DETAILED ACTION
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 1-3, 5-8, 12-13, and 16-17 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, the newly added limitation “the top wall (102a) infused with the pair of side walls (102b, 102c)” is not found in the original disclosure. The limitation “infused” has not been disclosed prior to this amendment. Therefore, the limitation is considered to be new subject matter not previously disclosed.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5-8, 12-13, and 16-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1 and all the claims dependent therefrom, in lines 4, 7, 12, 16, and 23, “the notched portion” lacks antecedence. It is suggested that the term be changed to “the single notched portion” to correct the problems. In line 17, “the horizontally extending flaps” lacks antecedence. It is suggested that the term be changed to “the pair of horizontally extending flaps” to correct the problem. A few minor changes are also needed in lines 18 and 19, “is” should be changed to “are”.
Regarding claim 3, line 1, “the notched portion” lacks antecedence. It is suggested that the term be changed to “the single notched portion” to correct the problem.
Regarding claim 5, line 2, “the notched portion” lacks antecedence. It is suggested that the term be changed to “the single notched portion” to correct the problem.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 5-8, 12-13, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Friedman, US D978708 S in view of Klecka, US 2010/0300146 A1.
Regarding claims 1-3, Friedman discloses the identically shaped finger including all the limitations in the claim except for the material used for forming the two parts of the finger ring, i.e. a metallic ornament and a band portion formed from a silicon material.
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Klecka discloses a silicone band and a metallic ornament. Klecka discloses a circular silicone band portion (5) adapted to encircle a human finger ([0036]):
“[0036] The elastic band, as described herein (e.g. as shown in FIG. 5), can be a bracelet, head band, belt, anklet or ring. In some embodiments the elastic band is an elastic bracelet. The term elastic, as used herein, refers to the properties of the material used to construct the elastic band. The term elastic refers to a material that can bend or stretch and then return substantially to its pre-stretched shape and/or size. In some embodiments an elastic band can be stretched over the hand and then return substantially to a size that fits comfortably on a wearer's wrist. An elastic band can be partially or wholly constructed of an elastic material. In some embodiment an elastic band in constructed entirely of an elastic material. In some embodiments an elastic band is constructed partially of an elastic material. Wherein an elastic band is constructed partially of an elastic material, the decorative item as described herein can be designed to attach reversibly to the elastic portion of the band. In some embodiments an elastic band is a bracelet constructed of an elastic material. The elastic band can be constructed of any suitable elastic material. Non-limiting examples of elastic materials include rubber, latex, silicone, neoprene, polyurethane, nitrile rubber, polyvinylchloride, styrenic elastomers, vinyl, polypropylene, polyester and thermoplastic elastomers. In some embodiments the elastic material is rubber. In some embodiments the elastic material is silicone. In some embodiments the elastic material is an elastic fiber or fabric. Non-limiting examples of elastic fibers and fabric include spandex, nylon, polyester, silk, cotton, wool, rayon and ramie. In some embodiments the elastic material is an organic material (e.g. leather or snake skin). In some embodiments the elastic band is a bracelet constructed of rubber.”
Klecka discloses the decorative items can be metallic components ([0030])
“[0030] The decorative item described herein can be constructed of any suitable material or combination of materials. The charm can be constructed of metal (e.g. a base metal, a ferrous metal, a non-ferrous metal, a precious metal or a noble metal). In some embodiments the decorative item comprises a metal (e.g. a base metal, a ferrous metal, a non-ferrous metal, a precious metal or a noble metal). In some embodiments the decorative item consists essentially of a metal. In some embodiment the decorative item comprises a precious metal (e.g. gold, silver, aluminum, platinum, copper, brass or titanium).”
Klecka discloses the metallic components having a top wall, side walls and a pair of horizontally extending flaps with an opening between the flaps for receiving the elastic band.
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Klecka also discloses a top wall (figure 1) of the metallic ornament is smooth and curved in a similar fashion as the pair of horizontally extending flaps (figure 3) are curved to securely hold the circular band portion tightly therebetween ([0006], [0018], figures 1-3).
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Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to make Friedman’s band portion from silicone material and the ornament from a metal to provide a flexible, inexpensive and easier to produce finger ring with a decorative aesthetically pleasing metal ornament.
Regarding claims 5 and 8, Friedman discloses an opening between the pair of horizontally extending flaps, which facilitates inserting the notched portion into the retaining space.
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Regarding claim 6, Friedman discloses a circular band having a circular interior space shaped and sized to fit around a person’s finger (title of invention, “Finger Ring”.
Regarding claim 7, Friedman discloses the ring having an interior and exterior surface with a smooth finish.
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Regarding claims 12, Friedman discloses the ornament being a unitary product and Klecka discloses the metallic ornament being a unitary product.
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Regarding claim 13, Friedman discloses that the metallic ornament is a single monolithic piece (figure 8). The claim requires that the metallic ornament is configurable in two pieces, i.e., as understood from the specification, it can be made by connecting the side walls to the top wall from separate pieces. It is an old and well-known manufacturing technique to make something that is integral from separate pieces in order to use different combinations of materials to improve the value, aesthetics and design of the piece. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to make Friedman’s integral ornament from multiple parts to assemble various materials to form a more valuble, pleasing design of the metallic ornament.
Regarding claims 16 and 17, Friedman discloses placing a design on the ornament. Klecka discloses places different ornamental designs or pieces on the top portion of the metallic ornament ([0012, 0013]). Klecka also discloses that the top surface of the metallic component can be decorated with gemstones, animal skin, cut-outs, or engraving, embossing, etching or brushing an image, symbol shape or text ([0012, 0013]). Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to customize Friedman’s top design element, with different types of ornaments, to meet changing fashion trends in the finger ring art, i.e., to keep the finger ring current and marketable to the consumer.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 JACK W LAVINDER whose telephone number is (571)272-7119. The examiner can normally be reached Mon-Friday 9-4pm (EST).
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JACK W. LAVINDER
Primary Patent Examiner
Art Unit 3677
/JACK W LAVINDER/Primary Examiner, Art Unit 3677
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