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 with respect to claim(s) 1-2, 4-7, 10-15, 17, 19 have been considered but are moot because the new ground of rejection does not rely on the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding the drawings: examiner thanks applicant for the amendment to show top wall 102a. The drawings have been entered.
Regarding objections: examiner thanks applicant for correction to claim 10 and cancellation of claim 20. Examiner notes that claim 14 is identical to claim 7, and is objected to below.
Regarding 103 rejections:
Applicant asserts newly added subject matter “formed by cutting the section on top portion of the circular band” is different than prior art Naqvi, because applicant discloses only one notched portion at a “top portion of the circular band” and Naqvi discloses a wavy pattern all over the band. Applicant’s claim language does not preclude other locations of the notch, further, applicant arguments amount to assert that applicant’s structure includes less features/notches than Naqvi. Examiner notes that this argument amounts to a removal of undesired mounting locations from Naqvi; further, applicant does not claim only one notch portion. There is no nexus between applicant’s claim and applicant’s arguments. Examiner notes it is obvious to omit a feature if the function of the feature is not desired. Please see MPEP2144.04(II)a.
Applicant asserts the pillars of the Takessian stone setting “do not extend from any metallic component” because they connect at one end and connect directly to the band of Takessian. Examiner notes that Naqvi discloses the use of the metallic component with decoration on top of the metallic component; therefore, applying the decoration of Takessian to the metallic component is show in the combination. Applicant’s newly added subject matter of alternative surfaces for the pillars to extend from, are not disclosed or shown in the original disclosure, and are subject to 112a rejections, as rejected below.
Applicant seems to repeat this argument on the bottom of page 9 of 13 of remarks 2/19/2026.
Applicant argues the pillars and prongs of Takessian are not “offset”. Applicant has not defined “offset” in any figure. Applicant’s [0047] states that the pillars and prongs in figures 6-7 are “arranged in offset relation”, but figures 6-7 show a pillar 102i that is continuous with prongs 102j. Applicant is arguing and disclosing something that is not shown in the figures, and as such, the definition of applicant’s intended “offset” is not clear to one of ordinary skill in the art. None of applicant’s variations of the stone setting have a pillar and a prong “offset” at any point. Please see 112a rejection below.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Claim Objections
Claim 14 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Drawings
The drawings were received on 2/19/2026. These drawings are entered.
The drawings of 2/19/2026 are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, pillars and prongs being “offset relation” is not shown in the drawings, is not shown 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.
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Claims 1-2, 4-7, 10, 12-15, 17, 19, 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 claims 1 and 14, applicant claims “the plurality of pillars…and the plurality of primary prongs….are positioned on the at least one secondary stone holder in an offset relation”. Applicant has pulled this language from several recitations of the various embodiments of similar stone settings disclosed by applicant, however, the drawings do not disclose any “offset” between the prongs 102j and the pillars 102i. Therefore, applicant’s original disclosure does not disclose at any point an “offset” between pillar and prong in a manner consistent with the specification. Please see the annotated figures 6, 14, and 21, to show that applicant’s original disclosure has a conflicting definition of “offset” with the common definition of “offset”. Each and every figure disclosed by applicant is said to have “offset” pillars and prongs, but each and every figure shown by applicant shows a continuous pillar and prong.
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.
Claims 1-2, 4-7, 10, 12-15, 17, 19, 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 claims 1 and 14, applicant claims “the plurality of pillars…and the plurality of primary prongs….are positioned on the at least one secondary stone holder in an offset relation”. Applicant has pulled this language from several recitations of the various embodiments of similar stone settings disclosed by applicant, however, the drawings do not disclose any “offset” between the prongs 102j and the pillars 102i. Therefore, applicant’s original disclosure does not disclose at any point an “offset” between pillar and prong in a manner consistent with the specification. Please see the annotated figures 6, 14, and 21, to show that applicant’s original disclosure has a conflicting definition of “offset” with the common definition of “offset”. Each and every figure disclosed by applicant is said to have
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“offset” pillars and prongs, but each and every figure shown by applicant shows a continuous pillar and prong. Therefore, the term “offset” is not used with the common definition of the term, and also inconsistent with applicant’s figures as well as being indefinite as to what applicant intends with the structure of the device claimed.
Even if applicant intends that the tip 102k of the prong is not vertically above the base of the pillar, this is a relative “offset” which depends on the following: (a) the size of the stone within the setting and (b) the size of the metallic component. If (a) is the same size as the (b), then there will be no “offset”. Further, if applicant intends this is the “offset” (which is not claimed OR present in the written description), then this is already met by the “angularly oriented” pillars.
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) 1-2, 4-7, 10, 12-15, 17, 19, is/are rejected under 35 U.S.C. 103 as being unpatentable over 10973288 Takessian in view of 2018/0144648 Naqvi in further view of 2017/0196320 Sato.
Claim 14 is identical to claim 7. Naqvi discloses the structure of the band and metallic component. Takessian discloses the structure of the settings as claimed. All claims are rejected under Takessian in view of Naqvi, as suggested by the combination taught in Sato.
