DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 4/3/2026 have been fully considered but they are not persuasive.
Examiner notes that the specification amendment and the claims introduce new matter. Please see rejections below.
Examiner notes that “basket” as shown by applicant utilizes prongs, which extend over the girdle to engage the pavilion and crown. The prongs shown by applicant’s “basket” of the arguments do not engage the groove 70 claimed by applicant in the manner shown by the barrel. The structure indicated by applicant as “basket” in the arguments is NOT synonymous to the “basket type” shown in originally disclosed figure 7. For this reason, the intended combination of basket type collet is not persuasive and is included in a description 112a rejection.
The inclusion of 601 and 602 and 600 into the figures and drawings are not at issue. Calling 602 a “shield” is false; 601 and 602 have identical shapes. Applicant intends to include facet 60 into facet 602, which is improper, since it is separated by groove 70, and therefore is a separate facet. In fact, applicant has named facet 60 “circumferentially spaced apart” facets, which is distinct from “shield” 602.
The inclusion of “converging edge of a series of adjacent lower main facets intersecting the groove” is new matter, as “lower main facets” were not originally disclosed and applicant has not clearly identified which pavilion facet is considered the “lower main facets”. Applicant talks about “steeper” angles but does not originally disclose as such. Applicant does not originally disclose any angle of the “lower main facets” since applicant did not originally discuss “lower main facets” and cannot now add an angle for facets which did not originally exist in applicant’s discussion.
Specification
The substitute specification filed 4/3/2026 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: applicant includes new matter (such as the comparison of angles of the “lower main facets” which were not previously mentioned), and the continued inclusion of language regarding the “uncut gemstone” which was never disclosed by applicant (“cuts through the tier of facets”….”creating”….”once cut with the groove create CSP facet”), and the improper nomenclature of “shield 602” facet which is not shaped as a shield.
Drawings
The drawings were received on 4/3/2026. These drawings are entered.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “lower main facet” (there are three total facets under groove 70, applicant has only labeled one of them. Which of the other two is the “lower main facet”?), the “upper converging edge” of these “adjacent lower main facets”, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-8, 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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 inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1:
A: “steeper angle than the angle of the lower main facets”. Examiner notes that applicant has shown three types of facets in the pavilion under the groove 70. Applicant has only labeled and assigned a name to ONLY the “CSP facets 60”. Applicant has not labeled or originally disclosed which, if any of the other two facets of the pavilion under groove 70, is the “lower main facet”. Because applicant did not originally disclose a “lower main facet” or ANY angle of the lower main facet, and in fact, applicant did not originally disclose ANY angle of the CSP facet 60, applicant cannot now compare the angles with support from the original specification. In fact, the only angles mentioned by applicant’s original specification is that of the angle of the groove 70 in figure 2. Therefore, the comparison of any other angle is considered new matter.
B: CSP facets “adjacent to… an upper converging edge of a series of adjacent lower main facets intersecting the groove”. Since applicant did not originally disclose which facet is a “lower main facet”, it is unclear what the “upper converging edge” is. Examiner notes that CSP facets 60 ONLY abut the groove 70 and the pentagonal pavilion facet which examiner assumes is the “lower main facet”. Examiner assumes that “upper converging edge” is just the abutting edges of the pavilion shaped main pavilion facet.
C: the structure of “basket type collet” is now less clear than the disclosure. Applicant’s original disclosure, as mentioned in the arguments 4/3/2026 (last paragraph of page 9), was shown in figure 7, which is a barrel type collet with holes in the rounded sides. Applicant’s arguments of 4/3/2026 include the structure of a prong setting and labels it as a “basket” on page 10 of the arguments of 4/3/2026. The prong setting as indicated on page 10 of applicant’s arguments do NOT engage the 70; the prongs of a typical setting as shown by applicant’s page 10 of the arguments abut a small surface of the pavilion and a small surface of the crown, and do not engage a groove. Should applicant remove the “type” and just claim either “barrel” or “collet”, this would be clarifying in the claim language.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 8, applicant claims a “jewelry finding” that is identical in scope to the “piece of jewelry” of claim 16. The record is not clear about the difference in scope between “jewelry finding” and “piece of jewelry”. Examiner contends that these are identical in scope, and that claims 8 and 16 are double patenting.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-8, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over 2014/0075990 Botha, optionally in view of 2015/0059405 Qiantai.
