (l. 1).
Claim 22 recites “amending…a lower halves length so that…the lower halves length of the recut diamond is 75-79 percent of a pavilion mains length” (ll. 3-6). This subject matter is indefinite for the same reasons given above with respect to claim 20.
The final limitation of claim 22 requires “shallowing a lower halves angle, decreasing the lower halves length, shallowing the pavilion mains angle, or shallowing the crown mains angle.” This subject matter is indefinite for the same reasons given above with respect to claim 1.
In claim 23, the term “a recut diamond” (l. 1) is indefinite because it is unclear how this term relates to “the recut diamond” recited in claim 22 (ll. 4-6).
In claim 24, the term “the recut diamond” (ll. 4-5 and 5) lacks proper antecedent basis. Further, this term is inconsistent with the preamble recitation “cutting…from rough” (l. 1).
Claim 24 recites “cutting…a lower halves length so that…the lower halves length of the recut diamond is 75-79 percent of a pavilion mains length” (ll. 3-6). This subject matter is indefinite for the same reasons given above with respect to claim 20.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference used for each document (listed alphabetically):
“Ariel”
US Publication No. 2016/0103938 A1
“Guo”
CN Publication No. 201153610 Y (with translation)
“Kawabuchi et al.”
US Patent No. 7,225,641 B2
“Mehta”
US Publication No. 2011/0146349 A1
“Rebrik et al.”
RU Publication No. 2 264 614 C2 (with translation)
“Reinitz et al.”
US Patent No. 7,260,544 B1
Claim Rejections - 35 USC §§ 102 and 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
GROUND 7: Claim 24 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reinitz et al.
Reinitz et al. is concerned with grading the quality of cut in round brilliant cut diamonds. See col. 1, ll. 7-31. Reinitz et al. teaches that a complex combination of parameters affects the quality of cut in such a diamond, and that maximizing the quality of cut can be achieved in a number of ways (i.e., by changing different cut parameters in different ways and in different combinations). See col. 1, l. 32 to col. 2, l. 11; col. 7, l. 1 to col. 8, l. 33; col. 11, l. 62 to col. 13, l. 10. Reinitz et al. uses a computer-based system to express mathematically the quality of a diamond’s appearance, which can be used to (i) evaluate how the diamond’s appearance is affected by a large number of possible cut parameters, and (ii) determine target parameters for cutting diamonds of higher quality. See col. 3, l. 42 to col. 4, l. 63.
Reinitz et al. teaches that crown angle, pavilion angle, and lower girdle length (i.e., lower halves length ratio) are among the parameters that should be carefully evaluated to determine the quality of a diamond. See Fig. 1 (including the descriptive text in the figure); Figs. 2A-2C (presenting data showing how diamond quality varies with changes in crown angle); Figs. 3A-3C (presenting data showing how diamond quality varies with changes in pavilion angle); Fig. 24 (presenting data showing how diamond quality varies with changes in lower girdle/halves length ratio); col. 9, l. 56 to col. 10, l. 2; col. 10, l. 48 to col. 11, l. 11; col. 11, ll. 43-50; col. 11, l. 62 to col. 12, l. 45.
Reinitz et al. concludes that, when considered individually, a crown angle of 34°-35°, a pavilion angle of 40°-41°, and a lower girdle/halves length ratio of 0.80-0.85 (80%-85%) each achieve a high-quality appearance. See col. 10, l. 56 to col. 11, l. 11; col. 11, ll. 43-50. However, as noted above, Reinitz et al. teaches that overall quality depends, not on the selection of one individual parameter, but rather on a complex combination of parameters. Thus, Reinitz et al. concludes that there are many combinations of parameters that yield diamonds with a high-quality appearance. See col. 12, l. 46 to col. 13, l. 10. Note the explanation that, for some given values of two parameters, changes in a third parameter in a single direction may first worsen the quality of the diamond’s appearance and then improve it again. See col. 12, ll. 60-66.
With respect to claim 24, Reinitz et al. teaches a crown angle of 34.5°, a pavilion angle of 40.7°, and a lower girdle/halves length ratio of 75%. See col. 6, ll. 28-32.
GROUND 8: Claim 22 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Reinitz et al.
See the detailed discussion of Reinitz et al. in GROUND 7.
With respect to claim 22, Reinitz et al. teaches a crown angle of 34.5°, a pavilion angle of 40.7°, and a lower girdle/halves length ratio of 75%. See col. 6, ll. 28-32. Further, Reinitz et al. teaches shallowing of parameters, including shallow crown angles. See col. 2, ll. 22-31; col. 12, ll. 20-29.
