DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of species A, figures 1-6 in the reply filed on 6/12/2026 is acknowledged.
Drawings
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 “mesh” and the measurement of its “size” of claims 5-6 are not shown in the elected embodiment; the “elastic piece comprises a plurality of portions” of claim 9 must be shown in the elected embodiment (figures 1-6); the “return spring” of claim 10 must be shown in the elected embodiment (figures 1-6), the “bushing” of claim 16 must be shown in the elected embodiment, 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 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 3-6, 8-11, 13, 16-17, 22 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 3, applicant depends claim 3 from claim 1, which does not previously include “a network of articulated elements”. Therefore, the record is not clear if claim 3 newly claims “a network of articulated elements”, or if claim 3 depends from claim 2. Examiner assumes claim 3 is supposed to depend from claim 2.
Regarding claims 3-4, these claims are indistinguishable in scope, since claim 3 is assumed to depend from claim 2. Further, the phrase “arranged to limit an amplitude of displacement of the deformable casing” is not definite. The record is not clear what “arrangement” is intended to be claimed. Examiner notes that claims 3 and 4 are identical to language in [0017] and [0018] but does not further explain what the “arrangement” is that provides the function of “limit an amplitude of displacement”. Please see the art rejection below as to how the prior art is “arranged to” perform this function.
Regarding claims 5-6, applicant claims “plurality of mesh sizes between the articulated elements”. The applicant does not disclose nor claim how “mesh” is different than the “deformable casing”, nor how the mesh can be “sized”, let alone a size “between the articulated elements”. The record is not clear what a “mesh” is in this disclosure of the elected embodiment of figures 1-6, what the “size” of the “mesh” is in this embodiment, nor if this phrase is meant to positively claim “interlacings” 20e or “elastic piece” 4. Further, claim 6 requiring different “mesh sizes” based on the location of the deformable casing is not further limiting based on the indefiniteness of “mesh size”. Applicant does not indicate any dimension of measurement in any figure.
Regarding claim 8, applicant claims a function of “to allow an elastic return of the casing”. Examiner notes that the casing/”network of articulated elements” is not compressible or elastic of any sort, and therefore the record is not clear how an “elastic piece” can provide that function. Examiner notes that the network of articulated pieces is flexible, but it is not elastic; the network of articulated pieces can only flex based on the spacing of the interlacings 20e, in a similar manner to chain mail. Examiner notes that spring 4b in figure can elastically return the first and second pieces 1 and 2 back together, which is not the same as “allow an elastic return of the casing”. Further, the record is not clear what is being “returned” based on the claim language.
Regarding claim 9, applicant claims “elastic piece comprises a plurality of portions”. Examiner notes that this phrase requires each individual elastic piece 4 to have portions of different elasticity. Examiner notes that applicant’s disclosure discloses multiple elastic pieces. The record is not clear which (portions of each elastic piece, or multiple elastic pieces) are intended to be claimed.
Regarding claim 10, “return spring” is not included in the drawings. Applicant discloses the term “return spring” only once, in [0029], and does not include a part number or other descriptor of this term. If applicant intends to claim elastic piece 4b, part 4b is disclosed as “base” for elastic piece 4 [0057]. Further, the record is not clear what is being “returned” based on the claim language.
Regarding claim 13, applicant claims broad “connection” that is “preferably chosen among”. This does not limit the connection to, or positively include, any of the listed options. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 16, applicant claims “the bushing” but does not previously disclose or claim “a bushing”. Examiner assumes “an outer portion of the first and second pieces”, based on [0034].
Regarding claim 17, applicant claims “toric shape, preferably of asymmetrical toric shape”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation “toric shape”, and the claim also recites “preferably of asymmetrical toric shape” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Further, the definition of “toric” is not common.
Regarding claim 22, applicant claims “network of articulated, preferably interlaced, elements”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 22 recites the broad recitation “network of articulated elements”, and the claim also recites “preferably interlaced” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 11, 13, 16-18, 20, 22 is/are rejected under 35 U.S.C. 102a1 as being anticipated by KP20150004234 (KR).