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Regarding claims 1, 2, 7 and 14; Takessian discloses a ring 538 adapted to encircle a human finger (column 8 line 59) having a removable decorative component (figure 6) made of metal (“settings may be fabricated using precious metals” column 4 line 31), the metallic component (figure 6) further comprising:
a plurality of pillars (annotated) angularly oriented (see figure 6) and extending upward from the band and supporting at least one secondary stone holder (506 annotated), wherein the secondary stone holder (506) is adapted to hold a plurality of secondary stones (528 in figure 6), the secondary stone holder comprising a plurality of retaining spaces for holding the plurality of secondary stones (as shown in figure 6; and
a plurality of primary prongs (annotated 516) angularly oriented and extending upward from the at least one secondary stone holder (506), each of the plurality of primary prongs (516) is configured to retain at least one primary precious stone 510 (as shown in figure 6) located on top of the top of the ring; and
wherein the plurality of pillars (annotated) supporting the at least one secondary stone holder 506 and the plurality of primary prongs extending upward from the secondary stone holder 506 for retaining the at least one primary precious stone 510 are positioned on the at least one secondary stone holder 506 in offset relation. Examiner contends that since the term “offset” is inconsistent between the drawings and the specification, as well as the drawings not disclosing the structure having the common definition of the term “offset”, examiner contends that Takessian discloses the “offset” relationship disclosed. Further, should examiner assume the secondary definition of “offset”, examiner notes that the mounting end of the pillars are in an offset relationship from the tip of the prongs in Takessian. Please see 112a and 112b rejections above.
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Naqvi discloses a flexible (made of silicone [0026]) wearable ring assembly, comprising:
a circular band portion (figure 16) adapted to encircle a human wrist, the circular band portion (figure 16) comprising a notched portion (annotated) located at a top portion of the circular band portion, wherein the notched portion is of a certain length (shown in figure 16) formed by cutting the second on top portion of the circular band portion from two ends (examiner notes that the method “formed by cutting” is not relevant in a structure claim, further, Naqvi discloses the notches in all locations of the band as well as the top portion);
a component (figures 17-18) configured to removably engage to the notched portion ([0024] and [0027]) of the circular band portion, wherein the component (figures 17-18) comprises a top wall (annotated), a pair of side walls (annotated) extending downward from the top wall, and a pair of horizontally extending flaps (annotated) extending inward from the bottom of the pair of side walls, thereby forming a retaining space (figure 18) for receiving the notched portion of the circular band portion (as shown in figure 15); and wherein, the component further comprising a decoration located on the top surface of the component.
Sato teaches a silicone band (figure 4) sized to be worn on a finger [0034], which a removable metallic component (figure 5) which sets a stone 33 “such as a diamond is retained by appropriate means such as prong setting, bezel setting, and flush setting” [0035].
Regarding claims 1, 2, It would have been obvious to one of ordinary skill in the art before the effective filing date to apply the removable ring decoration of Takessian to replace the decoration on the removable component with a ring as taught by Naqvi, in order to wear the removable decoration of Takessian using a different ring structure. This modification still results in the decoration of Takessian worn on the finger in a manner old and well known, suggested by Sato. Examiner contends that the combination of metal stone settings on silicone bands is old and well known in the art (Sato), the setting as claimed by applicant is old and well known in the art (Takessian), and the manner of attaching the metal decoration to a silicone band is old and well known in the art (Naqvi). Examiner notes that the choice of using a silicone ring band is old and well known alternative material typically chosen for consideration of the user’s actions (like exercise), user’s environment (high heat like a sauna), or for cost (silicone is cheaper than typical jewelry metals). Examiner notes that the combination would have all pillars of Takessian extending from the top wall of the component as taught by Naqvi.
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 claims 7 and 14, Takessian in view of Naqvi discloses the structure of claim 1, including each primary prong 516 has a tip which has a circular in shape (figure 6) and extends outwards (by the angle provided in claim 1) to ensure the at least one primary precious stone placed on the top wall of the metallic component remains in place (as this is the purpose of prongs 516); and, each of the secondary prongs have a tip which are circular in shape (as shown in figure 6) and extend outwards to ensure the plurality of the second stones placed on the plurality of retaining spaces of the secondary stone holder remains in place (as is the purpose of prongs).
Regarding claim 15, Takessian as modified discloses the ring of claim 14, wherein each of the plurality of second stones 528 are held within a retaining space formed by secondary prongs (figure 6 of Takessian, discussed above in claims 1 and 14 above).
Regarding claims 4 and 17, Takessian as modified discloses the ring of claims 1, 14, wherein the circular band (of Naqvi) is made of silicone [0026].
Regarding claims 13 and 19, Takessian as modified discloses the ring of claims 1, 14, with each of the primary 510 and secondary stones 528 are circular.
Regarding claim 5, Takessian as modified discloses the ring of claim 1, wherein the notched portion (of the band in Naqvi) is of a length equal to the longitudinal length of the metallic component (as shown in figure 15 of Naqvi).
Regarding claim 6, Takessian as modified discloses the ring of claim 1, wherein the metallic component (mounting structure of Naqvi figure 18 with Takessian setting on top) comprises an opening between the pair of flaps (shown in figure 18) to facilitate insertion of the notched portion of the circular band within the retaining space (as shown in figure 15).
Regarding claim 10, Takessian as modified discloses the ring of claim 1, wherein the primary prongs 516 are at least 3 in number (uses four prongs shown in figure 6 of Takessian) and the secondary prongs are at least four in number (figure 6).
Regarding claim 12, Takessian as modified discloses the ring of claim 1, wherein the secondary stone holder 504 comprises a hole 524 for the bottom of the retaining space of the primary stone 510, but does not particularly disclose a hole for each secondary stone 528 within prongs.
It would have been obvious to one of ordinary skill in the art before the effective filing date to mount the secondary stones with a hole for the pavilion of the secondary stones, in the same manner as it is known in Takessian to mount the primary stone, since these are known equivalent manners to set stones. Examiner contends that the use of holes reduces the material needed to set the secondary stone, therefore saving money. 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”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
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.
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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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/EMILY M MORGAN/ Primary Examiner, Art Unit 3677