In an alternative interpretation, Reinitz et al. is considered to fail to fully teach the claimed shallowing or decreasing of at least one parameter. Based on the detailed data and accompanying explanation provided by Reinitz et al., the skilled artisan would (i) recognize that lower girdle/halves parameters are among the parameters that should be carefully evaluated to determine the quality of a diamond, (ii) appreciate that maximizing the quality of cut can be achieved by changing different cut parameters in different ways and in different combinations, and (ii) be equipped to explore numerous complex combinations of cut parameters to determine which combinations of parameters yield diamonds with the best appearance. Thus, the claimed shallowing or decreasing of at least one parameter would have been obvious to the skilled artisan based upon the totality of the teachings of Reinitz et al.
GROUND 9: Claim 23 is rejected under 35 U.S.C. 103 as obvious over Reinitz et al.
See the detailed discussion of Reinitz et al. in GROUND 7.
Based on the detailed data and accompanying explanation provided by Reinitz et al., the skilled artisan would (i) recognize that lower girdle/halves parameters are among the parameters that should be carefully evaluated to determine the quality of a diamond, (ii) appreciate that maximizing the quality of cut can be achieved by changing different cut parameters in different ways and in different combinations, and (ii) be equipped to explore numerous complex combinations of cut parameters to determine which combinations of parameters yield diamonds with the best appearance. Accordingly, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Reinitz et al. by selecting a combination of cut parameters that fall within the claimed ranges of claim 23. Further, a modification involving a mere change is size or degree is generally recognized to be within the level of ordinary skill in the art.
In addition, a hearts and arrows cut is conventional in the art of round brilliant cut diamonds. Thus, the selection of a hearts and arrows cut is considered to be within the level of ordinary skill in the art. Further, it is within the level of ordinary skill in the art to adopt and follow recognized standards in the art, including an AGS light performance grade of ideal 0.
GROUND 10: Claims 1, 15 and 19, as best understood, are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Ariel.
Ariel explains that initial cutting of rough diamonds does not always yield optimum results. See ¶ 0003. Thus, Ariel discloses a method of amending cut diamonds that involves (i) obtaining a full listing of the parameters of a cut diamond from a database, (ii) constructing a virtual model of the cut diamond, (iii) analyzing the virtual model using criteria based on cut and symmetry to determine whether the diamond can be re-cut to yield more optimal results, (iv) calculating appropriate re-cutting to yield more optimal results, (v) constructing a model illustrating the appropriate re-cutting, and (vi) outputting the results to an end user or cutting machine that carries out the re-cutting. See Figs. 4-7; ¶¶ 0004, 0012-0013, 0021, 0026-0037.
Ariel’s method is practiced using an automated computer-based evaluation system, with optional input from a human operator. See Figs. 1-3; ¶¶ 0013-0025, 0037. The re-cutting can also be automated using a computer-based cutting machine. See ¶ 0037.
Fig. 6 shows an example of a full listing of parameters of a cut diamond to be analyzed and a virtual model constructed from this full listing of parameters. The parameters include a crown angle of 37.00°, a pavilion angle of 40.80°, a lower halves length ratio of 75%, and a lower halves angle of 42.1°.
Fig. 7 shows an example of a listing of amended parameters to be used in re-cutting the diamond and a virtual model illustrating the re-cutting. The amended parameters include a crown angle of 35.04° (reduced from the original 37.00°) and a pavilion angle of 40.52° (reduced from the original 40.80°). Thus, Ariel discloses amending selected parameters including shallowing the crown angle and the pavilion angle.
Since Contingent Limitations 1-3 are not required, the Examiner does not need to present evidence of the anticipation (or obviousness) of these method steps. See explanation above.
With respect to claim 15, Ariel discloses re-cutting the diamond from an original cut. See explanation above.
With respect to claim 19, Fig. 6 shows a lower halves length ratio of 75%, and Fig. 7 shows the same ratio of 75%.
GROUND 11: Claims 17 and 18 are rejected under 35 U.S.C. 103 as obvious over Ariel.
See GROUND 10 for a detailed discussion of Ariel.