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Regarding claim 18, KR discloses a jewelry item (ring, title) comprising:- at least one first piece 110, with a first side and a second side (annotated in figure 3) opposite to the first side, and- a deformable casing (three articulated elements 300, annotated in figure 3) secured to the first piece 110 (via second piece 210) and connecting the first side to the second side (between the sides in the manner shown in figure 3 of KR), so as to cover the first piece (in the manner shown in figure 3).
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 20, KR discloses the jewelry item according to claim 18, further comprising:- at least one second piece 210 movably mounted (slidable) on the first piece.
Regarding claim 22, KR discloses the jewelry item according to claim 18, wherein the deformable casing comprises a network of articulated elements 300 (as annotated).
Regarding claim 1, KR discloses a jewelry item (ring) comprising:- at least one first piece 110,- at least one second piece 210 movably mounted (slidable) on the first piece 110, and- a deformable casing (three articulated elements) secured to the first piece and to the second piece (as shown in figures 2-3).
Regarding claim 2, KR discloses the jewelry item according to claim 1, wherein the deformable casing is a network of articulated elements 300.
Regarding claims 3 and 4, KR discloses the jewelry item according to claims 1 and 2, wherein the articulated elements are arranged to limit an amplitude of displacement (the telescopic movement between parts 110 and 210 is limited in the narrowest direction by the width and/or number of the articulated elements 300).
Regarding claim 11, KR discloses the jewelry item according to claim 1, wherein the movement of the second piece is telescopic (figure 2).
Regarding claim 13, KR discloses the jewelry item according to claim 1, further comprising at least one connection between the first piece and the second piece, and wherein the connection is a dovetail (as shown in figure 3).
Regarding claim 16, KR discloses the jewelry item according to claim 1, wherein the deformable casing (three articulated elements 300) is arranged to cover an outer portion of the bushing (covers the portion on the exterior as shown in figure 1).
Regarding claim 17, KR discloses the jewelry item according to claim 1, wherein the deformable casing is of toric shape (narrow cylinders are considered “like a toroid”). Should applicant disagree, please see 103 rejection of claim 17 below.
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) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR.
Regarding claim 17, KR discloses the jewelry item of claim 1, wherein the deformable casing has a cylindrical shape, but not “toric” shape.
It would have been obvious to one of ordinary skill in the art before the effective filing date to change the shape of the outer surface of the articulated elements 300 of KR to be “toric”, as A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b). Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I). KR discloses “decorative ring substitution”.
Claim(s) 5, 6, is/are rejected under 35 U.S.C. 103 as being unpatentable over KR as applied to claim 1 above, and further in view of 2016/0316864 Cluseau.
Regarding claim 5, please see the 112b rejection above. KR discloses the jewelry item according to claim 2, wherein the network of articulated elements (300 in KR) does not have “mesh sizes” and does not seem to create a “mesh” as discussed in the 112b rejection above. KR discloses displaying multiple stones in sets of three in the width direction of the ring, shown in figure 3. KR discloses “decorative ring substitution”.
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Cluseau discloses a flexible/deformable casing (figures 1-2) which is a network of articulated elements 101 (figure 17) which are connected to each other by frames 11, also called “mesh links” [0010] which are “configured to create longitudinal play in that opening” [0010] and [0016] between adjacent articulated elements. Therefore, as best understood, examiner contends Cluseau discloses a mesh having multiple stones with a three stone width, which creates a plurality of mesh sizes between the articulated elements/stone settings.
It would have been obvious to one of ordinary skill in the art before the effective filing date to exchange the three bands 300 with stones 310, which are in a width of three stones as shown in figure 3 of KR, for a different type of setting of the three width stones such as those taught in Cluseau. Examiner contends that replacing one type of stone setting (bands 300 of KR) for a different aesthetic of stone setting (mesh of individual pieces of Cluseau) in the same width, for location on the same parts of KR, merely changes the aesthetic of the stones (by changing the setting) and/or changes the number of stones shown on the ring of KR (by having stones in each setting of the mesh taught by Cluseau). Examiner contends that exchanging the ring setting of KR for the mesh setting of Cluseau is an aesthetic choice, as both result in stones with three stones in breadth, between ridge 120 and 220 of KR. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”. Examiner notes that this is done for the purpose of aesthetics. See MPEP 2144.04 (I).
