DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12373814. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent are anticipated by the claims in the application by claiming the following common subject matter: an item of jewelry comprising a body having an inner surface, an outer surface and an opening passing through the body from the inner surface to the outer surface; the body being made of a metal; an outer shell forming part of the outer surface and in contact with the body; the outer shell being made of a material selected from among: precious gems, fine gems, ornamental gems, leather; an inner shell forming part of the inner surface and in contact with the body; a closed housing being formed between the outer shell and the inner shell substantially in line with or in the opening; the closed housing defining an arcuate shape; the inner shell being made of a material selected from among: precious gems, fine gems, ornamental gems, leather; a flexible tag arranged in the closed housing and comprising an electronic chip and an antenna arranged around the electronic chip; and, the outer shell and the inner shell being held together.
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, 6-8, and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Giudici, US 2023/0394273 A1, in view of Gaikwad, US 2012/0276434 A1.
Regarding claims 1 and 6, Giudici discloses a finger ring having a body (2) of one-piece (claim 6) with an inner surface, an outer surface and an opening (the opening houses the dielectric stone material (4, 4’, figure 4)) passing through the body (2) from the inner surface to the outer surface. The body (5) is made of a metal (7, [0019]) material. An outer shell (4, figure 4) forming part of the outer surface and in contact with the body (5). The outer shell (4, figure 4) being made of an ornamental gem ([0025]). The inner shell (4’) forming part of the inner surface and in contact with the body (5, figure 4). A closed, arcuate housing (filled with the microelectronic device 6) being formed between the outer shell and the inner shell substantially in line with or in the opening. The inner shell being made of an ornamental gem (4’, figure 4, [0035-0037]). Giudici discloses an electronic chip and an antenna arranged around (near) the electronic chip. This is inherently disclosed in that the device (6) is a microelectronic radio frequency transceiver, which is known to have an antenna for sending and receiving radio frequency signals ([0018]) along with an electronic chip for processing those signals. The outer shell and the inner shell being held together (figure 4).
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The claim requires that the electronic chip and antenna be in the form of a flexible tag, which is not disclosed in Giudici. However, Gaikwad discloses that “flexible electronic devices would be useful for a wide range of functionality such as digital memory, photovoltaic cells, displays, pressure sensors, implantable medical deivices, light emitting diodes, RFID tags, smart cards, self-powered portable devices, microelectronics, and thin film tansistors” ([0002]). The benefit of flexible electronic devices is that they can be easily installed in or on non-planar surfaces or spaces. Therefore, it would have been obvious, prior to the earliest effective filing date, to a person having ordinary skill in the art to make Giudici’s microelectronic device as a flexible electronic device for easier assembly to the curved space in the finger ring closed housing (at 6).
Regarding claim 7, Giudici discloses that the stone (4, 4’), outer shell and inner shell, have a thickness dimension of 1.7 mm ([0034]), which is in the claimed range of 1-3.0 mm.
Regarding claim 8, Giudici discloses that the precious stone (4, 4’) could be a diamond, emerald, ruby or onyx ([0040]).
Regarding claim 10, Guidici discloses that the body (2) has a plane of symmetry passing through an axis of a ring and has an indentation in the outer surface adapted to the outer shell (please see the annotated drawing).
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Regarding claims 11-13, Guidici discloses that the body (2) is a ring body, which can be worn as a finger ring or on a chain as a pendant or as a bracelet on a doll.
Regarding claim 14, Guidici discloses that the microelectronic device can be removed from the finger ring, i.e., a person can remove the stone from the finger ring to access the electronics in order to replace the failed electronics with a new microelectronic device.
Regarding claim 15, Guidici discloses the microelectronic device is hidden underneath the stone in the closed housing.
Regarding claim 16, Guidici discloses the metal material forming the body (2) of the ring is made from gold, platinum, titanium or silver ([0058-0059]).
Regarding claim 17, Guidici discloses the microelectronic device (tag) is curved to match the shape of the curvature of the closed housing.
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Regarding claims 18-20, Guidici discloses that the outer shell (4) and inner shell (4’) forming the closed housing can be formed from onyx, which is opaque (([0040]).
Allowable Subject Matter
Claims 2-5 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK W LAVINDER whose telephone number is (571)272-7119. The examiner can normally be reached Mon-Friday 9-4pm (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JACK W. LAVINDER
Primary Patent Examiner
Art Unit 3677
/JACK W LAVINDER/Primary Examiner, Art Unit 3677
Prosecution Insights