With respect to claims 17 and 18, Fig. 7 of Ariel shows but one example of amended parameters that include a crown angle of 35.04° (reduced from the original 37.00°) and a pavilion angle of 40.52° (reduced from the original 40.80°). Ariel’s disclosure is not limited to this one specific example; rather, the skilled artisan would appreciate that numerous potential amendments are possible based on the particular parameters of an initially cut diamond, the desired design of a customer, etc. Thus, it would have been obvious, based on the teachings provided by Ariel, to amend the crown angle and pavilion angle to differing degrees compared to the specific example shown in Fig. 7. Accordingly, it would have been obvious to select an amended crown angle and an amended pavilion angle that fall within the claimed ranges. Further, a modification involving a mere change is size or degree is generally recognized to be within the level of ordinary skill in the art.
GROUND 12: Claims 8, 9, 12, 13 and 16-18 are rejected under 35 U.S.C. 103 as obvious over Ariel in view of Reinitz et al.
See GROUND 10 for a detailed discussion of Ariel.
With respect to claims 8 and 12, Ariel fails to disclose that the amended diamond includes amendments to the lower halves angle and/or the lower halves length ratio. However, Fig. 7 of Ariel shows but one example of amended parameters. Ariel’s disclosure is not limited to this one specific example; rather, the skilled artisan would appreciate that numerous potential amendments are possible based on the particular parameters of an initially cut diamond, the desired design of a customer, etc.
With respect to claims 16-18, Figs. 6-7 of Ariel disclose a girdle thickness within the claimed range. However, Ariel fails to teach a combination of cut parameters that fall within each of the claimed ranges.
See GROUND 7 for a detailed discussion of Reinitz et al.
Based on the detailed data and accompanying explanation provided by Reinitz et al., the skilled artisan would (i) recognize that lower girdle/halves parameters are among the parameters that should be carefully evaluated to determine the quality of a diamond, (ii) appreciate that maximizing the quality of cut can be achieved by changing different cut parameters in different ways and in different combinations, and (ii) be equipped to explore numerous complex combinations of cut parameters to determine which combinations of parameters yield diamonds with the best appearance. Accordingly, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Ariel by selecting combinations of amended cut parameters that differ from those shown in the specific example (Fig. 7) of Ariel—including lower halves parameters—for use in re-cutting the diamond to achieve an optimal appearance. Thus, it would have been within the level of ordinary skill in the art to (a) amend the lower halves length ratio and/or angle as required by claims 8 and 12, and (b) select a combination of cut parameters that fall within the claimed ranges of claims 16-18. Further, a modification involving a mere change is size or degree is generally recognized to be within the level of ordinary skill in the art.
With respect to claims 9 and 13, see the explanation in GROUND 6 with respect to claims 11 and 25.
With respect to claim 16, a hearts and arrows cut is conventional in the art of round brilliant cut diamonds. Thus, the selection of a hearts and arrows cut is considered to be within the level of ordinary skill in the art. Further, it is within the level of ordinary skill in the art to adopt and follow recognized standards in the art, including an AGS light performance grade of ideal 0.
Pertinent Prior Art
The following prior art is considered pertinent to applicant’s disclosure.
Guo teaches a round brilliant cut diamond with a hearts and arrows cut. See Figs. 1-4; ¶¶ 0007-0008, 0010, 0018, 0029. The cut parameters include a crown angle of 30°-35° (e.g., 35°) and a pavilion angle of 40°-41° (e.g., 40.5°). See ¶¶ 0012, 0029, 0032. The cut achieves increased brilliance and fire. See ¶¶ 0004-0007, 0010, 0013-0015, 0018, 0031. Guo also explains that changing the crown angle and the pavilion angle controls the spectral performance and can maximize the reflection of red light. See ¶ 0017.
Rebrik et al. teaches a round brilliant cut diamond with a hearts and arrows cut. See Figs. 1-2 and 4-22; ¶¶ 0068-0069. The standard cut parameters include a crown angle of 34.8°, a pavilion angle of 40.7°, and a lower halves length of 79%. See ¶¶ 0018, 0089. Slightly modified cut parameters include a crown angle of 34°, a pavilion angle of 41°, and a lower halves length of 79%. See ¶¶ 0075-0076, 0147-0148. Other modified cut parameters include a crown angle of 33°, a pavilion angle of 37°, and a lower halves length of 80%. See ¶¶ 0077-0079, 0149. Tables 2-11 show specific combinations of crown angle and pavilion angle that provide an improvement over the standard cut parameters (as indicated by a score greater than 1.00 in Tables 2-11). Rebrik et al. concludes that a crown angle of 32°-35° and a pavilion angle of 41° provides a slight improvement over the standard cut parameters. See ¶ 0157.