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Regarding claim 1, Botha discloses a gemstone (figure 7a) comprising:
a girdle 706 dividing the gemstone into a pavilion and a crown 705 having a table surface 704;
a continuous groove 702 to facilitate mounting to a collet (figures 11-13) having a mounting rim (figures 7b and 7c), the continuous groove 702 cut into the pavilion (as shown in figure 7a below);
a tier of facets (between gridle and groove 702) cut into the pavilion at a position immediately below the girdle (the facets between girdle and groove meet this location);
and a series of facets (annotated as “smaller facets 60”) adjacent to the groove 70 and an upper converging edge of a series of adjacent lower main facets intersecting the groove 702 (between where lower main facet touches the groove 702);
wherein the facets (annotated as part 60) have an angle.
Botha’s “facets 60” are considered “circumferentially spaced apart” in that they only abut at a point, and therefore, there is space between the facet edges of the “facets 60”. They are circumferentially arranged, and therefore meet the term “circumferentially”. Should applicant argue that this is not “spaced apart”, the following rejection would apply:
Qiantai discloses a pavilion having lower main facets 2 and 8, as well as circumferentially spaced apart facets 10 and 9, which are adjacent to the girdle and the “converging edge of a series of adjacent lower main facets intersecting the” girdle.
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the size of Botha’s “facet 60” to be small and “circumferentially spaced apart” in the manner old and well known by Qiantai, as this is an old and well known arrangement of pavilions. Since the pavilion of the diamond of Botha will not be seen once in a collet, this change of shape only affects the light reflection of the gemstone. Qiantai discloses this cut creates “a colourful and bright diamond” [0029]. A change in size is generally recognized as being within the level or ordinary skill in the art. See MPEP 2144.04 (IV)(a). Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art, and is described how the structure disclosed performs the claimed functions in the parentheses; therefore, all italicized language is considered and shown in the prior art. Further, examiner notes that the disclosed structure is capable of performing the intended use claimed by applicant.
Regarding claim 2, Botha or Botha as modified discloses the gemstones of claim 1, wherein the gemstone is a diamond [0016].
Regarding claim 3, Botha or Botha as modified discloses the gemstone of claim 1, wherein the continuous groove 702 has a width (on surface 708), which is a percentage of the girdle diameter, and depth (surface 710) which is a percentage of the girdle diameter. Botha does not disclose the particular percentages of the girdle diameter.
Botha discloses the groove is cut to “reflect as much light as possible” [0053], and does receive the collet rim 202. It would have been obvious to one of ordinary skill in the art before the effective filing date to size the surfaces of the groove 702 of Botha to be sized for the mounting rim 202. A change in size is generally recognized as being within the level or ordinary skill in the art. See MPEP 2144.04 (IV)(a).
Regarding claim 4, Botha or Botha as modified discloses the gemstone of claim 1, wherein the continuous groove 702 has a V shape, figure 7c.
Regarding claim 5, Botha or Botha as modified discloses the gemstones of claim 1, mounted in a mounting rim 202 (figure 4).
Regarding claim 6, Botha or Botha as modified discloses the use of a collet figure 13, but also discloses the use of a “basket type” or basket in figure 4. Applicant’s figures do not disclose a particular structure of “collet” other than the mounting rim, and therefore, the structures taught by figures 13 and 4 of Botha are considered to meet all of the “collet”, “basket type collet”, and “basket”, terms claimed by applicant.
Regarding claim 7, Botha or Botha as modified discloses the gemstones of claim 5, a ring comprising the gemstone mounted in the mounting rim (Figure 1e).
Regarding claims 8 and 16, Botha or Botha as modified discloses the jewelry finding (unknown term and scope, please see 112b rejection above) which is a ring (figure 13) comprising at least one gemstone mounted in the mounting rim of claim 5.
Conclusion
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).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571)272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY M MORGAN/Primary Examiner, Art Unit 3677
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