Regarding claim 6, please see 112b rejection above. KR in view of Cluseau discloses the jewelry item according to claim 5, wherein the mesh size (unknown term, but assumed to be present in the “mesh” of Cluseau) in the vicinity of the first piece or of the second piece is different from the mesh size at a distance from the first piece or from the second piece (examiner notes that the setting/mesh of Cluseau is “particularly supple and flexible and thus to deform” [0059], therefore, Cluseau is capable of having different “mesh sizes”).
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR as applied to claim 1 above, and further in view of Cluseau, in further view of 2020/0367615 Ng.
Regarding claim 8, KR discloses the jewelry item according to claim 1, which uses three rings as “decorative ring” which is known to be substituted (“decorative ring substitution”) for other decorative devices. KR discloses the use of multiple stones in a width of three stones, using three bands 300. KR does not utilize a decorative ring that utilizes “elastic pieces”.
Cluseau discloses a body encircling device (bracelet [0001]) which discloses a mesh network of articulated elements [0010] showing three stones in width, further comprising an piece 11 which is arranged at least partially on or under the deformable casing (under the top surface, and on pins 10), so as to allow a return of the casing (as discussed in [0010] “create longitudinal play in that opening for the movement of the two pillars”). Cluseau does not disclose the material of the piece 11.
Ng discloses a bracelet (title) having solid links 12 connected by “elastic bands can be utilized to form such links” [0002].
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize elastic bands as taught by Ng to be the unknown material of the pieces 11 of Cluseau to enhance the desire to “create longitudinal play…for the movement” of the individual mesh parts of Cluseau while worn as the alternative “decorative ring” on the base of KR. Examiner contends that this would not alter the form, function, or use, of the device of KR OR Cluseau, as an elastic piece 11 would enhance the already known function of the “longitudinal play” of Cluseau.
Regarding claim 9, please see 112b rejection above. KR modified by Cluseau and Ng discloses the jewelry item according to claim 8, wherein the elastic piece (piece 11 of Cluseau made of “elastic” as taught by NG, discussed above) comprises a plurality of portions (assumed to be multiple elastic pieces, not portions of a single elastic piece, please see 112b above. Cluseau requires multiple elastic pieces 11) each having an elasticity (made of elastic, taught by Ng), and wherein the elasticity of at least one of the portions is different from the elasticity of the other portions (examiner contends that the bands are not identical in width and/or may have imperfections, which changes the elasticity of the elastic band 11, therefore examiner contends that some elastic pieces 11 have “different…elasticity” than other elastic pieces as taught in the prior art).
Regarding claim 10, KR discloses the jewelry item according to claim 1, which uses three rings as “decorative ring” which is known to be substituted (“decorative ring substitution”) for other decorative devices. KR discloses the use of multiple stones in a width of three stones, using three bands 300. KR does not utilize a decorative ring that utilizes “a return spring”.
Cluseau discloses a body encircling device (bracelet [0001]) which discloses a mesh network of articulated elements [0010] showing three stones in width, further comprising an piece 11 which is arranged at least partially on or under the deformable casing (under the top surface, and on pins 10), arranged to return a movement of the casing (as discussed in [0010] “create longitudinal play in that opening for the movement of the two pillars”). Cluseau does not disclose the material of the piece 11.
Ng discloses a bracelet (title) having solid links 12 connected by “elastic bands can be utilized to form such links” [0002].
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize elastic bands as taught by Ng to be the unknown material of the pieces 11 of Cluseau to enhance the desire to “create longitudinal play…for the movement” of the individual mesh parts of Cluseau while worn as the alternative “decorative ring” on the base of KR. Examiner contends that this would not alter the form, function, or use, of the device of KR OR Cluseau, as an elastic piece 11 would enhance the already known function of the “longitudinal play” of Cluseau. Creating the piece 11 out of elastic would make it be considered “a return spring”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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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