Mehta teaches a gemstone with a crown angle of 33.5°-35.2° and a pavilion angle of 40.6°-41.2°.
Kawabuchi et al. teaches that conventional cut parameters include a crown angle of 34.5° and a pavilion angle of 40.75°. See col. 1, ll. 42-45; col. 11, ll. 56-60. Other conventional cut parameters are discussed at col. 1, l. 58 to col. 2, l. 2. Kawabuchi et al. seeks to improve on the prior art by using a pavilion angle (p) of 37.5°-41° (e.g., 38.5°) and a crown angle (c) that satisfies the formulae:
c > –2.8667×p + 134.233 and p < ¼{(sin-1(1/n) + sin-1(1/n×sin c)) × 180/π + 180–2c}
This relationship of crown angle (c) to pavilion angle (p) is illustrated in Fig. 22. As shown in Fig. 21, the best results are achieved at a crown angle of approximately 23.5° when the pavilion angle is 40°, and at a crown angle of approximately 21° when the pavilion angle is 41°.
Specification
The specification is objected to because the description at col. 7, lines 41-45 is not consistent with and appears to contradict the equation for CMmax in Table 2.3 The description at col. 7, ll. 41-45 defines the maximum value (CMmax) for the crown mains angle (CM) as follows:
CM ≤ 34.3° for a pavilion mains angle (PM) of 41.0°.
CM ≤ 34.8° for a PM of 40.8°.
However, substituting a PM of 41.0° into the equation for CMmax in Table 2 yields a result for CMmax of 34.93, which differs from the maximum value of 34.3 identified at col. 7, lines 41-45. Further, substituting a PM of 40.8° into the equation for CMmax in Table 2 yields a result for CMmax of 35.00, which differs from the maximum value of 34.8 identified at col. 7, lines 41-45. This inconsistency creates confusion as to the scope of the disclosure.
The specification is objected to because the description at col. 7, lines 41-45 is inconsistent with and appears to contradict the description at col. 12, ll. 61-67. As noted above, the description at col. 7, lines 41-45 states that the crown mains angle is less than or equal to 34.8° for a pavilion mains angle of 40.8°. However, the description at col. 12, ll. 61-67 states that:
Within the proportion parameters of applicant’s invention (crown mains angle less than 35.00°), and when the pavilion mains angle is less than 40.9°, reducing the crown mains angle has no effect, i.e., the green table effect is controlled exclusively by the pavilion mains angle, lower halves angle and lower halves length.
Thus, col. 7, ll. 41-45 states that the crown mains angle should be at or below 34.8° for a pavilion mains angle of 40.8°, but col. 12, ll. 61-67 states that reducing the crown mains angle below 35.00° has no effect below a pavilion mains angle of 40.9°. This inconsistency creates confusion as to the scope of the disclosure.
The specification is objected to because the description at col. 7, lines 48-51 is inconsistent with and appears to contradict the description at col. 12, ll. 61-67. The description at col. 7, ll. 48-51 states that:
At or below a pavilion mains angle of about 40.8°, the crown mains angle does not appear to have any effect on the green table effect within the parameters given in Table 2.
The description at col. 12, ll. 61-67 is cited above. Thus, col. 7, ll. 48-51 states that the crown mains angle has no effect at or below a pavilion mains angle of about 40.8°, but col. 12, ll. 61-67 states that the crown mains angle has no effect below a pavilion mains angle of 40.9°. This inconsistency creates confusion as to the scope of the disclosure.
Drawings
The drawings are objected to because:
Figs. 1 and 14 should be designated by a legend such as “PRIOR ART” or “COMPARATIVE EXAMPLE” because only that which is old is illustrated. See MPEP 608.02(g).
Fig. 1 fails to comply with 37 CFR 1.84(p)(5) because it includes reference number “18”, which is not mentioned in the specification.
In each of Figs. 20, 21 and 23, the lead line for reference number “14A” is not properly directed to the corresponding green regions.
The drawing objections will not be held in abeyance.
Response to Arguments
Applicant’s arguments filed on April 30, 2026 have been fully considered. Some of applicant’s arguments are not germane to the new/modified rejections and objections set forth in this Office action. Others of applicant’s arguments are not found to be persuasive for the specific reasons explained in respective rejections and objections set forth above.
Final Action
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).
Response Period
A shortened statutory period for reply is set to expire THREE MONTHS from the mailing date of this action.
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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.
