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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 33 of U.S. Patent No. 11857037. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of the patent anticipates the claims in the application, i.e., the claims in the application are broader than the claims in the patent. They claim the following common subject matter: a jewelry assemblage, comprising: a plurality of discrete jewelry components and a plurality of couplers enabling releasable interconnection of said jewelry components to each other in desired combinations and arrangements; each said coupler comprising: a male coupling and female coupling, each of which has a cross-sectional shape measuring less than 6 millimeters and each of which is attached to respective jewelry components; the male coupling is configured to be inserted into an opening in the female coupling to effect a connection; the connection beginning as the male coupling engages a snap connector located in an interior of the female coupling, so constructed that the snap connector moves to accommodate the male coupling, and upon being fully inserted, the snap connector resumes an original position locking within a gap formed in the male coupling and creating a secured, mechanically interlocked connection; an actuating member inside the female coupling that extends to a point on an exterior of said female coupling, that can be manipulated via an external force applied to the actuating member by a release tool to release the connection.
The application claims that the outer body shapes of the plurality of couplers include a variety of different shapes, which is not claimed in the patent claim. However, it is old and well-known to change the outer shape of a jewelry element to improve the aesthetics of the jewelry. Therefore, it would have been obvious to modify the outer shapes of the jewelry couplers in the patented claim to improve the aesthetics of the jewelry.
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 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Masterson, US 7980095 B1 in view of Cartier, Ch 676073G A3.
Regarding claim 1, Masterson discloses a plurality of jewelry components with coupling members (male/female, 10, 12, 13, 15, 16, 18, 19, 21, 36, 39, 49, 50) on the ends of each discrete component for interconnecting the different discrete components into a multitude of desired combinations and arrangements. Masterson states (column 4, lines 19-30) that any clasps commonly known to a person having ordinary skilled in the art, including spring ring clasps, toggle clasps, lobster claw clasps, hooks, etc., can be used to couple the jewelry components to one another. Masterson fails to disclose the claimed couplers. However, Cartier discloses this type of coupler is old and well-known.
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Cartier discloses a male (4) and female (1) coupling members of millimeter size suitable for attachment to a jewelry component (bracelet). The female coupling member has a connector (11) biased by a spring (8) to move along a movement axis. The connector is constructed to move laterally along the movement axis when the male coupling member is inserted through the opening in the female coupling member. The beveled front ends of the locking member (13) of the male coupling member engage the connector (11) and push the connector laterally along the movement axis allowing a portion of the locking member to move past the connector (11). The connector, then, enters a locking space (14) of the locking member to interlock the male and female coupling members together. The device includes an actuating pin (12) in the female coupling to move the connector (11) to release the locking member (13). The actuating pin (12) is moved along the movement axis. It is capable of being actuated with a releasing tool, i.e., a finger, fingernail, screw driver, etc., to move the end of the actuating pin below the outer flat surface of the female coupling member (figure 3). The male coupling (4) locking member (13, 13’) has a gap (14) formed between the fingers (13, 13’) for interlocking with the snap connector (5, 12) in the female coupling. Cartier’s clasp is a known clasp to a person having ordinary skill in the art. Therefore, it would have been an obvious design choice to use Cartier’s clasp in Masterson’s jewelry assemblage as an alternative clasp that provides the same coupling function equally as well as Masterson’s lobster claw clasp.
Claim 1 also claims that the plurality of couplers include a variety of outer body shapes. These shapes are for aesthetic purposes. These shapes cause the couplers to appear as part of and blend into the overall appearance of the jewelry assemblage. This is shown in Masterson, i.e., the outer body shapes make the couplers appear as part of and blend into the overall appearance of the jewelry assemblage. This limitation is in the eye of the beholder. For instance, snaps hooks are a known coupling member. Therefore, when a user views the snap hooks, it makes the snap hooks appear as and blends in with the overall appearance of the jewelry. Because, this is what the wearer or viewer expects to see.
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Claims 1 and 9 require that the female couplings have a dimension less than six millimeters. It is old and well-known to make jewelry clasps in this size range to accommodate chains of this similar size. This is done so the clasp appears to blend in with the jewelry component/chain. Therefore, it would have been obvious to a person having ordinary skill in the art to make Cartier’s jewelry clasp couplings with dimensions less than six millimeters.
Regarding claims 2-3, the claims require that the male and female couplings are physically and integrally connected to the jewelry components. Masterson discloses the couplings (10, 12-13, 15-16, 18-19, 21-22, 27, 30, 36, 39) are physically and integrally connected to the jewelry components (figure 1). And, Masterson discloses that the male couplings are configured to interact with any of the female couplings and vice versa.
Regarding claim 4, Masterson discloses that the hooks and apertures are all capable of repeatable attachment and release.
Regarding claims 5 and 8, Masterson discloses (inherently) that the color and surface finish of the male and female components (10, 12-13, 15-16, 18-19, 21-22, 27, 30, 36, 39) promote the appearance of the couplers to blend into the appearance of the jewerly component (this limitation is in the eye of the beholder).
Regarding claim 6, Masterson fails to disclose the locking member between the male and female couplings being virtually invisible. However, Cartier’s locking member of its male and female coupler is located within the coupler and is therefore virtually invisible.
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Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Masterson, US 7980095 B1 in view of Cartier, Ch 676073G A3 and further in view of Kamens, US 2629156. Cartier fails to discloses a spring for ejection the male coupling from the female coupling when the actuating pin is depressed to release the interlock. However, Kamens discloses a jewelry clasp that has a spring (25) for ejecting the male coupling. The spring makes it easier for the wearer to decouple the clasp. The annotated drawing of Kamens shows the details of this decoupling spring mechanism. Therefore, it would have been obvious to add a decoupling spring mechanism to Cartier’s clasp to improve the ease of decoupling the female coupling from the male coupling.
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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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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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JACK W. LAVINDER
Primary Patent Examiner
Art Unit 3677
/JACK W LAVINDER/Primary Examiner, Art Unit 3677
Prosecution Insights