Amendments in Reissue Applications
Applicant is notified that any subsequent amendment to the specification, claims or drawings must comply with 37 CFR 1.173(b)-(g).
Failure to fully comply with 37 CFR 1.173(b)-(g) will generally result in a notification to applicant that an amendment before final rejection is not completely responsive. Such an amendment after final rejection will not be entered.
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Disclosure Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the patent for which reissue is sought is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP 1404, 1442.01 and 1442.04.
Filing and Contact Information
All correspondence relating to this reissue application should be directed:
By Patent Center4: Registered users may submit via the Patent Center at: https://patentcenter.uspto.gov/
By Mail5 to: Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-8300
By hand: Customer Service Window
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
APPENDIX – Summary of Disclosure of Amended Gemstones
Examples at col. 7, ll. 30-60
table width about 53.5-58.0%
crown stars length about 48-55%
girdle thickness about 0.1-5.4%
pavilion mains height about 43.76-44.23%
crown mains height about 14.83-16.93%
crown mains angle 33.7-34.8°, or 33.7-34.7°, or 33.7-34.6°, or 33.7-34.5°, or 33.7-34.4°, or 33.7-34.3°
crown mains angle ≤ 34.3° for pavilion mains angle 41.0°
crown mains angle ≤ 34.8° for pavilion mains angle 40.8°
pavilion mains angle 40.6-40.8°, or 41.0°
lower halves length 75-78%
lower halves angle according to Table 2 and/or Table 5
Examples in Table 2
table width 53.5-58.0%
crown stars length 48-55%
pavilion mains height 43.76-44.23%
crown mains height 14.83-16.93%
crown mains angle 33.70-35.00°, or 33.70-34.80°, or 33.70-34.30°
CMmax = 35.00 - 0.35*(PM - 40.8)
pavilion mains angle 40.5-40.9°, or 40.5-40.8°, or 40.6-40.8°
lower halves length 75-78%
lower halves angle according to Equations (3), (4) and/or (5)
Examples at col. 7, l. 61 to col. 9, l. 8
table width about 53.5-58.0%
crown stars length about 48-55%
girdle thickness about 0.1-5.4%
pavilion mains height about 43.76-44.23%
crown mains height about 14.83-16.93%
crown mains angle about 33.7-35°, or about 33.7-34.7°
crown mains angle about 33.7-35.00° for pavilion mains angle 40.6-41.00° and lower halves length about 74.0-79.0%
crown mains angle about 33.7-34.70° for pavilion mains angle 40.6-40.8° and lower halves length about 74.0-78.0%
lower halves angle according to Equations (1), (2A), (2B), (3), (4), (5), (5A) and/or (6)
Example at col. 9, ll. 9-55
table width about 53.5-58.0%
crown stars length about 48-55%
girdle thickness about 0.5-3.9%
pavilion mains height about 43.76-44.23%
crown mains height about 14.83-16.93%
crown mains angle about 33.7-34.7°
pavilion mains angle about 40.6-40.8°
lower halves length about 74.0-78.0%
lower halves angle according to Equations (1), (2A), (2B), (3), (4), (5), (5A) and/or (6)
Example 1 (Table 1) – Virtual Diamond 1B
table width 58% (unamended)
star width 50.00 % (unamended)
crown mains angle 34.50° (unamended)
lower halves length 77% (unamended)
pavilion mains angle 40.95° (reduced from 41.00°)
lower halves angle 42.14° (reduced from 42.19°)
Example 2 (Table 3) – Virtual Diamonds 2A and 2B
table width 58%
star width 50.00 %
crown mains angle 34.50°
pavilion mains angle 40.95°
lower halves length 75%, 76%, 77% (but not 78%, 79%, 80%) with lower halves angle 42.14°, or
lower halves length 77% with lower halves angle 42.04°, 42.07°, 42.11°, 42.14° (but not 42.18°, 42.21°)
Example 3 (Table 5) – maximum lower halves angle (no indexing)
for pavilion mains angle 40.5° and lower halves length 75% → max. lower halves angle 41.76
for pavilion mains angle 40.5° and lower halves length 76% → max. lower halves angle 41.72
for pavilion mains angle 40.5° and lower halves length 77% → max. lower halves angle 41.69
for pavilion mains angle 40.5° and lower halves length 78% → max. lower halves angle 41.65
for pavilion mains angle 40.5° and lower halves length 79% → max. lower halves angle 41.62
for pavilion mains angle 40.6° and lower halves length 75% → max. lower halves angle 41.86
for pavilion mains angle 40.6° and lower halves length 76% → max. lower halves angle 41.83
for pavilion mains angle 40.6° and lower halves length 77% → max. lower halves angle 41.79
for pavilion mains angle 40.6° and lower halves length 78% → max. lower halves angle 41.75
for pavilion mains angle 40.7° and lower halves length 75% → max. lower halves angle 41.96
for pavilion mains angle 40.7° and lower halves length 76% → max. lower halves angle 41.93
for pavilion mains angle 40.7° and lower halves length 77% → max. lower halves angle 41.89
for pavilion mains angle 40.7° and lower halves length 78% → max. lower halves angle 41.85
for pavilion mains angle 40.8° and lower halves length 75% → max. lower halves angle 42.06
for pavilion mains angle 40.8° and lower halves length 76% → max. lower halves angle 42.03
for pavilion mains angle 40.8° and lower halves length 77% → max. lower halves angle 41.99
for pavilion mains angle 40.8° and lower halves length 78% → max. lower halves angle 41.96
for pavilion mains angle 40.9° and lower halves length 75% → max. lower halves angle 42.16
for pavilion mains angle 40.9° and lower halves length 76% → max. lower halves angle 42.13
for pavilion mains angle 40.9° and lower halves length 77% → max. lower halves angle 42.09
for pavilion mains angle 40.9° and lower halves length 78% → max. lower halves angle 42.06
for pavilion mains angle 41.0° and lower halves length 75% → max. lower halves angle 42.26
for pavilion mains angle 41.0° and lower halves length 76% → max. lower halves angle 42.23
for pavilion mains angle 41.0° and lower halves length 77% → max. lower halves angle 42.19
for pavilion mains angle 41.0° and lower halves length 78% → max. lower halves angle 42.16
for pavilion mains angle 41.0° and lower halves length 79% → max. lower halves angle 42.12
Example 5 (Table B) – Virtual Diamond 5
table width 56% (unamended)
star width 48% (unamended)
star angle 21.68° (unamended)
upper halves angle 41.60° (unamended)
crown mains angle 34.9° (unamended)
pavilion mains angle 40.9° (unamended)
lower halves height (length?) 77% (unamended)
lower halves angle 40.81°-41.11° (reduced from 42.09°)
Example 9 – decreasing crown mains angle to eliminate green table effect
decrease crown mains angle to 34.30° for pavilion mains angle 41.00° (incl. for lower halves length 75%, 76%)
decrease crown mains angle to <34.65° for pavilion mains angle 40.95° (for lower halves length 75%)
decrease crown mains angle to <35.00° for pavilion mains angle 40.9°
Example 10 – maximum lower halves angle with indexing
max. lower halves values about 0.12° higher with indexing
Additional disclosure:
At or below a pavilion mains angle of about 40.8°, the crown mains angle does not appear to have any effect on the green table effect within the parameters given in Table 2 (col. 7, ll. 48-51).
Within the proportion parameters of applicant’s invention (crown mains angle less than 35.00°), and when the pavilion mains angle is less than 40.9°, reducing the crown mains angle has no effect, i.e., the green table effect is controlled exclusively by the pavilion mains angle, lower halves angle and lower halves length (col. 12, ll. 61-67).
The lower halves angle must be greater than the pavilion mains angle (per Equation (1)), and preferably the lower halves angle is greater than the pavilion mains angle by at least 0.5°, or at least 0.8°, or at least 1.0° (col. 14, ll. 3-6).
1 See “Diamond Cut: Anatomy of a Round Brilliant”, Gemological Institute of America (GIA) Education, January 14, 2016, retrieved at <https://www.gia.edu/diamond-cut/diamond-cut-anatomy-round-brilliant>. This article identifies standard diamond cut parameters but does not mention or define “pavilion mains length”.
2 See “Diamond Cut: Anatomy of a Round Brilliant”, Gemological Institute of America (GIA) Education, January 14, 2016, retrieved at <https://www.gia.edu/diamond-cut/diamond-cut-anatomy-round-brilliant>. This article identifies standard diamond cut parameters but does not mention or define “pavilion mains length”.
3 The equation for CMmax is labeled as Equation (6) in the version of Table 2 appearing in the patent specification. It has been relabeled as Equation (7) by applicant’s amendments to the specification.
4 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).
5 Mail Stop REISSUE should only be used for the initial filing of reissue applications, and should not be used for any subsequently filed correspondence in reissue applications. See MPEP 1410.
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